2006 Proposed Changes To Information Disclosure Statement Requirements and Other Related Matters

In the July 10, 2006 Federal Register, the U.S. Patent and Trademark Office published proposed changes to information disclosure statement (IDS) requirements and other related matters.

The proposed changes can be found here:
http://www.patentsusa.com/20060710_Proposed_chg_IDS.pdf
Luckily, these rule changes have not been adopted. However, forms on the USPTO web site have been formatted assuming that these rule changes will be implemented.

The stated purpose of the proposed changes was to improve the quality and efficiency of the examination process. The notice indicated that although Rule 1.56 clearly imposes a duty to disclose material information, the rule neither authorizes nor requires anyone to file unreviewed or irrelevant documents with the Office. Such documents more likely, negatively impact the quality of resulting Office determinations, according to the USPTO.

The Office proposed that before a first Office Action on the merits, additional disclosure would be required for English language documents over twenty-five pages. Additional disclosure would also be required for any foreign language documents, and would be required if more than twenty documents are submitted. The required explanation must identify information in each document that is relevant to the claimed invention. Examples of the additional disclosure included an identification of a portion of a document that caused it to be cited, and an explanation of how the specific feature of the document correlates with language in one or more claims. However, documents submitted to the Office in reply to a requirement for information or resulting from a foreign search or foreign examination report would not count towards the twenty document limit. The rule changes would also permit the filing of an IDS after a first Office Action on the merits only if additional disclosure requirements were met. After a first Office Action, an applicant would be required to provide a non-cumulative description as well as an explanation for each document (or a copy of a foreign search or examination report).

Patent practitioners were opposed to this change because of the risk of being accused of inequitable conduct by the courts if not all potentially relevant information is disclosed, and resulting patent invalidity. Unsympathetic court decisions have led practitioners to be ultra-cautious. Correlating a reference to a claim could result in damaging file wrapper estoppel.

Comments by the public on these proposed rule changes can be found here:
http://www.uspto.gov/web/offices/pac/dapp/opla/comments/ab95/ids.htm

2003 Information Disclosure Statements Without Copies

On July 11, 2003, the U.S. Patent and Trademark Office waived the requirement for submitting copies of citied U.S. patents and patent application publications with Information Disclosure Statements. This waiver applied to patent applications filed after June 30, 2003.

The waiver can be found here:
http://www.patentsusa.com/20030730_IDS_Without_Copies.pdf

The U.S. Patent and Trademark Office had previously eliminated the need for patent copies only if an Information Disclosure Statement was filed using the Electronic Filing System. Adoption of early versions of the patent electronic filing system was very low because early versions were very complex, requiring installation and understanding of two software programs called ePave and ABX. The trademark electronic filing system, in contrast, was web-based and very easy to use at this time. The current electronic filing system for patents is quite straightforward and easy to use.