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1 Charts of: The Four Time Periods for Submitting an IDS and Their Corresponding Requirements “Changes to Information Disclosure Statement Requirements.

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Presentation on theme: "1 Charts of: The Four Time Periods for Submitting an IDS and Their Corresponding Requirements “Changes to Information Disclosure Statement Requirements."— Presentation transcript:

1 1 Charts of: The Four Time Periods for Submitting an IDS and Their Corresponding Requirements “Changes to Information Disclosure Statement Requirements and Other Related Matters” 71 Fed. Reg (July 10, 2006) Notice of Proposed Rulemaking; XX Off. Gaz. Pat. Office YY (August 1, 2006)

2 2 Time Period 1: IDS Submission Requirements Time Period: 1 Requirements for Submission of IDS in time period 1 (§ 1.98(a)(3)(i)(A)-(C))Exceptions to requirements Starts - upon filing of application Ends - later of {3 months after filing, or 1st Office action} (§ 1.97(b)(1)-(3)) A.General rule: IDSs filed during this time period may be submitted without triggering an “explanation” requirement. B.An “explanation” is required for each of the following (§ 1.98(a)(3)(iv)): 1. Any English-language document over 25 pages (excluding sequence & computer listings); 2. Any non-English language document and any submitted translation (See D. below) if the translation exceeds 25 pages (§ 1.98(a)(3)(xi)); and 3. ALL documents when their cumulative number exceeds 20 in all IDSs filed in this time period. An “explanation” requires identification of the specific feature(s), showing(s), or teaching(s) that caused the document to be cited, and a portion(s) of the document where the specific feature(s), showing(s), or teaching(s) may be found; and correlation of the specific feature(s), showing(s), or teaching(s) to corresponding specific claim language, or to a specific portion(s) of the supporting specification, where the document is cited for that purpose. C.Update of previously filed “explanations” (§ 1.98(a)(3)(ix)): With each amendment to the claims or the specification affecting the scope of the claims filed after an information disclosure statement, applicant must either: 1. Update each “explanation” for all previous information disclosure statements, where necessary, in view of the amendment(s); or 2. Submit a statement to the effect that updating of the previous explanation(s) submitted with information disclosure statement(s) is not needed. (continued) Documents resulting from a foreign search or examination report in a counterpart foreign application where the report is submitted. (§1.98(a)(3)(viii)(A)) Documents submitted in reply to a requirement for information (§ 1.105) (§1.98(a)(3)(viii)(C)). The certification of § 1.97(e) is not required, hence the three month time frame is not a requirement.

3 3 Time Period 1: IDS Submission Requirements (cont’d) Time Period: 1 Requirements for Submission of IDS in time period 1 (§ 1.98(a)(3)(i)(A)-(C))Exceptions to requirements D.Where a non-English language document is submitted, any translation within the possession, custody, or control of, or that is readily available to a § 1.56(c) individual shall be filed (§ 1.98(a)(3)(xi)).

4 4 Time Period 2: IDS Submission Requirements Time Period: 2 Requirements for Submission of IDS in time period 2 (§ 1.98(a)(3)(ii))Exceptions to requirements Starts - at end of Period 1 Ends - {Notice of Allowance, or a NIRC in a reexamination proceeding} (§ 1.97(c)) The following apply to documents cited during this time period regardless of page length or the number of previously cited documents: A.An “explanation” for each cited document (see time period 1). B.A “non-cumulative description” for each cited document (§ 1.98(a)(3)(v)). A “non-cumulative description” is a description how each document is not merely cumulative of any other document cited in any prior or current IDS, or any information cited by the examiner. C.Update of previously filed “explanations” (see time period 1): D.Where a non-English language document is submitted, any translation within the possession, custody, or control of, or that is readily available to a § 1.56(c) individual shall be filed (§ 1.98(a)(3)(xi)). Documents filed with a 37 CFR 1.97(e)(1) timeliness certification and a copy of the foreign search or examination report for a counterpart foreign application. (§ 1.98(a)(3)(viii)(B)) Documents filed in response to a requirement for information (§ 1.105) (§ 1.98(a)(3)(viii)(C)).

5 5 Time Period 3: IDS Submission Requirements Time Period: 3 Requirements for Submission of IDS in time period 3 (§ 1.98(a)(3)(iii))Exceptions to requirements Starts - at end of Time Period 2 Ends - at payment of issue fee (§ 1.97(d)(1)) The following apply to documents cited during this time period regardless of page length or the number of previously cited documents: A.A timeliness “certification” per § 1.97(e)(1) or (e)(2) to certify: 1. That each item of information contained in the information disclosure statement was first cited in any communication from a foreign patent office in a counterpart foreign application not more than three months prior to the filing of the information disclosure statement (§ 1.97(e)(1)); or 2. That no item of information contained in the information disclosure statement was cited in a communication from a foreign patent office in a counterpart foreign application, and, to the knowledge of the person signing the certification after making reasonable inquiry, no item of information contained in the information disclosure statement was known to any individual designated in § 1.56(c) more than three months prior to the filing of the information disclosure statement (§ 1.97(e)(2)). B.One of the “patentability justifications” defined in § 1.98(a)(3)(vi)(A) or (B). Each “patentability justification” requires an “explanation” (see time period 1), a “non-cumulative description” (see time period 2), and either: 1. Where a § 1.98(a)(3)(vi)(A) patentability justification is chosen: Reasons why the independent claims are patentable over the information in the IDS being submitted, considered together, and in view of any information already of record; or (continued) The requirements of this time period do not apply to reexamination proceedings as there is no issue fee payment.

6 6 Time Period 3: IDS Submission Requirements (cont’d) Time Period: 3 Requirements for Submission of IDS in time period 3 (§ 1.98(a)(3)(iii))Exceptions to requirements 2. Where the § 1.98(a)(3)(vi)(B) “patentability justification” is chosen: a. Reasons why the amendment causes claims, admitted to be unpatentable over the information submitted in the IDS, to be patentable over such information when considered together, and in view of any information already of record, b. An unequivocal statement that one or more claims are “unpatentable” in view of at least the cited information, and c. An amendment to the claims admitted to be “unpatentable” in the unequivocal statement. C.Where a non-English language document is submitted, any translation within the possession, custody, or control of, or that is readily available to a § 1.56(c) individual shall be filed (§ 1.98(a)(3)(xi)). D.Update of previously filed “explanations” (see time period 1).

7 7 Time Period 4: IDS Submission Requirements Time Period: 4 Requirements for Submission of IDS in time period 4 (§ 1.98(a)(3)(iii))Exceptions to requirements Starts - at {payment of issue fee, or mailing of NIRC in reexamination proceeding} Ends – {lack of sufficient time for the examiner to consider the IDS prior to issuance} (§ 1.97(d)(2)) The following apply to documents cited during this time period regardless of page length or the number of previously cited documents: A.A timeliness “certification” per § 1.97(e)(1) or (e)(2) (see time period 3), B.A petition to withdraw an application from issue (§ 1.313(c)(1)), or a reexamination proceeding from publication (§ 1.98(a)(3)(iii)(B)), and C.The “patentability justification” defined in § 1.98(a)(3)(vi)(B) (see time period 3). F.Where a non-English language document is submitted, any translation within the possession, custody, or control of, or that is readily available to a § 1.56(c) individual shall be filed (§ 1.98(a)(3)(xi)). G.Update of previously filed “explanations” (see time period 1).

8 8 Reasonable Inquiry Required for Each IDS Submission The reasonable inquiry mandated by §§ 10.18(b)(2) and 10.18(b)(2)(i) requires that information in any IDS submitted during any of time periods 1-4 be reviewed before submission to the Office to assure that it will not: (1) Cause unnecessary delay or needlessly increase the cost of examination, or (2) Result in the obscuring of material information.

9 9 More Information The below listed documents may be accessed via the “ More Information ” hyperlink associated with the Notice ’ s title at the following USPTO webpage: –Executive Summary – IDS NPR, –Detailed Summary – IDS NPR, –Slide set – IDS NPR, and –Application Prosecution Timeline. For more information, please contact the Office of Patent Legal Administration at (571) or to or contact one of the following: –Hiram Bernstein –Brian Hanlon –Robert J. Spar


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