New Rule Change of Note from United States Patent And Trademark Office For Information Disclosure Statements

By James G. McEwen

 On July 10, 2006, the U.S. Patent and Trademark Office (USPTO) proposed changing the Information Disclosure Statement requirements in order to reduce the burden on the Examiner due to large submissions (i.e., large numbers of documents or large documents).  The complete proposal is found at 71 Fed. Reg. 38808, with more detailed comments and explanations found at http://www.uspto.gov/web/offices/pac/dapp/opla/presentation/focuspp.html#ids. 

The USPTO proposed these rule change as part of the USPTO’s Focus the Patent Process in the 21st Century plan, and are designed to “encourage patent applicants to provide the USPTO the most relevant information related to their inventions in the early stages of the review process.”  In order to achieve this goal, the USPTO is proposing applicants submit additional information about the submitted documents which varies dependent on the timing of the submission, as well as the number of submissions.

As summarized in the below table, the proposed rules for filing Information Disclosure Statements are segregated according to time periods denoted First, Second, Third, and Fourth Periods.  The submission requirements are detailed below.

Submission During First Period

The First Period is prior to a first Action on the merits.  During this period, the applicant can generally file a submission without anything further.  However, where the applicant is filing a foreign language document, any document in excess of 25 pages, or where the sum total of documents filed to date exceed 20, the applicant would be required to provide a materiality explanation. 

The materiality explanation essentially requires the applicant to provide information about which page and/or drawing of the submitted document is of relevance to which claims.  Where the document is provided as part of a foreign office action, the submission of the office action qualifies as the materiality explanation.  Additionally, the applicant would be required to submit any existing English language translation for each foreign document in the applicant’s possession.

Submission During Second Period

The Second Period is after the first Office Action and prior to a Notice of Allowability.  Thus, this period exists even after a Final Office Action.  In the Second Period, the applicant would be required to provide “more extensive disclosure requirements.”   However, if the submission is due to a foreign office action, the applicant can file the submission so long as the applicant states that no documents in the submission were known within the past three months, which is also current practice. 

In contrast, if the submission is not due to the foreign office action or if the documents were known for longer than three months, the applicant would need to provide both the materiality explanation and a non-cumulative explanation of the document. Unlike current practice, there would be no fee. 

The non-cumulative explanation requires an explanation of how the document is not cumulative of prior submissions.  Thus, the applicant needs to provide a description of what feature in the submitted documents is not shown in the already-filed documents.  

Submission During Third Period

The Third Period exists where there has been a Notice of Allowability, but the Issue Fee has not been paid.  In the Third Period, documents can be submitted if the applicant can comply with 37 C.F.R. 1.97(e)(1) in that the document was not known in the prior three months.  In addition, the applicant must provide the materiality explanation, the non-cumulative explanation, and either an explanation of patentability of the claims over the document or an amendment to the claims and explanation of patentability based on the amended claims.  Where an amendment is submitted with the Information Disclosure Statement, the amendment works as an admission that the claims were otherwise unpatentable without the amendment due to the cited documents.  There would, however, be no fee. 

Submission During Fourth Period

The Fourth Period exists if the Issue Fee has been paid but prior to the application issuing.  In the Fourth Period, the applicant must request withdrawal of the application from issue, comply with 37 C.F.R. 1.97(e)(1), provide the materiality explanation, the non-cumulative explanation, and an amendment to the claims and explanation of patentability based on the amended claims.  Where an amendment is submitted with the Information Disclosure Statement, the amendment works as an admission that the claims were otherwise unpatentable without the amendment due to the cited documents.  There would be no fee in addition to the Petition fee, but there is also no option to argue for the patentability of the existing claims without amendment as there is prior to filing payment of the Issue Fee. 

Table of Time Periods

Effect of Amendment on Prior Submissions

Lastly, the USPTO envisions that the applicant will be required to update the disclosure submissions with each amendment.  Thus, whenever applicant makes an amendment affecting the scope of the claims, applicant would be required to reviewed each previously submitted explanation and/or identification, and update the explanation and/or identification.  If the applicant does not make this update in the reply containing the amendment, the reply would be considered non-responsive.

Impact on Patent Practice

As the USPTO is proposing drastic changes to the Information Disclosure Statement process, the changes have been generally opposed by the patent community.  Specifically, the patent community has questioned whether the proposed explanation requirements will unfairly burden the applicant with new requirements while potentially exposing the applicant to the charge of inequitable conduct by failing to properly identify or explain a document.  As noted by the ABAin their comments, the “[c]ourt decisions on inequitable conduct are clear on two points: it should be the [USPTO], not the applicant, who should decide the relevance of a reference.”  Thus, should the applicant be mistaken as to what the Examiner would consider relevant, or submit an incorrect materiality or non-cumulative explanation, the applicant runs the risk of being charged with inequitable conduct for misleading the Examiner.  The AIPLA warned that the proposed changes would actually deter an applicant from conducting prior art searches since the submission of the prior art documents would be prohibitively expensive.  A complete listing of all comments from the various other objecting commentators, including those from Foreign Associations, Companies, and Law Firms can be found at http://www.uspto.gov/web/offices/pac/dapp/opla/comments/ab95/ids.htm.  In view of the number of objections, it is unclear whether the USPTO will go forward with these changes.

However, should this rule issue in its present form, the cost of filing an Information Disclosure Statement will escalate dramatically as practitioners will generally be required to analyze and re-analyze submissions throughout practice.  In addition, practitioners and applicants will need to be wary of submitting too many documents (unless forwarded from an action of a foreign patent office) as submissions in excess of 20 will incur additional expense and risk through the various explanations required.  Moreover, where a search is performed and results in submissions of more than 20 documents, the applicant should consider requesting Accelerated Examination as the materiality explanation needed for the Information Disclosure Statement is similar to the accelerated examination support document required when requesting Accelerated Examination.  Thus, as with the remaining other rule packages proposed by the USPTO, passage of these changes to the Information Disclosure Statement processes will likely cause a dramatic shift in how documents are submitted, and when.

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