Us Ids Requirements
If an IDS contains a copy of an IDS list initialled from another application, the IDS would not meet the requirements of 37 CFR 1.98(a)(1). This paragraph of the form applies to such IDS submission. If an applicant has chosen not to meet or could not meet the requirements of 37 CFR 1.97(d), the applicant may file an NCE pursuant to 37 CFR 1.114 or a continuous application under 37 CFR 1.53(b) (or 37 CFR 1.53(d) if the application is a design application) for the information to be considered by the examiner. If the applicant files a continuous application under 37 CFR 1.53(b), the parent application could be abandoned by failing to pay the issuance fee required by the Notice of Acceptance. If the previous filing is a design application, filing a 37 CFR 1.53(d) lawsuit automatically overrides the previous filing. See discussion in MPEP § 609.02. The auditor should write “not considered” on a disclosure statement if none of the information listed meets the requirements, such as if the format requirements of 37 CFR 1.98(a)(1) are not met. If none of the indications listed in a form for PTO/SB/08A and 08B are taken into account, a diagonal line or “X” must also be drawn on the form and the form must be entered in the application package. The examiner shall inform the applicant that the information has not been taken into account and the reasons for it, by means of forms 6.49 to 6.49.10. If the inappropriate quotation appears in the context of another work, such as an amendment duly registered and taken into account, the part of the paper suitable for examination should be taken into account.
The requirements of 37 CFR 1.97 require the Office to review the information filed within a reasonable period of time, that is, within three months of the date on which a person referred to in 37 CFR 1.56(c) became aware of the information, or within three months of the date on which the information contained in a communication from a foreign patent office was cited in a foreign counterclaim. This obligation for the Office to take into account the information would be available throughout the filing of the pending application until the time of payment of the patent grant fee. If the e-IDS meets the requirements of 37 CFR 1.97, auditors must consider the e-IDS and complete the e-IDS form by initializing, signing, and dating the entries in the e-IDS form. See MPEP § 609.05(b). Examiners may find gaps in the numbering in the “Citation Number” column of the printed e-IDS form due to an error in entering the applicant`s data. This data entry error does not affect the e-IDS and is not a sufficient reason not to consider the e-IDS. A copy of the initialized e-IDS form must be sent to the applicant. The completed copy of the E-IDS form sent to an applicant must be kept on file when the copy is sent to the applicant. These requirements are reasonable in view of the advanced stage of the procedure in filing the information, i.e.
after the examiner has taken a final decision on the patentability of the claims filed for examination. Payment of the fee (37 CFR 1.17(p)) and filing the corresponding return (37 CFR 1.97(e)) are the essential elements to consider the information at this late stage of enforcement, provided that the substantive requirements of 37 CFR 1.98 are met. Information contained in disclosure statements that meet both the content requirements of 37 CFR 1.98 and the requirements of 37 CFR 1.97 based on the filing date of the statement will be reviewed by the auditor. The examiner`s examination of information submitted in an SDI means that he examines the documents in the same way that other documents in the Office`s search files are taken into account by the examiner when performing a prior art search in an appropriate search field. The examiner`s initials next to the citations on PTO/SB/08A and 08B or their equivalent indicate that the examiner has considered the information to the extent specified above. While the above analysis provides a general overview of information statements and their filing, applicants are advised to consider when and if, in the particular circumstances of each application, they should file different documents and review disclosure requirements under current USPTO rules and regulations. Information filed in the application in accordance with the substantive requirements of 37 CFR 1.98 prior to the filing of an NCE will be reviewed by the examiner after the filing of the NCE. For example, after sending a final communication from the Office, an applicant filed an SDI under 37 CFR 1.98, but the SDI did not meet the requirements of 37 CFR 1.97(d)(1) and (d)(2), so the SDI was not taken into account by the examiner. Once the applicant has filed an RCT, the examiner reviews the CIU filed prior to the filing of the RCT. For more information on the RCT, see MPEP § 706.07(h). This practice does not apply if a necessary portion of a return has been intentionally omitted or if the filing date requirements of 37 CFR 1.97 have not been met. Where a document is presented as evidence in support of a patentability issue raised in a communication from the Office and the evidence is presented in a timely manner, the applicant does not need to meet the requirements of 37 CFR 1.97 and 37 CFR 1.98 for the examiner to take into account the information contained in the document cited by the applicant.
In other words, compliance with the rules on disclosure of information is not a minimum requirement for information to be taken into account when submitted by the applicant in support of an argument in response to a communication from the Office. However, the examiner`s examination of the document submitted as evidence of a patentability issue raised in the Office`s communication shall be limited to the part of the document on which the evidence is based; The entire document does not necessarily have to be taken into account by the examiner. Third parties (persons not covered by 37 CFR 1.56(c)) may not file disclosure reports pursuant to 37 CFR 1.97 and 37 CFR 1.98. Third parties may file patents and publications pursuant to 37 CFR 1,290 only in filings published under 35 U.S.C. 122(b). See MPEP § 1134.01. For unpublished and pending applications, any member of the public, including individuals, businesses, and government agencies, may file a 37 CFR 1,291 protest before sending a grant notice under 37 CFR 1,311. See MPEP Chapter 1900. Third parties may also provide information to the applicant, who may transmit it to the Office in an SDI. See 37 CFR 1.56(d). The Agency reviews each filing in a third-party application to determine whether the filing complies with CFR 37 1.290 or 1.291.
Any third-party submission that does not meet the requirements of 37 CFR 1,290 or 37 CFR 1,291 will not be included in the application package and will be rejected. The staff of the Office (including the Patent Examining Corps) are instructed to: (1) not respond to requests from third parties or other submissions of an application, except those corresponding to 37 CFR 1,290 or 37 CFR 1,291; and (2) reject verbal or telephone comments or submissions regarding third party requests. See MPEP § 1134.01. The list of information that meets the format requirements of 37 CFR 1.98(a)(1) and the identification requirements of 37 CFR 1.98(b) cannot be included in the specification of the application in which it is submitted, but must be submitted in a separate document. A separate list is needed to easily confirm that the applicant intends to provide a disclosure statement and to provide the examiner with an easily accessible checklist indicating which identified documents have been considered. A separate list also provides the applicant with an easy means of communication to indicate which listed documents have been reviewed and which documents have not been considered.