| Recent Notices of Rulemaking |
Referenced Items (190, 191, 192) |
(192) DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Part 1
[Docket No.: PTO-P-2005-0024]
RIN 0651-AB95
Changes To Information Disclosure
Statement Requirements and
Other Related Matters
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Notice of proposed rulemaking.
SUMMARY: The United States Patent and Trademark Office (Office) is
proposing changes to information disclosure statement (IDS)
requirements and other related matters to improve the quality and
efficiency of the examination process. The proposed changes will enable
the examiner to focus on the relevant portions of submitted information
at the very beginning of the examination process, give higher quality
first actions, and minimize wasted steps. The Office is proposing the
following changes relating to submissions of IDSs by applicants/patent
owners: Before a first Office action on the merits, require additional
disclosure for English language documents over twenty-five pages, for
any foreign language documents, or if more than twenty documents are
submitted, but documents submitted in reply to a requirement for
information or resulting from a foreign search or examination report
would not count towards the twenty document limit; permit the filing of
an IDS after a first Office action on the merits only if certain
additional disclosure requirements have been met; and eliminate the
fees for submitting an IDS. Updates to the additional disclosure
requirements would be required as needed for every substantive
amendment. The Office is also proposing to revise the protest rule to
better set forth options that applicants have for dealing with
unsolicited information received from third parties.
DATES: To be ensured of consideration, written comments must be
received on or before September 8, 2006. No public hearing will be
held.
ADDRESSES: Comments should be sent by electronic mail over the Internet
addressed to: AB95.comments@uspto.gov. Comments may also be submitted
by mail addressed to: Mail Stop Comments-Patents, Commissioner for
Patents, P.O. Box 1450, Alexandria, VA 22313-1450; or by facsimile to
(571) 273-7707, marked to the attention of Hiram H. Bernstein. Although
comments may be submitted by mail or facsimile, the Office prefers to
receive comments via the Internet.
Comments may also be sent by electronic mail message over the
Internet via the Federal eRulemaking Portal. See the Federal
eRulemaking Portal Web site (http://www.regulations.gov) for additional
instructions on providing comments via the Federal
eRulemaking Portal.
The comments will be available for public inspection at the Office
of Patent Legal Administration, Office of the Deputy Commissioner for
Patent Examination Policy, currently located at Room 7D74 of Madison
West, 600 Dulany Street, Alexandria, Virginia, and will be available
through anonymous file transfer protocol (ftp) via the Internet
(address: http://www.uspto.gov). Because comments will be made available
for public inspection, information that is not desired to be made public,
such as an address or phone number, should not be included in the comments.
FOR FURTHER INFORMATION CONTACT: Hiram H. Bernstein ((571) 272-7707),
Senior Legal Advisor, Office of Patent Legal Administration, Office of
the Deputy Commissioner for Patent Examination Policy; or Robert J.
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Spar ((571) 272-7700), Director of the Office of Patent Legal
Administration, Office of the Deputy Commissioner for Patent
Examination Policy, directly by phone, or by facsimile to (571) 273-
7707, or by mail addressed to: Mail Stop Comments-Patents, Commissioner
for Patents, P.O. Box 1450, Alexandria, VA 22313-1450.
SUPPLEMENTARY INFORMATION: The Office is proposing changes to the rules
of practice in title 37 of the Code of Federal Regulations (CFR) to
revise IDS practice. The Office is specifically proposing changes to
Secs. 1.17, 1.48, 1.55, 1.56, 1.97, 1.98, 1.99 1.291, 1.312,
1.555, and 1.948.
The Office will post a copy of this notice on its Internet Web site
(http://www.uspto.gov). Additionally, individuals or organizations that
need a copy for the purpose of providing comments, may send a request by
phone or e-mail to Terry Dey at ((571) 272-7730 or terry.dey@uspto.gov)
to receive an e-mail copy of the notice. When making a request for an
e-mail copy, it is requested that persons please specify whether they
wish to receive the document in MS-Word, WordPerfect, or HTML format.
The following definitions are intended to facilitate an
understanding of the discussion of the proposed rules. The words
"information," "citation" and "document" are used to
describe any item of information listed in an IDS. Unless otherwise
indicated, the term "applicant" is intended to cover the "patent
owner" in regard to submissions of IDSs in ex parte or inter partes
reexaminations. The words "Sec. 1.56(c) individual" are intended to
cover all parties identified in Sec. 1.56(c).
Background and Rationale: Persons associated with a patent
application have a duty to disclose certain information to the Office.
This duty was codified as Sec. 1.56 in 1977. Pursuant to Sec.
1.56(a), each individual associated with the filing and prosecution of
a patent application must disclose to the Office "all information
known to that individual to be material to patentability." It must be
emphasized that there is no duty to disclose information to the Office
if the information is not material. As a companion to Sec. 1.56,
Secs. 1.97 and 1.98 were added to provide "a mechanism by which
patent applicants may comply with the duty of disclosure provided in
Sec. 1.56." See Manual of Patent Examining Procedure Sec. 609 (8th
ed. 2001) (Rev. 3, August 2005) (MPEP).
Although Sec. 1.56 clearly imposes a duty to disclose material
information, that rule neither authorizes nor requires anyone to file
unreviewed or irrelevant documents with the Office. Such documents add
little to the effectiveness of the examination process and, most
likely, negatively impact the quality of the resulting Office
determinations.
One goal of the changes proposed in this notice is to enable an
examiner to identify the most relevant prior art in an efficient and
expeditious manner, even when an IDS containing a large number of
documents is submitted. The changes proposed in this notice accomplish
this by requiring in certain circumstances additional disclosure about
documents cited in an IDS. Applicants and their representatives are
reminded that the presentation of an IDS, like any other paper filed in
the Office, is subject to the provisions of Sec. 10.18. The reasonable
inquiry mandated by Secs. 10.18(b)(2) and 10.18(b)(2)(i) requires
that information in an IDS be reviewed to assure its submission does
not cause unnecessary delay or needlessly increase the cost of
examination. Failure to review can also implicate obligations of
registered practitioners under Secs. 10.23(b) and (c), and Sec.
10.77(b). Likewise, when an IDS includes several documents of marginal
relevance, combined with other evidence suggesting that the marginally
relevant information was submitted with the intent to obscure material
information, this may run afoul of the duty of candor and good faith
set forth in Sec. 1.56(a). In such circumstance, an inference that the
applicant or their representative attempted to cover up or conceal a
material reference could be drawn. See Sec. 10.18(b); and see Molins
PLC v. Textron, Inc., 48 F.3d 1172, 1184, 33 USPQ2nd 1823, 1831 (Fed.
Cir. 1995) ("burying a particularly material reference in a prior art
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statement containing a multiplicity of other references can be
probative of bad faith").
Current IDS requirements are ineffective: Current Secs. 1.97
and 1.98 do not encourage applicants to bring the most relevant
information to the attention of the examiner early in the examination
process, at least, in part, because applicants and practitioners
mistakenly believe that people associated with a patent application
must submit questionably or marginally relevant documents in order to
ensure compliance with the Sec. 1.56 duty of disclosure. A limited
amount of time is available for an examiner's initial examination of
the application, which includes at least a mandatory cursory review of
each document cited. Thus, when large IDSs are submitted without any
identification of relevant portions of documents, some of the
examiner's limited time is diverted to consider the cited documents,
and efforts to perform a quality examination may be adversely affected.
This is especially true when the submission includes irrelevant or
marginally relevant documents, and the situation is worsened when a
large number of the documents are irrelevant, marginally relevant, or
cumulative. It appears that applicants sometimes file large collections
of information for the examiner's review without having first reviewed
the information themselves for relevance in the mistaken belief that
such action is permitted under the current rules. If irrelevant
information is filtered out before an IDS is filed, the examiner will
be able to focus upon the more relevant information, and perform a more
efficient, effective examination.
The effectiveness and quality of the examination process, as well
as the resulting patentability determinations, stand to improve if the
most pertinent information about the invention is before the examiner
during examination, and especially before the first Office action.
Early submission of pertinent information by the applicant goes hand in
hand with an examiner's prior art search in making sure that the goals
of improving the effectiveness and quality of the examination process,
and the resulting patentability determinations, are achieved. The
Office recognizes, however, that sometimes not all pertinent
information is available for submission prior to the first Office
action on the merits. Therefore, to allow for such circumstances while
still achieving these goals, the later a document is submitted during
the prosecution process, the greater the amount of additional
disclosure that the applicant will be required to provide. The Office
is proposing a structure for filing IDSs that will enable applicants to
provide meaningful information to the examiner in the most effective
and efficient manner.
Elimination of fee requirements (Sec. 1.17(p)): The fee
requirement under Sec. 1.17(p) for submitting an IDS is proposed to be
eliminated. Under current Sec. 1.97, an applicant can delay the
examiner's receipt of relevant information until after the initial
stage of examination by simply paying the fee under Sec. 1.17(p).
Under the proposed rules, an applicant wishing to submit an IDS after a
first Office action on the merits and before the mailing date of a
notice of allowability or a notice of allowance under Sec. 1.311 could
only do so if applicant meets the certification requirements under
Sec. 1.97(e)(1) (that the information was discovered as a result of
being cited by a foreign patent office in a counterpart application and
is being submitted to the Office within three months of its citation by
the foreign patent office), or applicant complies with applicable
additional disclosure requirements.
The current requirements under Secs. 1.97 and 1.98 for
submitting an IDS after a notice of allowance are proposed to be
revised by providing two windows, one before, or with, and one after,
payment of the issue fee. Submission of an IDS during either of these
two windows will require compliance with heightened additional
disclosure requirements (compared to those required for submissions
after a first Office action but prior to a notice of allowance or
notice of allowability), which will depend upon whether a current claim
is unpatentable in view of the information in the newly submitted IDS.
Threshold number of cited information: Under the proposed rules,
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when an applicant submits an unusually large amount of information
before a first Office action, the applicant must help to ease the
burden on the Office associated with the examiner's consideration of
the information. The Office has surveyed, across all technologies,
3,084 small entity applications and 9,469 non-small entity
applications, covering a six-week period of allowed applications to
determine the appropriate threshold number of cited information. In this
survey, which includes all IDSs submitted at any time during the
prosecution process of an application, approximately eighty-five percent
of the sample included twenty or fewer submitted documents, while
eighty-one percent of applications included fifteen or fewer submitted
documents. Thus, the Office has determined that for IDSs submitted prior
to a first Office action on the merits, a threshold of twenty documents
best balances the interests of the Office and of the applicants. It should
be noted that a threshold of twenty documents for IDSs submitted prior
to a first Office action on the merits would not require a change in
practice for most applications. The Office expects that more than
eighty-five percent of IDSs filed prior to first Office action on the
merits would not require any explanation because the threshold number
only applies to IDSs filed prior to first Office action and has certain
exceptions, while the above-mentioned survey included all IDSs filed
throughout the entire prosecution of the application with no
exceptions. The threshold of twenty cited pieces of information is
deemed adequate, particularly in view of the fact that documents
resulting from a foreign search or examination report when accompanied
by a copy of the foreign search or examination report, would be
excepted (not counted toward the threshold number). In addition,
documents submitted in reply to a requirement for information under
Sec. 1.105 would also be excepted.
Additional Disclosure Requirements: The Office is proposing
additional disclosure requirements for some IDS submissions to promote
effective and efficient examination. First, for applications in which
twenty or fewer documents have been cited in one, or more IDS prior to
a first Office action on the merits, an explanation is required only
for English-language documents over twenty-five pages, and for non-
English-language documents of any length. Second, for applications in
which more than twenty total documents have been cited in one, or more,
IDS prior to a first Office action on the merits, an explanation is
also required for each cited document. The required explanation must
identify information in each document that is relevant to the claimed
invention or supporting specification. These required explanations are
intended to provide meaningful information to the examiner when a large
IDS, considering all IDSs cumulatively which are filed within this
window of time, is presented before a first Office action on the merits
has been given.
More extensive disclosure requirements would apply to IDS
submissions after a first Office action on the merits. Thus, applicant
would be required to provide a non-cumulative description as well as an
explanation, or a copy of a recently issued foreign search or
examination report, for each document submitted after a first Office
action on the merits. Where an IDS is filed after the mailing date of a
notice of allowability or a notice of allowance under Sec. 1.311,
applicant would be required to provide an appropriate patentability
justification, which includes the explanation and non-cumulative
description required after a first Office action, and reasons why the
claims are patentable over the cited document(s).
If an applicant presents unusually long documents, foreign-language
documents, or a large number of documents, more than a brief review by
the examiner is likely to be needed to reveal the most pertinent
portions of the documents. In such situations, the applicant's help is
needed so that the examiner may provide the best and most efficient
examination possible. Therefore, the proposed amended rules require
that in appropriate cases applicants must provide additional
disclosure, such as an identification of a portion of a document that
caused it to be cited, and an explanation of how the specific feature,
showing, or teaching of the document correlates with language in one or
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more claims. In those rare instances, where the specific feature,
showing, or teaching cannot be correlated to a claim limitation,
correlation to a specific portion of the supporting specification would
be required.
If an applicant presents cumulative information, review of such
information would waste examiner resources. Accordingly, an IDS must
not cite documents that are merely cumulative of other cited
information or supply information merely cumulative of what is already
present in the record. To aid in compliance with this prohibition,
applicants are required to submit a non-cumulative description for IDSs
submitted after a first Office action and after allowance. A non-
cumulative description is one that describes a disclosure in the cited
document that is not present in any other document of record.
Thus, while there may be substantial overlap between a currently
cited document and a document previously of record, the currently cited
document must include a teaching, showing, or feature not provided in
other documents of record, and the non-cumulative description must
point this out.
Examiner's consideration of information: Documents submitted in an
IDS are reviewed in the same manner as items of information obtained by
the examiner from other sources. That is, a document is given an
initial brief review in order to determine whether it warrants a more
in-depth study. Two indicators of the need for a more thorough review
are: (1) That the document has been applied in a rejection, or
specifically commented on by an examiner, in a case drawn to the same
or similar subject matter; or (2) that the document has been
particularly described by the applicant and its relevance to the
claimed invention and/or supporting specification clarified. This
practice reflects the practical reality of patent examination which
affords the examiner a limited amount of time to conclude all aspects
of the examination process.
Unsolicited information supplied to applicants by third parties:
Some applicants receive large amounts of unsolicited information from
third parties, sometimes accompanied by an allegation that the
information is relevant to particular technologies or applications.
Currently, many applicants simply submit such information to the Office
via an IDS. The Office is proposing to avoid the burdens to both the
Office and applicants occasioned by this practice by clarifying that
applicant may opt to provide written consent to the filing of a protest
by the third party based on such information, thus shifting the
explanation burden back to the third party.
Conclusion: The Office believes that the proposed changes will
enhance the examination process for both examiners and applicants.
Ensuring a focused and thorough examination is a joint responsibility
of the examiner and the applicant, particularly as examination is not
seen by the Office as an adversarial process. The proposed changes
provide an incentive to the applicant to cite only the most relevant
documents, and are designed to provide the examiner with useful and
relevant information early in the examination process. All parties
involved with, or affected by, the patent system want the patent
examination system to "get it right" the first time. Concentrating
the patent examiner's review on the information most pertinent to
patentability prior to a first Office action on the merits will
significantly help in achieving this goal.
Discussion of the Specific Rules
Title 37 of the Code of Federal Regulations, Part 1, is proposed to
be amended as follows:
Section 1.17: Section 1.17(h) is proposed to be amended to provide
a petition fee for a petition to withdraw a reexamination proceeding
from the publication process under Sec. 1.98(a)(3)(iii)(B). This
proposed amendment reflects that there is no withdrawal of a
reexamination proceeding from issue available under Sec. 1.313; thus,
a petition to withdraw a reexamination proceeding from the publication
process would be filed under Sec. 1.98(a)(3)(iii)(B), not under Sec.
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1.313.
Section 1.17(p) is proposed to be revised to delete the IDS fee
requirements in Secs. 1.97(c) and (d), as a conforming change.
Section 1.48: Section 1.48 is proposed to be amended in the title,
paragraph (h), and by the addition of paragraph (k), including (k)(1)
through (k)(3), to address a change in the order of inventors' names,
and a change in the spelling, or updating of an inventor's name in
pending or abandoned applications.
Section 1.48(h) would be revised to clarify the exclusion of
correction of inventorship via reexamination or reissue under Sec.
1.48. This exclusion of reexamination is analogous to the exclusion of
correction of inventorship in patents under Sec. 1.48 clarified by
Sec. 1.48(i).
Section 1.48(k) would require that the requests pursuant to Sec.
1.48(k) be accompanied by a processing fee of $130.00 pursuant to Sec.
1.17(i) for non-provisional applications, or $50.00 pursuant to Sec.
1.17(q) for a provisional application (where applicable). Additionally,
each request pursuant to Sec. 1.48(k) should also be accompanied by a
supplemental application data sheet, pursuant to Sec. 1.76, for
changes in a nonprovisional application. The concomitant submission of
a supplemental application data sheet pursuant to Sec. 1.76 with a
request pursuant to Sec. 1.48(k) is strongly advised as the best means
to ensure that the Office will recognize such requested change,
particularly after the mailing of a notice of allowance, when such
information is needed for printing inventorship information on the face
of any patent to issue. The requests permitted under Sec. 1.48(k) are
limited to non-reissue applications and do not cover issued patents,
which would require that a certificate of correction procedure be used.
Thus, Sec. 1.48(k) is not applicable to reissue applications or
reexamination proceedings. A newly executed Sec. 1.63 oath or
declaration is not required. The submission of a newly executed Sec.
1.63 declaration would not be effective; rather, applicant must proceed
via Sec. 1.48(k) to effectuate the changes permitted by this
provision.
Section 1.48(k)(1) would provide that the order of the inventors'
names may be changed to another specified order, except in provisional
or reissue applications. Currently, such requests would generally be
done by petition under Sec. 1.182 with a petition fee of $400. MPEP
Sec. 605.04(f).
Section 1.48(k)(2) would provide a means to change the spelling of
an inventor's name in either a provisional or nonprovisional
application. Currently, such requests, other than typographical or
transliteration errors, would be done in nonprovisional applications by
petition under Sec. 1.182 and a petition fee of $400.00. See MPEP
Sec. 605.04(b). Section 1.48(k)(2) would cover all requests for a
spelling change, including typographical errors (made by applicant) and
transliteration errors. This would eliminate the time consuming back
and forth correspondence as to whether a change in spelling was in fact
a typographical or transliteration error, or whether a petition has to
be filed, particularly as many requests for change in spelling are
attempted to be submitted under the umbrella of typographical or
transliteration errors when clearly they are not.
Section 1.48(k)(3) would provide a means to update an inventor's
name (e.g., changed due to marriage) when it has changed after the
filing of an application (excluding reissue applications). A request
for updating an inventor's name must be accompanied by: (i) An
affidavit signed with both names and setting forth the procedure
whereby the change of names was effected; or (ii) a certified copy of a
court order for name change. Such change in name is currently
accomplished by the filing of a petition under Sec. 1.182 and a
petition fee of $400. MPEP Sec. 605.04(c). Where an inventor's name
was changed prior to the filing of an application, yet the old name was
utilized in an executed Sec. 1.63 declaration, a petition under Sec.
1.48(a) would be required.
Section 1.55: Section 1.55(a)(2) is proposed to be amended to be
consistent with the proposed changes to Sec. 1.312, which provides an
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expanded opportunity for applicants to have entered certain technical
amendments after the close of prosecution in an allowed application
without withdrawal of the application from issue. Specifically, under
the proposed changes to Sec. 1.312(a)(2), a foreign priority claim
made after the payment of the issue fee may be included in the patent
if submitted in sufficient time to allow the patent to be printed with
the priority claim and a petition to accept an unintentionally delayed
priority claim pursuant to Sec. 1.55(c) has been filed (if required)
and granted. In addition, Sec. 1.312(b) is proposed to be amended to
provide that if the patent does not include the amendment filed after
payment of the issue fee, the amendment would not be effective unless
the patent is corrected by a certificate of correction under 35 U.S.C.
255 and Sec. 1.323. See the proposed changes to Secs. 1.312(a)(2)
and (b).
Accordingly, the last sentence of Sec. 1.55(a)(2) is proposed to
be amended to delete the phrase "but the patent will not include the
priority claim unless corrected by a certificate of correction under 35
U.S.C. 255 and Sec. 1.323" and to insert a new last sentence, "If
the patent did not publish with the priority claim, the amendment
adding the priority claim will not be effective unless corrected by a
certificate of correction under 35 U.S.C. 255 and Sec. 1.323." The
change in language in Sec. 1.55 is for conformance with the changes
proposed to Sec. 1.312. The current language being replaced in Sec.
1.55 presumes that a priority claim filed after the date the issue fee
is paid will not be entered and will not, therefore, be effective and
the addition of a priority claim must therefore be treated as a
certificate of correction after the patent has issued. The proposed
amendment to Sec. 1.312 would permit the entry of a priority claim
after the issue fee has been paid, provided it is submitted in
sufficient time to allow the priority claim to be printed on the face
of the patent and a grantable petition under Sec. 1.55(c) to accept an
unintentionally delayed priority claim is filed, if required.
Accordingly, the new language to Sec. 1.55 addresses the situation
where sufficient time was not present to allow printing of the priority
claim on the face of the patent and the amendment adding the priority
claim must be corrected by certificate of correction.
Section 1.56: Section 1.56 is proposed to be amended by the
addition of paragraph (f) that would provide a "safe harbor" for a
Sec. 1.56(c) individual who, in good faith and to the best of the
person's knowledge, information and belief, formed after a reasonable
inquiry under the circumstances, took reasonable steps to comply with
the additional disclosure requirements of Sec. 1.98(a)(3). While the
proposed amendment to Sec. 1.56 may not act as a
complete defense in all situations, particularly as the court is not
bound by any one duty of disclosure standard established by the Office,
the Office is hopeful that a court in deciding a duty of disclosure
issue will take the proposed safe harbor into account.
Section 1.97: Section 1.97(a) is proposed to be amended to reflect
the applicability of Sec. 1.97 to reexamination proceedings and to add
other clarifying language.
Sections 1.97(b), (c), (d)(1), and (d)(2) would identify four time
periods for submission of information disclosure statements (IDSs).
Section 1.98(a)(3) would set forth "Additional disclosure
requirements" specific to each time period that must be met for
submission of IDSs during each of these time periods.
Section 1.97(b) would identify a "First time period" for
submitting IDSs, with paragraphs (b)(1) through (b)(3) reciting the
current periods for submitting an IDS within three months from the
filing date of a national application or entry of the national stage,
or before the mailing of a first Office action, or within three months
of the filing of a reexamination. The expression "filing date" means
the actual filing date of the application and does not include filing
dates for which a benefit is claimed under 35 U.S.C. 119, 120, 121, or
365. Thus, an IDS may be submitted within three months of the actual
filing date of a continuation, divisional, or continuation-in-part
application pursuant to Sec. 1.97(b)(1).
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Section 1.97(b)(1) is also proposed to be amended to add "35
U.S.C. 111(a)," the statutory basis for the recited national
application.
Section 1.97(b)(4) is proposed to be deleted. Any IDS filed with a
request for continued examination under Sec. 1.114 (RCE), or after an
RCE is filed but before a first Office action is mailed in the RCE,
would need to comply with the time requirements of Secs. 1.97(c)
or (d), whichever is applicable.
Section 1.97(c) would identify a "Second time period" for
submitting IDSs and would apply to IDSs filed after the period
specified in paragraph (b) of this section, and before the earlier of
the mailing of a notice of allowability or a notice of allowance under
Sec. 1.311 for an application, or the mailing of a Notice of Intent to
Issue Reexamination Certificate (NIRC) for a reexamination proceeding.
Currently, a second time period for submission of IDSs pursuant to
Sec. 1.97(c) permits submission of an IDS in an application simply by
payment of a fee or by compliance with the statements provided by Sec.
1.97(e), relating to discovery of the information within three months
of its submission to the Office. The proposed "Second time period,"
Sec. 1.97(c), would eliminate the fee payment option, while retaining
a Sec. 1.97(e)(1) option. Applicants/patent owners, in proposed Sec.
1.98(a)(3)(ii), would be offered an additional option, other than
compliance with Sec. 1.97(e)(1), provided the applicant/patent owner
is willing to comply with additional disclosure requirements referenced
in Secs. 1.98(a)(3)(iv) and (a)(3)(v).
The references, in current Sec. 1.97(c), to a final action under
Sec. 1.113 or actions that otherwise close prosecution, are
unnecessary and thus deleted. IDSs that are submitted after close of
prosecution, such as after a final rejection, are inherently included
in the expression "submitted prior to the mailing of a notice of
allowance." The Sec. 1.97 practice of treating an IDS submitted after
a final Office action under Sec. 1.113, such as a final rejection,
would not change other than removal of the fee requirement and would
still continue to be considered by the examiner in the next Office
action, as appropriate. If there is no next Office action (e.g., the
application goes abandoned), the IDS will be placed in the file but not
considered, as in current practice.
Section 1.97(c) would also be amended to provide for its
applicability to reexamination proceedings in regard to the issuance of
a Notice of Intent to Issue a Reexamination Certificate ("NIRC").
Section 1.97(d)(1) is proposed to be amended to be labeled a
"Third time period," and would permit consideration of an IDS filed
in an application after the period set forth in Sec. 1.97(c) (after
the earlier of a notice of allowability or notice of allowance), and
before or with payment of the issue fee. Submission under the "Third
time period" would be under more limited conditions than the
conditions for submitting an IDS during the "Second time period";
however, the fee under Sec. 1.17(p) would be eliminated. Because
reexamination proceedings are not required to pay an issue fee, this
"Third time period" is not applicable to reexamination proceedings.
All IDSs filed in reexamination proceedings after the NIRC will be in
the "Fourth time period" defined in proposed Sec. 1.97(d)(2).
Proposed Sec. 1.97(d)(2) would be labeled a "Fourth time
period," and would permit consideration in an application of an IDS
filed after payment of the issue fee and in sufficient time to be
considered by the examiner before issue of the application, under more
limited conditions than under the "Third time period" pursuant to
Sec. 1.97(d)(1). In a reexamination proceeding, this time period would
begin when the NIRC is issued and end at issue of a Reexamination
Certificate under Sec. 1.570 or Sec. 1.997.
Section 1.97(e) would be amended by changing "statement" to
"certification" and "state" to "certify," to clarify this
requirement in light of the requirements of proposed Sec. 1.98(a)(3).
Section 1.97(f) would be amended to contain a reference to Sec.
1.550 and Sec. 1.956 (for reexamination proceedings).
Section 1.97(g) would be amended to replace "section" with
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"Sec. 1.98."
Section 1.97(h) is provided merely for context and no amendments
are proposed therein.
Section 1.97(i) would be amended by reformatting the current
material as paragraph (i)(1), and adding paragraph (i)(2). In addition,
Sec. 1.97(i)(1) would contain a reference to Sec. 1.98(a)(3)(vii)(C),
requiring meaningful compliance with the requirements for explanations,
non-cumulative descriptions, and reasons supporting a patentability
justification or the Office may decline to consider the information
disclosure statement.
Section 1.97(i)(2) would permit applicant to obtain additional time
to complete the required information to accompany the IDS where a
portion of the information was inadvertently omitted. The grant of
additional time would be solely at the discretion of the Office.
New Sec. 1.97(j) would be added to make clear that IDSs filed
during the "Fourth time period" (after the issue fee is paid or the
NIRC) would not be effective to withdraw the application from issue,
hence the requirement in Sec. 1.98(a)(3)(iii)(B), or to withdraw a
reexamination proceeding from the publication procedure for a
reexamination certificate.
Sections 1.97(a), (b)(1), (c), and (d)(2) would be amended to
explicitly set forth the required time frames for filing an IDS in a
reexamination proceeding. Pursuant to current Sec. 1.555(a), an IDS in
a reexamination proceeding "must be filed with the items listed in
Sec. 1.98(a) as applied to individuals associated with the patent
owner in a reexamination proceeding." Section 1.555(a) then sets forth
a recommended time for filing an IDS, stating that the IDS "should be
filed within two months of the date of the order for reexamination, or
as soon thereafter as possible." The need to obtain the best art in
the proceeding as soon as possible is even greater in a reexamination
proceeding than in an application, since by statute (35 U.S.C. 305, and
314(c)) reexamination proceedings are to be "conducted with special
dispatch within the Office." Accordingly, it is proposed to revise
the regulatory statement of the time frames for IDS submissions in
reexaminations by revising Secs. 1.97(a), (b)(1), (c), and (d)(2),
thus making the time frames for reexaminations track the time frames
for IDS submissions in applications. It is also proposed that Sec.
1.555(a) be amended to delete the optional time frame appearing therein,
and to require the time frames set forth in Sec. 1.97, as it is proposed
to be revised.
Section 1.98: Section 1.98 is proposed to be substantially amended,
including Sec. 1.98(a)(3) defining "Additional disclosure
requirements" composed of: (1) Paragraphs (a)(3)(i) through
(a)(3)(iii), which define the type of additional disclosure
requirements to be met based on the time period of submission of the
IDS, including the particular documents requiring the additional
disclosure; (2) paragraph (a)(3)(iv), which defines a two-part
explanation requirement (identification of at least a portion of a
cited document, and correlation of the portion(s) identified to
specific claim language or to a specific portion of the specification
when the document is cited for that purpose); (3) paragraph (a)(3)(v),
which defines a non-cumulative description requirement; and (4)
paragraph (a)(3)(vi), which defines two alternative types of
patentability justification.
Section 1.98(a), (a)(1) and (2), and (a)(1)(i) are proposed to be
amended for technical corrections or conforming amendments.
Section 1.98(a)(2)(iii) is proposed to be amended to no longer
require submission of a legible copy of each cited pending or abandoned
U.S. application's specification, including the claims, and drawing(s)
when the cited pending or abandoned U.S. application is stored at the
Office in the electronic form currently referred to as the image file
wrapper (IFW). If the cited pending or abandoned U.S. application is
not stored in the Office's IFW, a legible copy of the application or
the portion of the application which caused it to be cited is still
required. In addition, even if the cited pending or abandoned U.S.
application is stored in the Office's IFW, consideration of any portion
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of the application file outside of the specification, including the
claims, and drawings requires that a legible copy of that portion be
included in the IDS. This proposed amendment implements a previous
limited waiver of the requirement in Sec. 1.98(a)(2)(iii), and also
expands on the previous waiver by including abandoned applications in
addition to pending applications. See Waiver of the Copy Requirement in
37 CFR 1.98 for Cited Pending U.S. Patent Applications, 1287 Off. Gaz.
Pat. Office 162 (Oct. 19, 2004).
Sections 1.98(a)(3)(i) and (a)(3)(ii) are proposed to be
significantly amended and incorporated into newly proposed Sec.
1.98(a)(3).
Section 1.98(a)(3) is proposed to set forth "Additional disclosure
requirements" specific to each time period identified in Secs.
1.97(b), (c), (d)(1), and (d)(2) that must be met for submission of
IDSs during each of these time periods.
Section 1.98(a)(3)(i) would provide that IDSs submitted within the
"First time period" of Sec. 1.97(b) (e.g., prior to a first Office
action) that contain: (1) Foreign language documents (Sec.
1.98(a)(3)(i)(A)); (2) any document over twenty-five pages excluding
sequence listings or computer program listings (Sec.
1.98(a)(3)(i)(B)); or (3) more than twenty documents, calculated
cumulatively (Sec. 1.98(a)(3)(i)(C)), would be required to provide
additional disclosure in accordance with proposed Sec. 1.98(a)(3)(iv)
of an explanation (an identification of at least one portion causing
the document to be cited, including a specific feature, showing, or
teaching, and correlation to specific claim language, or where
correlation to claim language is not possible, correlation may be made
to a specific portion of the supporting specification), with exceptions
set forth in Secs. 1.98(a)(3)(viii)(A) and (a)(3)(viii)(C). In
addition, where a foreign language document is being submitted, any
existing translation would also be required, Sec. 1.98(a)(3)(xi).
Foreign language documents of any length would trigger the
explanation and translation requirements. English language documents
(non-foreign language) include: English language nonpatent literature,
U.S. patent documents (patents and patent application publications),
and English language foreign patent documents. Use of foreign language
terminology or expressions such as for Latin proper names for plants
and animals would not make an otherwise English language document a
non-English language document. Similarly, the presence of an English
language abstract would not make a foreign language document an English
language document for the purpose of Sec. 1.98(a)(3)(i)(A).
The threshold for document size is over twenty-five pages. In
calculating documents over twenty-five pages, sequence listings, or
computer program listings, pursuant to Sec. 1.52(e)(1) would be
excluded (Sec. 1.98(a)(3)(i)(B)). In determining the number of pages
of a document, all sheets of the document being submitted are counted,
including drawing sheets and cover sheets (but not sequence listings or
computer program listings). Applicant is permitted to submit only a
portion of a document and is encouraged to do so where that portion can
be considered without further context and is the only portion that is
relevant to the claimed invention. When applicant elects to submit
selected pages of a document, those pages will be counted to determine
the length of the cited (partial) document and whether an explanation
is required for that document.
The threshold number of documents for one or more IDSs filed before
a first Office action is twenty calculated cumulatively in a single
application or proceeding. The threshold number of documents can be
reached either in multiple (sequential) IDSs each containing fewer than
the twenty trigger value, or all at once in a single IDS. Documents
that do not comply with the timeliness requirements of Sec. 1.97, or
the technical requirements of Sec. 1.98, (and thus may not be
considered) would not count toward the cumulative total pursuant to
Sec. 1.98(a)(3)(i)(C). Additionally, a document that is not compliant
with the requirements of Sec. 1.98 would not be double counted toward
the threshold number if it was resubmitted to cure the non-compliance.
Accordingly, for example, an applicant who realizes that a twenty-
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three-document IDS submission made prior to the mailing of a first
Office action on the merits did not contain the required additional
disclosure may either submit the additional disclosure for the twenty-
three documents, or withdraw three of the documents, provided such
action is taken within the time frame of Sec. 1.97(b)(3).
Documents that are not included in an IDS but are mentioned in the
specification as background information would not count toward the
threshold number. The examiner is under no obligation to review
documents cited in the specification. See MPEP Sec. 609 III C (1),
Noncomplying Information Disclosure Statements. Where applicant desires
review of a particular document, that document must be cited in a
compliant IDS.
For continuing applications, documents of a compliant IDS in the
prior application, which were required to be reviewed by the examiner
therein (see MPEP Sec. 609 I, IDS IN CONTINUED EXAMINATIONS OR
CONTINUING APPLICATIONS), would not be considered as part of the
cumulative total in a continuing application unless they are
resubmitted in the continuing application (so that they will appear
on the face of the patent that issues from the continuing application).
In addition, all other documents (e.g., previous documents that were
noncompliant with Secs. 1.97 and 1.98 and never considered by the
examiner in the prior application) in prior applications would not be
counted toward the threshold number in a continuing application, unless
they are resubmitted in the continuing application.
Section 1.98(a)(3)(i) would provide for exceptions to the
additional disclosure requirements by reference to Secs.
1.98(a)(3)(viii)(A) and (a)(3)(viii)(C). For IDSs submitted in the
first time period, applicant may submit documents resulting from a
foreign search or examination report where a copy of the report is
submitted (Sec. 1.98(a)(3)(viii)(A)), and documents submitted in reply
to a requirement for information pursuant to Sec. 1.105 (Sec.
1.98(a)(3)(viii)(C)), without triggering any additional disclosure
requirements.
Section 1.98(a)(3)(ii) would provide that all information in IDSs
submitted within the "Second time period" of Sec. 1.97(c) (e.g.,
after a first Office action and prior to the earlier of a notice of
allowability or a notice of allowance), must be accompanied by
additional disclosure in accordance with Sec. 1.98(a)(3)(iv)
(explanation) and Sec. 1.98(a)(3)(v) (non-cumulative description),
with exceptions set forth in Secs. 1.98(a)(3)(viii)(B) and
(a)(3)(viii)(C). Additionally, when a foreign language document is
being submitted, any existing translation would also be required, Sec.
1.98(a)(3)(xi).
Section 1.98(a)(3)(ii) would provide for exceptions to the
additional disclosure requirements by reference to Secs.
1.98(a)(3)(viii)(B) and (C). For IDSs submitted in the second time
period, applicant may, without triggering any additional disclosure
requirements, submit documents accompanied by a certification pursuant
to Sec. 1.97(e)(1) and a copy of the foreign search or examination
report (Sec. 1.98(a)(3)(viii)(B)), and documents submitted in reply to
a requirement for information pursuant to Sec. 1.105 (Sec.
1.98(a)(3)(viii)(C)).
Section 1.98(a)(3)(iii) would provide that all documents submitted
within the "Third time period" (e.g., after the earlier of a notice
of allowability or a notice of allowance and prior to payment of the
issue fee), and the "Fourth time period" (e.g., after payment of the
issue fee and in sufficient time to be considered) must be accompanied
by a certification under either Secs. 1.97(e)(1) or (2).
Section 1.98(a)(3)(iii)(A) would provide that information submitted
within the "Third time period" of Sec. 1.97(d)(1) must be
accompanied by either of two patentability justifications pursuant to
Sec. 1.98(a)(3)(vi)(A) (explanation, non-cumulative description and
reasons supporting the patentability of the independent claims) or (B)
(explanation, noncumulative description, an amendment, and reasons
supporting the patentability of the amended claims).
Section 1.98(a)(3)(iii)(B) would provide that information submitted
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within the "Fourth time period" of Sec. 1.97(d)(2) must be
accompanied by a petition to withdraw from issue pursuant to Sec.
1.313(c)(1), or to withdraw a reexamination proceeding from the
publication process, and the patentability justification under Sec.
1.98(a)(3)(vi)(B).
Section 1.98(a)(3)(iv) would provide a definition of the
explanation that must be submitted to meet the additional disclosure
requirements of Sec. 1.98(a)(3). The explanation requirement consists
of three parts, two in regard to an identification (Sec.
1.98(a)(3)(iv)(A)) and one in regard to a correlation, Sec.
1.98(a)(3)(iv)(B).
Section 1.98(a)(3)(iv)(A) would provide for the identification
portion of the explanation requirement. Section 1.98(a)(3)(iv)(A) would
require an identification of specific feature(s), showing(s), or
teaching(s) that caused a document to be cited. Where applicant is
unaware of any specific relevant portion(s) of a document, that
document should not be submitted to the Office. The bare recitation
that a document was provided to applicant by a third party or was
discovered during a pre-examination search is an insufficient
identification.
Section 1.98(a)(3)(iv)(A) would provide for the identification of a
portion(s) of a document where the specific feature(s), showing(s), or
teaching(s) may be found. For example, a proper identification would
indicate, by page and line number(s), or figure and element number(s),
where to look in the document for the portion.
The identification requirements require applicant to identify at
least one appearance in the document (a representative portion) of a
specific feature, showing, or teaching for which the document is being
cited. Where applicant is aware that such feature, showing, or teaching
appears in more than one portion of the document, applicant would not
need to specifically point out more than one occurrence, although
applicant may wish to, particularly where the additional appearance may
not be apparent to the examiner and may have some additional
significance over its first identified appearance. Where applicant
recognizes that a document is relevant for more than one feature,
showing, or teaching, and is being cited for more than one feature,
showing, or teaching, applicant would need to specifically identify
each additional feature, showing, or teaching (and the portion where
the feature, showing, or teaching appears in the document).
A mere statement indicating that the entire document, or
substantially the entire document, is relevant, would not comply, and
may result in the examiner electing not to consider the document. Where
applicant believes that an entire document or most portions thereof are
relevant and caused the document to be cited, applicant may make such
statement so long as applicant establishes such fact by sufficient
recitation of examples from the document. Sufficiency of recitation of
examples will vary on a case-by-case basis. Applicant should,
therefore, be wary of not identifying at least one specific portion of
a document since noncompliance may, if not corrected in a timely and
proper manner, result in the document not being considered.
Documents merely representing background information may be
identified and discussed in the specification. There is generally
little utility in submitting a background document as part of an IDS,
particularly after a first Office action. In the isolated situation
where applicant wishes to identify a purely background document after a
first Office action on the merits, the document can be discussed as
part of the Remarks/Arguments section of a reply to the Office action.
Clearly, background documents can be supplied prior to a first Office
action on the merits in an IDS without discussion where twenty or fewer
documents are being submitted, provided that the background document is
less than twenty-five pages, and the document is not in a foreign
language.
Section 1.98(a)(3)(iv)(B) would additionally require a correlation
of the specific feature(s), showing(s), or teaching(s) identified
pursuant to Sec. 1.98(a)(3)(iv)(A) to specific corresponding claim
language, or to a specific portion(s) of the specification that
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provides support for the claimed invention, where the document is cited
for that purpose. Optionally, applicant may indicate any differences
between the specific claim language and what is shown, or taught, in
the document. The specific claim language may be in either an
independent claim or a dependent claim.
The alternative of correlation to a specific portion of the
specification, rather than to a specific claim, is available in the
limited circumstances where correlation cannot be made to specific
claim language, as the document is not cited for that purpose. The
alternative correlation is intended to include aspects of the
supporting specification that define claim scope or support compliance
with requirements of the patent statutes. For example, where a document
is submitted to identify a particular scope of a claim, such as where
there is a means-plus-function claim limitation pursuant to 35 U.S.C.
112, Para. 6, the correlation explanation would be satisfied when drawn to
this aspect. Additionally, where a document is being submitted that
relates to utility of the claimed invention, compliance with the
written description requirement, or enablement, the correlation
explanation would be satisfied when drawn to these aspects rather than
being drawn directly to specific claim language.
A particular correlation between a specific feature, showing, or
teaching of a document and an element of a claim may not be
representative of variations of the same specific feature, showing, or
teaching as recited in another claim. For example, a specific feature,
showing, or teaching may be recited by certain language in one claim,
while that specific feature, showing, or teaching may be recited by
entirely different claim language in another claim. In such
circumstances, in order to comply with the correlation requirement,
applicant would need to identify one instance of each different
recitation of the specific feature, showing, or teaching in the
different claims.
The correlation explanation, whether to specific claim language or
the supporting specification, must make clear why a specific feature,
showing, or teaching in a document that is being correlated to the
claimed invention, actually correlates thereto.
The Office does not contemplate that complying with the
identification and correlation of additional requirements will require
an extensive submission. The Office believes that, in most cases, a
compliant submission would include several sentences that: identify a
specific feature, showing, or teaching causing submission of a document
(e.g., rotary pump, element 32), identify the portion of the document
where the feature, showing, or teaching may be found (e.g., Figure 3 in
Patent A), and correlate the specific feature, showing, or teaching to
specific claim language (e.g., the rotary pump in Figure 3, element 32
of Patent A correlates to the rotary pump in claim 1 of the
application).
Applicant's attempted correlation of a specific feature, showing,
or teaching in a document may not, for example, be readily recognizable
as actually correlating to identified claim language, particularly
where such claim language may be a more generic or alternative way of
reciting the feature, showing, or teaching. In such instances,
applicant would need to add some explanatory material, particularly to
avoid a possible finding of noncompliance by the examiner with the
correlation requirement.
Section 1.98(a)(3)(v) would define a non-cumulative description
requirement that must accompany an IDS submission when the IDS is
submitted in the second, third, or fourth time periods, as citation of
merely cumulative information must be avoided, Sec. 1.98(c). The non-
cumulative description would require a description of how each document
being submitted is not merely cumulative of any other IDS-cited
document previously submitted, any document previously cited by the
examiner, or any document cited under Secs. 1.99 and 1.291. The
description may be of a specific feature, showing, or teaching in a
document that is not found in any other document of record. The non-
cumulative description requirement for the second time period (Sec.
1.97(c)) is subject to the exceptions set forth in Secs.
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1.98(a)(3)(viii)(B) and (a)(3)(viii)(C), while the non-cumulative
description requirement for the third time period (Sec. 1.97(d)(1)) is
subject to the exception set forth in Sec. 1.98(a)(3)(viii)(B).
Section 1.98(a)(3)(vi) would define alternative patentability
justifications (Secs. 1.98(a)(3)(vi)(A) and (a)(3)(vi)(B)), which
would be applicable for IDSs submitted during the third time period
(e.g., after allowance), with the Sec. 1.98(a)(3)(vi)(B) justification
required during the fourth time period (e.g., after payment of the
issue fee). Section 1.98(a)(3)(vi)(A) would require an explanation
pursuant to Sec. 1.98(a)(3)(iv), a non-cumulative description pursuant
to Sec. 1.98(a)(3)(v), and reasons why (each of) the independent
claims are patentable over the information in the IDS being submitted
considered together, and in view of any information already of record,
but particularly in view of information previously used to reject the
independent claim(s).
The expression "information previously used to reject" includes
applied prior art used in a rejection which was subsequently withdrawn
and is no longer utilized in a pending rejection.
A foreign search or examination report may be acceptable as the
required explanation of patentability or the statement of
unpatentability under either of the above requirements, respectively,
if the report provides sufficient details to comply with Sec.
1.98(a)(3)(vi).
Section 1.98(a)(3)(vi)(B) is the only procedure for IDSs submitted
in the fourth time period (after payment of the issue fee or NIRC). In
this time period, information may be submitted only if a claim is
unpatentable over the information being submitted either considered
alone or in combination with information already of record. This
patentability justification would require an explanation pursuant to
Sec. 1.98(a)(3)(iv) of this section, a non-cumulative description
pursuant to Sec. 1.98(a)(3)(v) of this section, and reasons why an
amendment causes claims, admitted to be unpatentable over the
information submitted in an IDS, to now be patentable over such
information when considered together, and in view of any information
already of record, but particularly in view of information previously
used to reject such claims.
While the alternative patentability justifications require
consideration of certain documents, the "reasons why" supplied need
only address the most relevant documents and need not discuss all the
documents required to be considered.
Section 1.98(a)(3)(vii) would recognize that applicant must
meaningfully comply with the additional disclosure requirements.
Section 1.98(a)(3)(vii)(A) would require that the explanations
pursuant to Sec. 1.98(a)(3)(iv) must include a level of specificity
commensurate with specifics of the feature(s), showing(s), or
teaching(s) which caused the document to be cited. These explanations
must not be pro forma explanations. Additionally, it would be required
that the non-cumulative descriptions pursuant to Sec. 1.98(a)(3)(v)
must be significantly different so as to point out why the cited
document is not merely cumulative of any other information currently
being filed, or previously of record.
Section 1.98(a)(3)(vii)(B) would require that the reasons for
patentability justification, pursuant to Sec. 1.98(a)(3)(vi), must
address specific claim language relative to the specific feature(s),
showing(s), or teaching(s) of the cited documents, or those already of
record. Section 1.98(a)(3)(vii)(C) would provide that where the
explanations or non-cumulative descriptions do not comply with Sec.
1.98(a)(3)(vii)(A), or the reasons for patentability justification do
not comply with Sec. 1.98(a)(3)(vii)(B), the Office may decline to
consider the information disclosure statement. See also Sec.
1.97(i)(1). The examiner may optionally, however, choose to cite a
reference contained in a non-compliant IDS.
Section 1.98(a)(3)(viii) would provide for three possible
exceptions to the additional description requirements of Sec.
1.98(a)(3).
Section 1.98(a)(3)(viii)(A) would provide an exception pursuant to
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Sec. 1.98(a)(3)(iv) for documents submitted within the first time
period (i.e., prior to first Office action) that result from a foreign
search or examination report where a copy of the report is submitted
with the IDS. A specific certification pursuant to Sec. 1.97(e) is not
required nor must the three-month time frame be met.
Section 1.98(a)(3)(viii)(B) would provide an exception to the
explanation and non-cumulative description requirements when an IDS is
submitted in the second time period (Sec. 1.97(c)) and is accompanied
by a certification pursuant to Sec. 1.97(e)(1) and a copy of the
foreign search or examination report.
Section 1.98(a)(3)(viii)(C) would provide an exception to the
explanation and non-cumulative description requirements when an IDS is
submitted in the first (Sec. 1.97(b)) and second (Sec. 1.97(c)) time
periods for documents submitted in reply to a requirement for
information pursuant to Sec. 1.105.
Section 1.98(a)(3)(ix) would provide a requirement for updating
previous IDSs for amendments affecting the scope of the claims, other
than examiner's amendments, submitted after an IDS. Section
1.98(a)(3)(ix)(A) would provide that any previously provided
explanation pursuant to Sec. 1.98(a)(3)(iv) must be reviewed and
updated where necessary in view of subsequently filed amendments. If,
however, no update is warranted because all previous explanations are
still relevant and accurate, Sec. 1.98(a)(3)(ix)(B) would provide that
a statement must be supplied to the effect that updating of the
previous IDS is unnecessary. Failure to comply with the update
requirements, including the need for a statement that an update is
needed, may result in a reply containing the amendment being treated as
not fully responsive, pursuant to MPEP Sec. 714.03, with a correction
required.
Section 1.98(b)(3) would be amended to replace "inventor" with
"applicant" as a technical amendment to conform to the language of
Sec. 1.98(b)(2).
Section 1.98(c) would be amended to require that the submission of
merely cumulative documents be avoided, and that the Office may decline
to consider an information disclosure statement citing documents that
are merely cumulative. The submission of cumulative information may
obscure other more relevant information from the examiner. MPEP Sec.
2004, item 13. Where review of an IDS reveals the presence of a pattern
of merely cumulative documents to such extent that the utility of
further review of the IDS is called into question, the IDS may be
presumed to be non-compliant, and the Office may terminate further
review of the IDS. In such instance, on the listing of the documents,
the examiner will initial all citations that have been considered up to
that point, including the cumulative documents, and line through all
other documents not yet considered. In the next Office action, the
examiner will identify to applicant the merely cumulative documents,
and the non-compliant status of the IDS. Applicant could choose to
resubmit the IDS in reply to the Office action provided applicant
complies with any additional disclosure requirements, including the
non-cumulative description, which will aid applicant in avoiding the
submission of merely cumulative information.
Documents could be merely cumulative, notwithstanding the presence
of different explanations (e.g., two documents both containing only the
same features A and B of the claimed invention, the explanation for the
first document is to feature A, and the explanation for the second
document is to feature B).
Section 1.98(d) would be amended: By replacing the reference to
paragraph (a) with a reference to paragraph (a)(2), clarifying the
recitations to earlier and later submitted information disclosure
statements in paragraphs (d) and (d)(1), correcting the tense of
"complies" to "complied" in paragraph (d)(2), and making a
conforming change by removing the reference to paragraph (c) of Sec.
1.98, and limiting the effect of paragraph (d)(2) to paragraphs (a)(1),
(2), and (b) of Sec. 1.98.
Section 1.99: Section 1.99 is proposed to be amended to change the
time period for a submission under Sec. 1.99 to within six months from
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the date of publication of the application (Sec. 1.215(a)), or prior
to the mailing of a notice of allowance (Sec. 1.311), whichever is
earlier. Section 1.99 currently requires that any submission Sec. 1.99
be filed within two months from the date of publication of the
application (Sec. 1.215(a)), or prior to the mailing of a notice of
allowance (Sec. 1.311), whichever is earlier. Section Sec. 1.99 is
also proposed to be amended to eliminate the provision for filing a
belated submission under Sec. 1.99. The time period for a submission
under Sec. 1.99 (or the time period for a protest under Sec. 1.291)
is to limit any right of third parties to have information entered and
considered in a pending application for administrative convenience.
This time period for a submission under Sec. 1.99 (or the time period
for a protest under Sec. 1.291) does not vest the applicant with any
right to prevent the Office from sua sponte making such information of
record in the application or relying upon such information in
subsequent proceedings in the application (i.e., the time period does
not limit the authority of the Office to re-open the prosecution of an
application to consider any information deemed relevant to the
patentability of any claim).
It is to be noted that a Sec. 1.99(a) submission by a third party
is not a means for applicant to circumvent the requirements of Sec.
1.97 and Sec. 1.98. Rather, the treatment of the information in a
Sec. 1.99(a) submission is dependent upon the linchpin concept that it
is being submitted by a (true) third party, and that there has been no
solicitation of the third party by the applicant, or anyone acting on
applicant's behalf. Section 1.99(a), and Sec. 1.99 in general, are
directed to a third party that is not in privity with the applicant,
and is not any Sec. 1.56(c) individual. Section 1.99(e) is proposed to
be amended to state only that a submission by a member of the public to
a pending published application that does not comply with the
requirements of Sec. 1.99 will not be entered.
Section 1.291: Sections 1.291(b), (b)(1) and (b)(2) would have
their provisions rearranged and revised, and Secs. 1.291(b)(3)
through (b)(5) would be added. Section 1.291(c)(2) would be revised to
set forth the degree of consideration given to items of information
submitted in a compliant protest.
Section 1.291(b) as proposed would contain the descriptive label
"Treatment of a protest."
Sections 1.291(b)(1)(i) through (b)(1)(iii) would set forth the
conditions to be met for entry of protests into the record that are
currently set forth in Sec. 1.291(b). Section 1.291(b)(1)(iii) would
contain the consent provision for entry of a protest which is currently
set forth in Sec. 1.291(b)(1), and Sec. 1.291(b)(2) would provide
consent specifics.
Pursuant to Sec. 1.291(b)(1)(ii), the protest must be served on
the applicant in accordance with Sec. 1.248, or filed with
the Office in duplicate if service is not possible. In the usual case
where the protest has been served on the applicant in accordance with
Sec. 1.248, the applicant will have one month from the date of service
to file any objection that the protest has not in fact been consented
to, or that the protest is not within the scope/terms of the consent.
It should be rare that service of a protest is not possible since the
applicant has consented to the filing of a protest and should therefore
be available to be served. Where such a situation arises, however, the
protest is submitted to the Office in duplicate with a statement that
service is not possible. The Office will serve a copy of the protest on
the applicant and the applicant will have one month from the date of
Office service to file any objection that the protest has not in fact
been consented to, or that the protest is not within the scope/terms of
the consent.
Section 1.291(b)(2) would contain the introductory label
"Applicant consent and protestor statement." Section 1.291(b)(2)
(together with Sec. 1.291(b)(1)(iii)) would retain the current
provision permitting consideration of a protest that is filed on or
after the date an application is published if, and only if, the protest
is filed based on the written consent of the applicant, and in time to
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match the protest with the application to permit review of the protest
during examination of the application. The written consent of the
applicant may be filed together with the protest, or it may already be
of record in the application.
Section 1.291(b)(2)(ii) would provide that a consent to a protest
may be limited by express terms only to: (1) The length of time for
which the consent is in effect, at least thirty days (to give
sufficient time for its submission), and (2) a specific party who can
file the protest (if the identity of such a party is known to the
applicant). The consent, however, must not be otherwise limited.
Section 1.291(b)(2)(iii) would provide that a protest filed based
upon a consent under paragraph (b)(2) of this section must contain a
statement that the submitted protest is based on the written consent of
the applicant and falls within the terms of the consent. The statement
would identify the consent, for example, as "the written consent
accompanying the instant protest" or "the written consent filed in
the record of the application on [Provide date consent filed]." The
statement would inform the Office that the protester is a party
permitted by the consent to file the protest, and that the protest is
timely filed. A certificate of mailing or transmission under Sec. 1.8
may be used to comply with any timeliness requirement imposed by
applicant in the consent. Likewise, the protest may be filed in the
Office by "Express Mail" pursuant to Sec. 1.10.
Section 1.291(b)(3) would highlight the options that an applicant
currently has in treating unsolicited information received from a party
other than a Sec. 1.56(c) individual, i.e., a third party. This would
not be a change in practice.
Section 1.291(b)(3)(i) recognizes that upon receiving unsolicited
information (directed to an application) from a third party, applicant
may submit the unsolicited information as an IDS, provided that
applicant complies with the IDS requirements of Secs. 1.97 and
1.98.
Section 1.291(b)(3)(ii) recognizes that applicant can provide a
written consent pursuant to Sec. 1.291(b)(2) to the third party (if
known) for that third party to file unsolicited information with the
Office as (part of) a protest. The section also provides for the
alternative that if the third party is unknown, the written consent to
the submission of a protest may be filed in the application. Given this
alternative, an applicant need not feel compelled to submit such
unsolicited information to the Office via an IDS.
Section 1.291(b)(3)(iii) recognizes that an applicant could submit
the unsolicited information to the Office as a protest on behalf of the
third party, even where the third party is yet unknown. In keeping with
Sec. 1.291(b)(2), applicant would not need to submit an explicit
written consent to the protest along with the information, since
applicant has made the submission. Applicant would, however, need to
comply with Sec. 1.291(c), including the requirement for a concise
explanation, drafting the explanation itself if need be. Where the
third party has provided an explanation that amounts to the concise
explanation required by Sec. 1.291(c)(2), applicant may rely on such
explanation. Applicant would, however, need to review the explanation
provided by the third party to determine whether it complies with the
concise explanation standard and whether the concise explanation is
accurate.
It is to be noted that a Sec. 1.291(b)(3)(iii) protest submission
on behalf of the third party is not a means for applicant to circumvent
the requirements of Sec. 1.97 and Sec. 1.98. Rather, the treatment of
unsolicited information in Sec. 1.291(b)(3), and Sec. 1.291 protests
in general, is dependent upon the linchpin concepts of a (true) third
party, and (actually) unsolicited information. Section
1.291(b)(3)(iii), and Sec. 1.291 in general, are directed to a third
party that is not in privity with the applicant, and is not any Sec.
1.56(c) individual.
Applicant's knowledge of prior art gained during litigation or
through license negotiations, for example, may qualify under Sec.
1.291(b)(3)(iii) as receiving unsolicited information for the filing of
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a protest on behalf of a third party.
While Secs. 1.291(b)(3)(i) through (b)(3)(iii) recognize
several options that an applicant has in treating unsolicited
information supplied by a third party, applicant may have other options
depending on the facts of each situation. One option may be not to
submit any of the information, such as where the information has been
reviewed and there is no information that is material.
Third parties should recognize that, rather than send unsolicited
information to an applicant, third parties may have the opportunity to
submit such information directly to the Office pursuant to Sec. 1.99.
Section 1.291(b)(4) would provide a recognition that nothing in
Sec. 1.291 is intended to relieve a person subject to Sec. 1.56(c)
from submitting to the Office information that is subject to the duty
of disclosure under Sec. 1.56. Newly proposed Sec. 1.291(b)(3)
attempts to help an applicant deal with unsolicited information
supplied by a third party, particularly in view of the proposed
amendment of Sec. 1.98 requiring different explanation requirements.
Section 1.291(b)(5) would be created to contain the current
provision of Sec. 1.291(b)(2). Other than for the first protest filed
in an application, a statement must accompany a protest that it is the
first protest submitted in the application by the real party in
interest who is submitting the protest; or the protest must comply with
paragraph (c)(5) of this section.
Section 1.291(c)(2) would be revised to set forth the degree of
consideration given to items of information submitted in a compliant
protest. As to the "concise explanation of the relevance of each item
listed pursuant to paragraph (c)(1)" provided by the protester, items
in a compliant protest will be considered by the examiner at least to
the extent of the provided explanations. See also the above discussion
of the degree of consideration for Secs. 1.97 and 1.98
submissions.
Section 1.312: Section 1.312 is proposed to be amended to create
paragraphs (a) and (b) and to permit certain amendments filed after
allowance to be entered without withdrawal of the application from
issue.
Section 1.312(a)(1)(i) through (a)(1)(vi) would provide that the
following amendments if filed before or with the payment of the issue
fee may be entered: (1) Amendment of the bibliographic data to be
indicated on the front page of the patent; (2) amendment of the
specification to add a reference to a joint research agreement (Sec.
1.71(g)); (3) addition of a benefit claim of a prior-filed provisional
application under 35 U.S.C. 119(e), a prior-filed nonprovisional
application under 35 U.S.C. 120, or a prior-filed international
application that designated the United States under 35 U.S.C. 365(c)
(Sec. 1.78); (4) addition of a priority claim of a prior foreign
application under 35 U.S.C. 119(a)-(d) or (f) or 365(a) or (b) (Sec.
1.55); (5) changing the order or spelling of the inventors' names; or
(6) changing the inventorship pursuant to Sec. 1.48.
Any request to add a benefit claim under Sec. 1.78, or foreign
priority claim under Sec. 1.55 pursuant to Sec. 1.312 must comply
with the requirements for timeliness, or be accompanied by a grantable
petition to accept an unintentionally delayed claim for priority under
Sec. 1.78(a)(3), Sec. 1.78(a)(6), or Sec. 1.55(c) if needed (e.g.,
such a petition would not be necessary for an application filed before
November 29, 2000).
Any request to change inventorship pursuant to Sec. 1.48 must
comply with all the provisions of that rule. Consequently, a Sec. 1.48
request accompanied by a petition under Sec. 1.183 requesting waiver
of any of the requirements under Sec. 1.48 would not qualify for entry
under Sec. 1.312.
Section 1.312(a)(2) would provide that when such amendments are
filed after the date the issue fee is paid, the amendments may also be
entered if submitted in sufficient time to permit the patent to be
printed with the amended information (Sec. 1.312(a)(2)(i)), and with a
processing fee pursuant to Sec. 1.17(i) (Sec. 1.312(a)(2)(ii)).
Section 1.312(b) would provide that if the patent does not include
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the amendment filed after payment of the issue fee, the amendment would
not be effective unless the patent is corrected by a certificate of
correction under 35 U.S.C. 255 and Sec. 1.323 or otherwise corrected
in another post-issuance proceeding. The expression "as appropriate"
has been used to recognize that the failure to include a benefit claim
to a provisional application cannot be fixed by a certificate of
correction after issue of the patent.
Section 1.555: Section 1.555(a) is proposed to be amended to delete
the optional time frames for IDS submissions in reexamination
proceedings appearing therein, and instead require the Sec. 1.97 time
frames. Currently, Sec. 1.555(a) sets forth an optional time for
filing an IDS, stating that it "should be filed within two months of
the date of the order for reexamination, or as soon thereafter as
possible." Obtaining the best art in the case as soon as possible is
even more important for a reexamination proceeding than for an
application, because the statute mandates (35 U.S.C. 305, 35 U.S.C.
314(c)) that reexamination proceedings be "conducted with special
dispatch within the Office." Thus, Sec. 1.555(a) would be amended to
track application time frames by incorporating the Sec. 1.97 time
frames (and revising Sec. 1.97 to refer to reexamination proceedings,
as above discussed). Currently, Sec. 1.555(a) requires filing of an
IDS with the items listed in Sec. 1.98(a). Section 1.555(a) would
likewise be amended to track applications and require compliance with
all the requirements of Sec. 1.98, rather than only Sec. 1.98(a).
Accordingly, it is proposed that the last sentence of Sec. 1.555(a) be
amended to read: "Any IDS must be filed with the items listed in, and
pursuant to the requirements of, Sec. 1.98 as applied to individuals
associated with the patent owner in a reexamination proceeding, and
must be filed within the time frames set forth in Sec. 1.97."
Section 1.948: Section 1.948 is proposed to be amended to set forth
that the provisions of Sec. 1.98 would apply to a third party
requester of an inter partes reexamination in a manner analogous to the
manner that Sec. 1.98 would apply to the patent owner. It is
reasonable that the requirements of Sec. 1.98 be applied to the third
party requester in a reexamination proceeding, since the considerations
and burdens on the Office that exist with respect to an IDS submitted
by a third party requester are the same as those for a patent owner.
Additionally, the third party requester is in the best position to
provide the explanations required in Sec. 1.98 for the information
that it cites.
It is to be noted that there is no need to apply Sec. 1.98 to a
reexamination requester as to the request for ex parte reexamination
pursuant to Sec. 1.510 or the request for inter partes reexamination
pursuant to Sec. 1.915, since the requirements for explaining the art/
information cited vis-a-vis the claims in the request are already at
least as comprehensive as the explanation requirements of Sec. 1.98.
Also, the requirements for explaining the art/information cited in a
reexamination request applies to all of the art/information cited, as
opposed to the requirements in Sec. 1.98 that only apply to certain
documents, or to all the art after a threshold number of documents has
been cited.
Rulemaking Considerations
Administrative Procedure Act
The changes in this notice relate solely to the procedures to be
followed in submitting information for consideration by the Office
during the examination of an application for patent or reexamination of
a patent. Non-compliance with these rules results only in the Office
possibly not considering information in an information disclosure
statement. If an applicant (or patentee in a patent under
reexamination) submits an information disclosure statement that does
not comply with these rules, the Office will either notify the
applicant and provide a time limit within which the information
disclosure statement may be corrected (37 CFR 1.98(f)), or advise the
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applicant that the information disclosure statement has been placed in
the application or reexamination file with the non-complying
information not being considered (MPEP 609.05(a)). The failure to
correct an information disclosure statement within such a time limit
does not result in abandonment of the application, but only in the
Office advising the applicant that the information disclosure statement
has been placed in the application or reexamination file with the non-
complying information not being considered (MPEP 609.05(a)). Therefore,
these proposed rule changes involve rules of agency practice and
procedure under 5 U.S.C. 553(b)(A). See Bachow Communications Inc. v.
FCC, 237 F.3d 683, 690 (D.C. Cir. 2001) (rules governing an application
process are "rules of agency organization, procedure, or practice"
and are exempt from the Administrative Procedure Act's notice and
comment requirement) and JEM Broadcasting Co. v. FCC, 22 F.3d 320, 327
(D.C. Cir. 1994) (rule under which any flawed application is summarily
dismissed without allowing the applicant to correct its error is merely
procedural despite its sometimes harsh effects on applicants); see also
Merck & Co., Inc. v. Kessler, 80 F.3d 1543, 1549-50, 38 USPQ2d 1347,
1351 (Fed. Cir. 1996) (the rules of practice promulgated under the
authority of former 35 U.S.C. 6(a) (now in 35 U.S.C. 2(b)(2)) are not
substantive rules (to which the notice and comment requirements of the
Administrative Procedure Act apply)), and Fressola v. Manbeck, 36
USPQ2d 1211, 1215 (D.D.C. 1995) ("it is extremely doubtful whether any
of the rules formulated to govern patent or trade-mark practice are
other than "interpretive rules, general statements of policy, * * *
procedure, or practice.'") (quoting C.W. Ooms, The United States
Patent Office and the Administrative Procedure Act, 38 Trademark Rep.
149, 153 (1948)). Accordingly, prior notice and opportunity for public
comment are not required pursuant to 5 U.S.C. 553(b) or (c) (or any
other law). Nevertheless, the Office is providing this opportunity for
public comment on the changes proposed in this notice because the
Office desires the benefit of public comment on these proposed changes.
Regulatory Flexibility Act
As prior notice and an opportunity for public comment are not
required pursuant to 5 U.S.C. 553 (or any other law), neither an
initial regulatory flexibility analysis nor a certification under the
Regulatory Flexibility Act (5 U.S.C. 601 et seq.) are required. See 5
U.S.C. 603.
Executive Order 13132
This rulemaking does not contain policies with federalism
implications sufficient to warrant preparation of a Federalism
Assessment under Executive Order 13132 (Aug. 4, 1999).
Executive Order 12866
This rulemaking has been determined to be not significant for
purposes of Executive Order 12866 (Sept. 30, 1993).
Paperwork Reduction Act
This notice involves information collection requirements which are
subject to review by the Office of Management and Budget (OMB) under
the Paperwork Reduction Act of 1995 (44 U.S.C. 3501 et seq.). The
collections of information involved in this notice have been reviewed
and previously approved by OMB under OMB control numbers 0651-0031.
This notice proposes changes to the rules of practice to change the
provisions for information disclosure statements to require additional
disclosure when citations exceed a set number, a citation exceeds a set
number of pages, a citation is in a foreign language, or a citation is
not timely submitted prior to the Office examining the application, and
eliminate the fee requirements for submitting an IDS, as well as
eliminating the applicant's ability to file an IDS prior to the close
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of prosecution just by paying a fee. The proposed changes will enable
the examiner to focus on the relevant portions of submitted information
at the very beginning of the examination process, give higher quality
first actions, and minimize wasted steps. The United States Patent and
Trademark Office is resubmitting an information collection package to
OMB for its review and approval because the changes in this notice
affect the information collection requirements associated with the
information collection under OMB control number 0651-0031.
The title, description and respondent description of these
information collections are shown below with an estimate of the annual
reporting burdens. Included in the estimate is the time for reviewing
instructions, gathering and maintaining the data needed, and completing
and reviewing the collections of information.
OMB Number: 0651-0031.
Title: Patent Processing (Updating).
Form Numbers: PTO/SB/08, PTO/SB/17i, PTO/SB/17P, PTO/SB/21-27, PTO/
SB/24A, PTO/SB/24B, PTO/SB/30-32, PTO/SB/35-39, PTO/SB/42-43, PTO/SB/
61-64, PTO/SB/64a, PTO/SB/67-68, PTO/SB/91-92, PTO/SB/96-97, PTO-2053-
A/B, PTO-2054-A/B, PTO-2055-A/B, PTOL 413A.
Type of Review: Approved through July of 2006.
Affected Public: Individuals or Households, Business or Other For-
Profit Institutions, Not-for-Profit Institutions, Farms, Federal
Government and State, Local and Tribal Governments.
Estimated Number of Respondents: 2,317,539.
Estimated Time Per Response: 1.8 minutes to 12 hours.
Estimated Total Annual Burden Hours: 2,807,641 hours.
Needs and Uses: During the processing of an application for a
patent, the applicant/agent may be required or desire to submit
additional information to the United States Patent and Trademark Office
concerning the examination of a specific application. The specific
information required or which may be submitted includes: Information
Disclosures and documents, requests for extensions of time, the
establishment of small entity status, abandonment and revival of
abandoned applications, disclaimers, appeals, expedited examination of
design applications, transmittal forms, requests to inspect, copy and
access patent applications, publication requests, and certificates of
mailing, transmittals, and submission of priority documents and
amendments.
Interested persons are requested to send comments regarding these
information collections, including suggestions for reducing this
burden, to: (1) The Office of Information and Regulatory Affairs,
Office of Management and Budget, New Executive Office Building, Room
10202, 725 17th Street, NW., Washington, DC 20503, Attention: Desk
Officer for the Patent and Trademark Office; and (2) Robert J. Spar,
Director, Office of Patent Legal Administration, Commissioner for
Patents, P.O. Box 1450, Alexandria, VA 22313-1450.
Notwithstanding any other provision of law, no person is required
to respond to nor shall a person be subject to a penalty for failure to
comply with a collection of information subject to the requirements of
the Paperwork Reduction Act unless that collection of information
displays a currently valid OMB control number.
List of Subjects in 37 CFR Part 1
Administrative practice and procedure, Courts, Freedom of
Information, Inventions and patents, Reporting and recordkeeping
requirements, Small businesses.
For the reasons set forth in the preamble, 37 CFR Part 1 is
proposed to be amended as follows:
PART 1--RULES OF PRACTICE IN PATENT CASES
1. The authority citation for 37 CFR Part 1 continues to read as
follows:
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Authority: 35 U.S.C. 2(b)(2).
2. Section 1.17 is amended by revising paragraphs (h) and (p) to
read as follows:
Sec. 1.17 Patent application and reexamination processing fees.
* * * * *
(h) For filing a petition under one of the following sections which
refers to this paragraph: $130.00
Sec. 1.19(g)--to request documents in a form other than provided
in this part.
Sec. 1.84--for accepting color drawings or photographs.
Sec. 1.91--for entry of a model or exhibit.
Sec. 1.98(a)(3)(iii)(B)--for filing a petition to withdraw a
reexamination proceeding from the publication process.
Sec. 1.102(d)--to make an application special.
Sec. 1.138(c)--to expressly abandon an application to avoid
publication.
Sec. 1.313--to withdraw an application from issue.
Sec. 1.314--to defer issuance of a patent.
* * * * *
(p) For a submission under Sec. 1.99(b): $180.00
* * * * *
3. Section 1.48 is amended by revising its heading and paragraph
(h), and by adding a new paragraph (k) to read as follows:
Sec. 1.48 Correction of inventorship in a patent application, other
than a reissue application, pursuant to 35 U.S.C. 116, a change in the
order of the inventors' names, or a change in the spelling, or an
updating of an inventor's name.
* * * * *
(h) Reissue applications and reexamination proceedings not covered.
The provisions of this section do not apply to reissue applications or
to reexamination proceedings. See Secs. 1.171 and 1.175 for
correction of inventorship in a patent via a reissue application. See
Sec. 1.530(l) for correction of inventorship in a patent via an ex
parte or inter partes reexamination proceeding.
* * * * *
(k) Certain changes of inventors' names (excluding reissue
applications and patents). When accompanied by the appropriate
processing fee pursuant to Sec. 1.17(i) or (q), a request, which
should also be accompanied by a supplemental application data sheet
pursuant to Sec. 1.76 for changes in a nonprovisional application, may
be submitted to:
(1) Change the order of the inventors' names to another specified
order in a pending application, except in provisional applications;
(2) Change the spelling of an inventor's name; or
(3) Update an inventor's name when it has changed after the
application has been filed, where this request is also accompanied by:
(i) An affidavit signed with both names and setting forth the
procedure whereby the change of name was effected; or
(ii) A certified copy of a court order for name change.
4. Section 1.55 is amended by revising paragraph (a)(2) to read as
follows:
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Sec. 1.55 Claim for foreign priority.
(a) * * *
(2) The claim for priority and the certified copy of the foreign
application specified in 35 U.S.C. 119(b) or PCT Rule 17 must, in any
event be filed before the patent is granted. If the claim for priority
or the certified copy of the foreign application is filed after the
date the issue fee is paid, it must be accompanied by the processing
fee set forth in Sec. 1.17(i). If the patent did not publish with the
priority claim, the amendment adding the priority claim will not be
effective unless corrected by a certificate of correction under 35
U.S.C. 255 and Sec. 1.323.
* * * * *
5. Section 1.56 is amended by adding new paragraph (f) to read as
follows:
Sec. 1.56 Duty to disclose information material to patentability.
* * * * *
(f) The additional disclosure requirements for documents in Sec.
1.98(a)(3) would be deemed satisfied where a Sec. 1.56(c) individual
has made reasonable inquiry of the relationship of the documents cited
in an information disclosure statement to the claimed invention,
including the supporting specification, and the individual has acted in
good faith to comply with the disclosure requirements by having a
reasonable basis for the statements made in such disclosure.
6. Section 1.97 is revised to read as follows:
Sec. 1.97 Filing of information disclosure statements.
(a) General. In order for an applicant for a patent, or for a
reissue of a patent, or a patent owner in a reexamination proceeding,
to have an information disclosure statement considered by the Office
during the pendency of the application, or the reexamination
proceeding, the information disclosure statement must satisfy the
requirements of Sec. 1.98 specific to the time period of submission of
the information disclosure statement as set forth in one of paragraphs
(b) through (d) of this section.
(b) First time period: Within one of the following time frames:
(1) Three months from the filing date of a national application
under 35 U.S.C. 111(a) other than a continued prosecution application
under Sec. 1.53(d), or three months from the filing date of a request
for reexamination under Sec. 1.510 or Sec. 1.915;
(2) Three months from the date of entry of the national stage as
set forth in Sec. 1.491 in an international application; or
(3) Before the mailing of a first Office action on the merits.
(c) Second time period: After the period specified in paragraph (b)
of this section, and before the earlier of the mailing date of a notice
of allowability or a notice of allowance under Sec. 1.311 for an
application, or of a Notice of Intent to Issue a Reexamination
Certificate (NIRC) for a reexamination proceeding.
(d)(1) Third time period: After the period specified in paragraph
(c) of this section, except for reexamination proceedings, and before
or with payment of the issue fee for an application.
(2) Fourth time period: After payment of the issue fee for an
application and in sufficient time to be considered by the examiner
before issuance of the application. For a reexamination proceeding,
after the period specified in paragraph (c) of this section and in
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sufficient time to be considered by the examiner before issuance of a
Reexamination Certificate under Sec. 1.570 or Sec. 1.997.
(e) Certification. A certification under this section referenced in
Secs. 1.98(a)(3)(iii) and 1.98(a)(3)(viii)(B) must certify either:
(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; 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 Sec. 1.56(c) more
than three months prior to the filing of the information disclosure
statement.
(f) Extensions. No extensions of time for filing an information
disclosure statement are permitted under Sec. 1.136, Sec. 1.550 or
Sec. 1.956.
(g) Search. An information disclosure statement filed in accordance
with Sec. 1.98 shall not be construed as a representation that a
search has been made.
(h) Admissions. The filing of an information disclosure statement
shall not be construed to be an admission that the information cited in
the statement is, or is considered to be, material to patentability as
defined in Sec. 1.56(b).
(i) Noncompliance. (1) If an information disclosure statement does
not comply with this section and Sec. 1.98 (see also Sec.
1.98(a)(3)(vii)(C)), it will be placed in the file but will not be
considered by the Office.
(2) If a bona fide attempt is made to comply with Sec. 1.98, but
part of the required content is inadvertently omitted, additional time
may be granted, within the sole discretion of the Office, to enable
full compliance.
(j) Withdrawal. An information disclosure statement submitted under
paragraph (d)(2) of this section will not by itself be effective to
withdraw an application from issue, or a reexamination proceeding from
the publication procedure for a Reexamination Certificate.
7. Section 1.98 is revised to read as follows:
Sec. 1.98 Content of information disclosure statements.
(a) General. Any information disclosure statement filed under Sec.
1.97 shall comply with the items listed in paragraphs (a)(1), (a)(2),
and (a)(3) of this section.
(1) Listing of items: A list is required of all patents,
publications, applications, or other information submitted to the
Office for consideration. U.S. patents and U.S. patent application
publications must be listed in a section separately from citations of
other documents. Each page of the list must include:
(i) The application/proceeding number, if known, of the
application/proceeding in which the information disclosure statement is
being submitted;
(ii) A column that provides a space, next to each document to be
considered, for the examiner's initials, and
(iii) A heading that clearly indicates that the list is an
information disclosure statement.
(2) Copies of items requirements: A legible copy must be submitted
of:
(i) Each foreign patent;
(ii) Each publication or that portion which caused it to be listed,
other than U.S. patents and U.S. patent application publications unless
required by the Office;
(iii) Each pending or abandoned U.S. application, or that portion
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which caused it to be listed including any amended claims directed to
that portion, unless the cited pending or abandoned U.S. application is
in the Office's image file wrapper system. If the cited pending or
abandoned U.S. application is in the Office's image file wrapper
system, a copy of the application's specification, including the
claims, and drawings is not required; and
(iv) All other information or that portion which caused it to be
listed.
(3) Additional disclosure requirements: (i) The following submitted
during the time period defined in Sec. 1.97(b) require the explanation
in compliance with paragraph (a)(3)(iv) of this section, except for
documents meeting one of the exceptions of paragraphs (a)(3)(viii)(A)
and (a)(3)(viii)(C) of this section:
(A) Foreign language documents (see also paragraph (a)(3)(xi) of
this section),
(B) Any document over twenty-five pages, excluding sequence
listings, or computer program listings, pursuant to Sec. 1.52(e)(1),
and
(C) All of the documents, if more than twenty documents are
submitted, calculated cumulatively.
(ii) All documents cited in an information disclosure statement
submitted during the time period defined in Sec. 1.97(c) require the
explanation in compliance with paragraph (a)(3)(iv) of this section and
the non-cumulative description in compliance with paragraph (a)(3)(v)
of this section, except for documents meeting one of the exceptions of
paragraphs (a)(3)(viii)(B) and (a)(3)(viii)(C) of this section.
(iii) All documents cited in an information disclosure statement
submitted during the time periods defined in Secs. 1.97(d)(1) and
(d)(2) require a certification pursuant to Sec. 1.97(e)(1) or (e)(2)
and must meet one of the following:
(A) When the information disclosure statement is submitted during
the time period defined in Sec. 1.97(d)(1), compliance is required
with either patentability justification pursuant to either paragraph
(a)(3)(vi)(A) or (a)(3)(vi)(B) of this section; or
(B) When submitted during the time period defined in Sec.
1.97(d)(2), the information disclosure statement must be accompanied by
a petition to withdraw an application from issue pursuant to Sec.
1.313(c)(1), or a reexamination proceeding from publication pursuant to
this paragraph and the fee set forth in Sec. 1.17(h), and the
patentability justification pursuant to paragraph (a)(3)(vi)(B) of this
section.
(iv) Explanation: An explanation must include:
(A) Identification: Identification of specific feature(s),
showing(s), or teaching(s) that caused a document to be cited, and a
representative portion(s) of the document where the specific
feature(s), showing(s), or teaching(s) may be found; and
(B) Correlation: A correlation of the specific feature(s),
showing(s), or teaching(s) identified in paragraph (a)(3)(iv)(A) of
this section to corresponding specific claim language, or to a specific
portion(s) of the specification that provides support for the claimed
invention, where the document is cited for that purpose.
(v) Non-cumulative description: A non-cumulative description
requires a description of how each document is not merely cumulative of
any other information disclosure statement cited document, document
cited by the examiner, or document cited under Secs. 1.99, or
1.291, as citation of merely cumulative information must be avoided
pursuant to paragraph (c) of this section. The description may be of a
specific feature, showing, or teaching in a document that is not found
in any other document of record. Note the exceptions set forth in
paragraphs (a)(3)(viii)(B) and (a)(3)(viii)(C) of this section.
(vi) Patentability justification: A patentability justification
requires either:
(A) An explanation pursuant to paragraph (a)(3)(iv) of this
section, a non-cumulative description pursuant to paragraph (a)(3)(v)
of this section, and reasons why the independent claims are patentable
over the information in the information disclosure statement being
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submitted, considered together, and in view of any information already
of record; or
(B) An explanation pursuant to paragraph (a)(3)(iv) of this
section, a non-cumulative description pursuant to paragraph (a)(3)(v)
of this section, and reasons why an amendment causes claims, admitted
to be unpatentable over the information in the submitted information
disclosure statement, either alone or in combination with any
information already of record, to now be patentable over such
information when considered together, and in view of any information
already of record.
(vii) Meaningful compliance: (A) The explanations pursuant to
paragraph (a)(3)(iv) of this section must include a level of
specificity commensurate with specifics of the feature(s), showing(s),
or teaching(s) which caused the document to be cited. These
explanations must not be pro forma types of explanations. The non-
cumulative descriptions pursuant to paragraph (a)(3)(v) of this section
must be significantly different so as to point out why the cited
document is not merely cumulative of any other information currently
being filed, or previously of record.
(B) The reasons for patentability justification presented pursuant
to paragraph (a)(3)(vi) of this section must discuss specific claim
language relative to the specific feature(s), showing(s), or
teaching(s) of specific documents that are being cited, or already of
record.
(C) If the explanations or non-cumulative descriptions do not
comply with (a)(3)(vii)(A) of this section, or the reasons for
patentability justification do not comply with (a)(3)(vii)(B) of this
section, the Office may decline to consider the information disclosure
statement. See also Sec. 1.97(i)(1).
(viii) Exceptions: (A) Compliance with paragraph (a)(3)(iv) of this
section is not required for documents cited within a time frame set
forth in Sec. 1.97(b) that result from a foreign search or examination
report where a copy of the report is submitted with the information
disclosure statement.
(B) Compliance with paragraphs (a)(3)(iv) and (a)(3)(v) of this
section is not required for documents cited within
the time frame set forth in Sec. 1.97(c) when submitted with a
certification pursuant to Sec. 1.97(e)(1) and a copy of the foreign
search or examination report.
(C) Compliance with paragraphs (a)(3)(iv) and (a)(3)(v) of this
section is not required for documents submitted in reply to a
requirement for information pursuant to Sec. 1.105.
(ix) Updating: With each amendment to the claims or the
specification affecting the scope of the claims, other than an
examiner's amendment, filed after an information disclosure statement:
(A) The required explanation under paragraph (a)(3)(iv) of this
section for all previous information disclosure statements must be
reviewed and updated where necessary in view of the amendment(s); or
(B) A statement must be supplied to the effect that updating of the
previous explanation(s) submitted with information disclosure
statement(s) is not needed.
(x) Format of additional disclosure: The additional disclosure
requirements pursuant to paragraph (a)(3) of this section, may be
supplied as an attachment to the list in paragraph (a)(1) of this
section, or included in the application specification with the page(s)
and lines of specification where it is incorporated being noted in the
list (similar to the treatment of non-English documents) or partially
provided in each.
(xi) Translations: For Non-English language documents of any
length, a copy of a translation in English thereof must be submitted
along with the document where a translation is within the possession,
custody, or control of, or is readily available to, any individual
listed in Sec. 1.56(c). A translation does not count towards the
cumulative total of paragraph (a)(3)(i)(C) of this section, but is
subject to the over twenty-five page threshold value of paragraph
(a)(3)(i)(B) of this section.
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(b) Content of Listing: (1) Each U.S. patent listed in an
information disclosure statement must be identified by the inventor(s),
patent number, and issue date.
(2) Each U.S. patent application publication listed in an
information disclosure statement must be identified by the
applicant(s), patent application publication number, and publication
date.
(3) Each U.S. patent application listed in an information
disclosure statement must be identified by the applicant(s),
application number, and filing date.
(4) Each foreign patent or published foreign patent application
listed in an information disclosure statement must be identified by the
country or patent office which issued the patent or published the
application, an appropriate document number, and the publication date
indicated on the patent or published application.
(5) Each publication listed in an information disclosure statement
must be identified by publisher, author (if any), title, relevant pages
of the publication, date, and place of publication.
(c) Avoid cumulative information: Citing documents that are merely
cumulative of other documents cited must be avoided. The Office may
decline to consider an information disclosure statement citing
documents that are merely cumulative.
(d) Information cited in prior application: A copy of any foreign
patent, publication, pending or abandoned U.S. application or other
information, as specified in paragraph (a)(2) of this section, listed
in an information disclosure statement is required to be provided, even
if the patent, publication, pending or abandoned U.S. application or
other information was previously submitted to, or cited by, the Office
in an earlier application (containing an earlier information disclosure
statement), unless:
(1) The earlier application is properly identified in the (later
submitted) information disclosure statement and the earlier application
(containing the earlier submitted or cited information) is relied on in
the application in which the information disclosure statement is
submitted for an earlier effective filing date under 35 U.S.C. 120; and
(2) The information disclosure statement submitted in the earlier
application complied with paragraphs (a)(1), (a)(2) and (b) of this
section.
8. Section 1.99 is amended by revising paragraphs (a) and (e) to
read as follows:
Sec. 1.99 Third-party submission in published application.
(a) A submission by a member of the public other than a Sec.
1.56(c) individual (i.e., a submission from a third party) of patents
or publications relevant to a pending published application may be
entered in the application file if the submission complies with the
requirements of this section and the application is still pending when
the submission and application file are brought before the examiner. A
submission under this section must be filed within six months from the
date of publication of the application (Sec. 1.215(a)), or prior to
the mailing of a notice of allowance (Sec. 1.311), whichever is
earlier.
* * * * *
(e) A submission by a member of the public to a pending published
application that does not comply with the requirements of this section
will not be entered.
* * * * *
9. Section 1.291 is amended by revising paragraphs (b) and (c)(2)
to read as follows:
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Sec. 1.291 Protests by the public against pending applications.
* * * * *
(b)(1) Entry: The protest will be entered into the record of the
application if:
(i) It complies with paragraph (c) of this section;
(ii) The protest has been served upon the applicant in accordance
with Sec. 1.248, or filed with the Office in duplicate in the event
such service is not possible; and
(iii) The protest was filed prior to the date the application was
published under Sec. 1.211, or a notice of allowance under Sec. 1.311
was mailed, whichever occurs first, or alternatively, the applicant has
provided written consent to the protest pursuant to paragraph (b)(2) of
this section.
(2) Applicant consent and protester statement: (i) If a protest is
accompanied by the written consent of the applicant, or such written
consent is of record in the application, the protest will be considered
if the protest is matched with the application in time to permit review
during prosecution of the application.
(ii) A consent may be limited only insofar as it may expressly
designate the length of time for which the consent is in effect, at
least thirty days, and a specific party who can file a protest. Any
other limitation will not be given effect.
(iii) Any protest filed based upon a consent under paragraph (b)(2)
of this section must contain a statement that the submitted protest is
based on the written consent of the applicant and falls within the
terms of the consent.
(3) Unsolicited information: Upon receiving unsolicited information
from a party other than a Sec. 1.56(c) individual (i.e., from a third
party), an applicant may exercise one of the following options:
(i) Submit as an information disclosure statement: Submit the
unsolicited information as an information disclosure statement,
provided there is compliance with Secs. 1.97 and 1.98.
(ii) Provide consent: Provide a written consent pursuant to
paragraph (b)(2) of this section to the third party, if known, for that
third party to file the unsolicited information with the Office as
(part of) a protest. If the third party is unknown, the written consent
to the submission of a protest may be filed in the application.
(iii) Submit as a protest: Submit the unsolicited information to
the Office as a protest on behalf of the third party, provided there is
compliance with this section (other than paragraph (b)(1)(ii) of this
section), including the requirements of paragraph (c) of this section.
A submission by applicant of the unsolicited information under this
paragraph, as a protest on behalf of the third party, shall be deemed a
consent to the protest pursuant to paragraph (b)(2) of this section.
(4) Material information: Nothing in this section is intended to
relieve a person subject to Sec. 1.56(c) from submitting to the Office
information that is subject to the duty of disclosure under Sec. 1.56.
(5) First protest statement: A statement must accompany a protest
that it is the first protest submitted in the application by the real
party in interest who is submitting the protest; or the protest must
comply with paragraph (c)(5) of this section. This paragraph does not
apply to the first protest filed in an application.
(c) * * *
(2) A concise explanation of the relevance of each item listed
pursuant to paragraph (c)(1) of this section. Items in a compliant
protest will be considered by the examiner at least to the extent of
the provided explanations;
* * * * *
10. Section 1.312 is revised to read as follows:
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Sec. 1.312 Amendments after allowance.
(a) No amendment may be made as a matter of right in an application
after the mailing of the notice of allowance, except as provided in
paragraphs (a)(1) and (a)(2) of this section. Any amendment in addition
to those provided in paragraphs (a)(1) and (a)(2) of this section may
be entered on the recommendation of the primary examiner, approved by
the Director. Any amendment entered pursuant to this section may be
made without withdrawing the application from issue.
(1) Amendments filed before or with the payment of the issue fee:
The following amendments may be entered when filed after allowance but
before or with payment of the issue fee:
(i) Amendment of the bibliographic data to be indicated on the
front page of the patent;
(ii) Amendment of the specification to add a reference to a joint
research agreement (Sec. 1.71(g));
(iii) Addition of a benefit claim of a prior-filed provisional
application under 35 U.S.C. 119(e), a prior-filed nonprovisional
application under 35 U.S.C. 120, or a prior-filed international
application that designated the United States under 35 U.S.C. 365(c)
(Sec. 1.78), subject to any petition required pursuant to Sec. 1.78;
(iv) Addition of a priority claim of a prior foreign application
under 35 U.S.C. 119(a) through (d) or (f) or 365(a) or (b) (Sec.
1.55), subject to any petition required pursuant to Sec. 1.55;
(v) Changing the order of the inventors' names, the spelling of an
inventor's name, or the name of an inventor, pursuant to Sec. 1.48(k);
or
(vi) Changing the inventorship pursuant to Sec. 1.48.
(2) Amendments filed after the date the issue fee is paid: The
amendments identified in paragraph (a)(1) of this section may be
entered when filed after the date the issue fee is paid provided:
(i) The amendments are submitted in sufficient time to permit the
patent to be printed with the amended information, and
(ii) The processing fee set forth in Sec. 1.17(i) is submitted.
(b) If the patent does not include the amendment filed after
payment of the issue fee, the amendment will not be effective unless
the patent is corrected by a certificate of correction under 35 U.S.C.
255 and Sec. 1.323 or otherwise corrected in another post-issuance
proceeding, as appropriate.
11. Section 1.555 is amended by revising paragraph (a) to read as
follows:
Sec. 1.555 Information material to patentability in ex parte
reexamination and inter partes reexamination proceedings.
(a) A patent by its very nature is affected with a public interest.
The public interest is best served, and the most effective
reexamination occurs when, at the time a reexamination proceeding is
being conducted, the Office is aware of and evaluates the teachings of
all information material to patentability in a reexamination
proceeding. Each individual associated with the patent owner in a
reexamination proceeding has a duty of candor and good faith in dealing
with the Office, which includes a duty to disclose to the Office all
information known to that individual to be material to patentability in
a reexamination proceeding. The individuals who have a duty to disclose
to the Office all information known to them to be material to
patentability in a reexamination proceeding are the patent owner, each
attorney or agent who represents the patent owner, and every other
individual who is substantively involved on behalf of the patent owner
in a reexamination proceeding. The duty to disclose the information
exists with respect to each claim pending in the reexamination
proceeding until the claim is cancelled.
Information material to the patentability of a cancelled claim need
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not be submitted if the information is not material to patentability of
any claim remaining under consideration in the reexamination
proceeding. The duty to disclose all information known to be material
to patentability in a reexamination proceeding is deemed to be
satisfied if all information known to be material to patentability of
any claim in the patent after issuance of the reexamination certificate
was cited by the Office or submitted to the Office in an information
disclosure statement in compliance with Secs. 1.97 and 1.98.
However, the duties of candor, good faith, and disclosure have not been
complied with if any fraud on the Office was practiced or attempted or
the duty of disclosure was violated through bad faith or intentional
misconduct by, or on behalf of, the patent owner in the reexamination
proceeding. Any information disclosure statement must be filed with the
items listed in, and pursuant to the requirements of, Sec. 1.98 as
applied to individuals associated with the patent owner in a
reexamination proceeding, and must be filed within the time frames set
forth in Sec. 1.97.
* * * * *
12. Section 1.948 is amended by adding paragraph (b) to read as
follows:
Sec. 1.948 Limitations on submission of prior art by third party
requester following the order for inter partes reexamination.
* * * * *
(b) Notwithstanding any provision of these rules, any submission of
prior art or other information as set forth in Sec. 1.98 by a third
party requester must comply with the requirements of Sec. 1.98.
June 28, 2006 JON W. DUDAS
Under Secretary of Commerce for
Intellectual Property and Director of the
United States Patent and Trademark Office
[1309 OG 25]