The information provided with a declaration under 37 CFR 1.97(e) may be used in a new ground for rejection, and the Next Action of the Agency may be rendered final if the new ground for refusal was required by the amendment of the application by the applicant. If the information is filed during this period with a fee in accordance with paragraph 1.17(p) of 37 CFR, the examiner may use the information provided and make the next application of the Office final, whether or not the claims have been amended, unless the examiner provides another new ground for rejection that was not required by the amendment of the claims. See MPEP § 706.07(a). If you have any questions about an explanation about the disclosure of the information or the meaning of the information, what it contains or how it is prepared, let me know. Call me at 617-340-9295 or email me on my contact page. Or find me on LinkedIn, YouTube, Facebook, Twitter or Avvo. In addition to the list of information, each statement must also include a legible copy of the following documents: Disclosure statements will be reviewed for compliance with the requirements of 37 CFR 1.97 and 37 CFR 1.98, as set forth in MPEP § 609.04 (a) and § 609.04 (b). The applicant will be informed of compliance and non-compliance with the rules in accordance with Articles 609.05 (a) and 609.05 (b) of the MPEP. This obligation to disclose known and relevant prior art applies to all persons involved in the substantive preparation of the patent application. This means not only the applicant/client, but also the patent attorneys and patent attorneys who process the patent application. The obligation also applies to each inventor named in a patent application. Any disclosure statement must also include a concise explanation of relevance as currently understood by the person designated in 37 CFR 1.56(c) who is most familiar with the content of the information listed, which is not written in English.
The concise explanation can be separated from the specification or be part of the specification. If the concise explanation is part of the specification, the IDS collection must contain the page or line numbers on which the concise explanation in the specification is located. The information taken into account by the Office in the parent application of a Request for Prosecution (CPA) filed under paragraph 37 CFR 1.53(d) is part of the file submitted to the examiner and does not need to be refiled in the continuous application for the information to be taken into account and included in the patent. If the second stage has expired, an applicant may file an IDS before or against payment of the issue fee. However, if an IDS is filed at this stage of the lawsuit, the IDS must be accompanied by both a declaration of 37 C.F.R. § 1.97(e) and the government fee set out in 37 C.F.R. § 1.17(p). If a declaration of 37 C.F.R.
§ 1.97(e) cannot be made, an applicant must file an NCE for the SDI to be reviewed by the examiner. Similarly, a disclosure statement is considered if it is filed more than three months after the filing date but before the date of dispatch of a first appeal brought by the Office on the merits. A substantive claim is an action that concerns the patentability of claims in an application, as opposed to formal or procedural requirements alone. For example, a lawsuit on the merits would include a denial or reference to the admissibility of one or more claims, rather than a simple request for limitation (37 CFR 1,142) or simply a request for additional costs to have a claim reviewed (37 CFR 1.16). Thus, if an application was filed on 2 January and the first action on the merits of the Office was not sent until six months later, on 2 July, the examiner would have to take into account any formal disclosure statement filed before 2 July. From May 2002, the SDI may be submitted to the Office via the Office`s electronic filing system. Applicants may file an e-IDS via EFS-Web by (A) entering the reference citation information in an electronic data entry form corresponding to paper form PTO/SB/08A and (B) by submitting the electronic data entry form to the Office. Since January 2007, an e-IDS filed via EFS-Web can contain U.S. patent citations, U.S.
patent application publications, foreign patent documents, and non-patent literature (NPL). Copies of U.S. patents and publications of U.S. patent applications cited in the IDS do not need to be filed by applicants with the e-IDS. If references to foreign patent documents or NPLs or unpublished U.S. patent applications (which are not stored in the Office`s Image File Packaging System (IFW)) need to be cited, applicants must file copies of these documents in PDF format via EFS-Web. When resubmitting a list of information, the applicant must submit a new entry that meets the format requirements set out in paragraph 1.98(1) of 37 CFR. Applicants are strongly discouraged from submitting a list containing copies of Forms PTO/SB/08 or PTO-892 from other applications. A form PTO/SB/08 of another application may already have the application number of another application.
This information is likely to confuse the data set. While there is no firm rule as to what information is « substantial », a good rule of thumb is to disclose any information relevant to the claimed subject matter. This information may include other U.S. patent applications and related patents of the applicant or references cited in a PCT application or a foreign counterparty application. This article explores when and how IDS should be submitted to meet the obligation to disclose « material » information, as well as common errors that should be avoided in IDS submissions. Suppose you have two pending U.S. patent applications that are related to each other (for example. B two design patent applications from the same inventors/applicants with similar designs). If an Office share is issued in a first application based on prior art, you will likely need to file a cross-citation IDS in the second associated application. The objective is to take the references discovered in one case to the prior art and to take them into account in all other related cases. The list of information that meets the format requirements of paragraph 1.98(a)(1) of 37 CFR and the identification requirements of paragraph 1.98(b) of 37 CFR cannot be included in the specification of the application in which it is submitted, but must be submitted in a separate document.
A separate list is necessary to easily confirm that the applicant intends to provide a statement on the disclosure of information and because it provides the examiner with an easily accessible checklist to indicate which identified documents have been considered. A separate list shall also provide the applicant with a simple means of communication to indicate which listed documents have been taken into account and which documents have not been taken into consideration. It is recommended that Forms PTO/SB/08A and 08B, Disclosure Of Information, be used to list documents. The notices of foreign patent offices in foreign applications sometimes contain a list of patent families corresponding to a particular patent cited in the notice. The patent family may include a U.S. patent or another patent in English. Some applicants file statements with the PTO to disclose information that lists and contains copies of the patent cited in the notice of the foreign patent office and the corresponding U.S. patent or any other English-language patent on the family list. Because it should be encouraged, the U.S.
patent or any other English-language patent is interpreted as being cited by the foreign patent office for the purposes of a declaration under 37 CFR 1.97(e)(1). The examiner should examine U.S. patents or another English-language patent if 37 CFR 1.97 and 37 CFR 1.98 are met. In addition, paragraph 1.97(1) of 37 CFR is interpreted to include all information contained in a notice of a foreign patent office, including the notice itself, such as . B an action by the Office or a search report. All statements that meet the substantive requirements of 37 CFR 1.98 and that are filed within three months of the filing date will be reviewed by the examiner, regardless of what else has happened in the review process up to that point. Therefore, in the rare cases where a final action of the Office, a letter of admission or an ex parte Quayle action is sent before one day three months after the filing date, any information contained in a full disclosure statement filed within that three-month period will be taken into account by the examiner. An ex parte Quayle lawsuit is a lawsuit that includes lawsuits in the claim statement under 37 CFR 1.97(c). Therefore, a statement filed after an ex parte Quayle lawsuit must comply with the provisions of 37 CFR 1.97(d). Finally, it can also help protect your patent from future attacks once it has been granted or during the examination process – because if someone tries to invalidate your patent by saying: There is already a known prior art and therefore it should not have been granted, you can say: No, we have revealed it, the USPTO examiner was aware of this, and we had taken this into account during the examination, and our invention was always considered patentable, even in light of this well-known prior art. 37 CFR 1.98(a)(1) also requires that each page of the list contain a title that clearly indicates that the list is an SDI. Since the Office treats an IDS filed by the applicant differently from the information provided by a third party (e.B.
the Agency may reject any filing by a non-compliant third party in accordance with 37 CFR 1.99), a header on each page of the list indicating that the list is an SDI would promote the correct processing of the IDS submitted by the applicant and reduce processing errors. . . .