Cook Alex News

The White House’s OMB completed its review of new IDS rules and published its approval. Under these proposed rules, the patent applicant will be subject to more stringent requirements, including having to explain the significance of prior art. These rules are expected to go into effect late January.

For close to three years, the United States Patent and Trademark Office (“USPTO”) has been discussing new rules associated with claims, continuations and disclosure. Regarding claims and continuations, the U.S. District Court for the Eastern District of Virginia has issued a preliminary injunction preventing the USPTO from implementing these proposed rule changes. For disclosure, new IDS rules have been reviewed and approved by the White House’s Office of Management and Budget (“OMB”).

Under USPTO rules, everyone involved with the prosecution of patent applications has a duty to disclose any material information impacting patentability. This information typically consists of prior art, and evidence of prior public use or sale. Failure to comply with these disclosure requirements can result in the patent being found unenforceable.

An Information Disclosure Statement (“IDS”) is a document through which an applicant can fulfill some of
these disclosure requirements. Using an IDS, an applicant identifies and submits copies of prior art references, including U.S. patents, U.S., foreign and PCT patent applications, and other relevant printed publications.

Although an IDS is not required to be filed, the USPTO does impose a fee for filing an IDS after the first office action on the merits and will not consider an IDS filed after a final rejection or notice of allowance without good cause. In addition, there is currently no limit on the number of references submitted with an IDS.

In trying to improve the quality and efficiency of the examination process, the USPTO has proposed new IDS rules, which shift the burden for examination from the examiner to the applicant. These rules would have the following significant impact on submissions of IDS’s by applicants:

Impose a requirement for applicants to review and explain the relevance of references
Permit only timely IDS submissions
Only allow the filing of an IDS after the mailing of a notice of allowance under a narrow exception

These rules are expected to go into effect late January. Thus, we suggest that applicants planning to file
IDS’s do so soon.


IP Alerts News & Events Media Coverage Publications & Presentations Legal Resources Claim Construction	December 21, 2007 The White House Approves New IDS Rule Changes
	The White House’s OMB completed its review of new IDS rules and published its approval. Under these proposed rules, the patent applicant will be subject to more stringent requirements, including having to explain the significance of prior art. These rules are expected to go into effect late January. For close to three years, the United States Patent and Trademark Office (“USPTO”) has been discussing new rules associated with claims, continuations and disclosure. Regarding claims and continuations, the U.S. District Court for the Eastern District of Virginia has issued a preliminary injunction preventing the USPTO from implementing these proposed rule changes. For disclosure, new IDS rules have been reviewed and approved by the White House’s Office of Management and Budget (“OMB”). Under USPTO rules, everyone involved with the prosecution of patent applications has a duty to disclose any material information impacting patentability. This information typically consists of prior art, and evidence of prior public use or sale. Failure to comply with these disclosure requirements can result in the patent being found unenforceable. An Information Disclosure Statement (“IDS”) is a document through which an applicant can fulfill some of these disclosure requirements. Using an IDS, an applicant identifies and submits copies of prior art references, including U.S. patents, U.S., foreign and PCT patent applications, and other relevant printed publications. Although an IDS is not required to be filed, the USPTO does impose a fee for filing an IDS after the first office action on the merits and will not consider an IDS filed after a final rejection or notice of allowance without good cause. In addition, there is currently no limit on the number of references submitted with an IDS. In trying to improve the quality and efficiency of the examination process, the USPTO has proposed new IDS rules, which shift the burden for examination from the examiner to the applicant. These rules would have the following significant impact on submissions of IDS’s by applicants: Impose a requirement for applicants to review and explain the relevance of references Permit only timely IDS submissions Only allow the filing of an IDS after the mailing of a notice of allowance under a narrow exception These rules are expected to go into effect late January. Thus, we suggest that applicants planning to file IDS’s do so soon.

December 21, 2007 The White House Approves New IDS Rule Changes

December 21, 2007
The White House Approves New IDS Rule Changes