Necessary to Cross Cite Art in Ids From Related Us Application

An essential part of U.S. patent prosecution is the duty of disclosure, which requires the disclosure of all known information that is material to patentability. 37 C.F.R. § 1.56.

Who Has a Duty of Disclosure?

• Anyone substantively involved in preparation or prosecution of an application, including:
  • Inventor(s)
  • Attorneys, agents, and paralegals
  • In-house patent counsel

Suggested Composition of an IDS Filing

• Information Disclosure Statement (IDS) pleading;
• Class PTO/SB/08a and/or PTO/SB/08b;
• Certifications (37 C.F.R. § 1.97(e)) and/or PTA safe harbor statements (37 C.F.R. § 1.704(d));
• Copies of the cited documents, if required;
• Fee payment, if required; and
• Other requests or petitions, if required (e.one thousand., request for continued examination, petition to withdraw from issue).

Special Considerations for an IDS Pleading

• Explain:
  • Materials that may be relevant to patentability are being submitted.
  • The prosecution status of the application (Before examination? Later on kickoff Office action? After final rejection?) and nether which rule the IDS is filed.
  • What copies of the cited documents are/are non being submitted.
  • No need to submit:
    • U.S. patents and published applications. 37 C.F.R. § 1.98(a)(2)(ii);
    • Documents cited past or submitted to the U.S. Patent and Trademark Office (PTO) in an IDS filed in an before U.Southward. nonprovisional application to which the current application claims benefit; or
    • Unpublished U.S. applications stored in the PTO'south Image File Wrapper system. Official Gazette, October nineteen, 2004.
  • Any related information or matters that you lot desire the examiner consider:

 Special Considerations for Form PTO/SB/08a

• Course PTO/SB/08a = for citing patents and published applications
• When a patent or published awarding is in a foreign linguistic communication, it is preferable to provide an English language translation.
  • Human translations are preferred if possible.
  • Machine translations are often available otherwise - bank check website of WIPO, EPO, JPO, KIPO, SIPO, etc.
  • Tip: Is the foreign language document the foreign national phase of a PCT application that was published in English?

    • If and then, and then likewise submit the publication of the English language PCT publication since that is either a human translation or the original language of the application.

    • Explain the relationship between the strange language patent certificate and the Per centum publication in the IDS pleading.
      • For instance, land that the PCT publication is believed to be a translation of "at least" the specification and figures of the foreign language patent document.
      • Notation: The claims in the foreign language patent document may exist dissimilar than they are in the PCT publication.
    • List the strange linguistic communication patent document and the Percentage publication separately on the IDS forms.
  • Tip: Is the foreign language patent document the foreign national phase of a PCT awarding that was non published in English, but which entered national phase in a country in which it was published in English (e.g., the U.Due south.)?
    • If so, and so also listing and/or submit the English language language publication.
    • Explain the human relationship between the strange linguistic communication patent certificate and the English publication in the IDS pleading.
      • For example, state that the English publication is believed to exist a translation of "at to the lowest degree" the specification and figures of the strange linguistic communication patent document.
      • Note: The claims in the foreign language patent document may exist different than they were in the English publication.
      • Explain that the foreign language patent certificate and the English publication are national phase applications that arose from the aforementioned Percent application
    • Listing the foreign language patent document and the English publication separately on the IDS forms.
    • If the English publication is a U.Due south. application, attach a copy to the foreign language patent certificate as a courtesy to the examiner, fifty-fifty though information technology isn't required.
• If no translations of the foreign certificate are available, a statement of relevance must be submitted.
• Alternatively, if the strange language document was cited in a search report by a foreign patent role in a counterpart foreign application, y'all can submit an English language version of the search study that indicates the degree of relevance of the document.
  • A copy of the English language language version of the search report must exist submitted. MPEP 609.04(a)(3).

Special Considerations for Form PTO/SB/08b

• Form PTO/SB/08b = for citing all other documents or other information, including unpublished U.S. patent applications.
• The citation should include writer, title of the commodity, title of the item (book, periodical, etc.), date, page(s), volume-result number(s) and, for books, the publisher.
• Foreign linguistic communication documents must be submitted with an English language translation and/or a statement of relevance.
  • You tin prepare your ain statement of relevance, or yous can submit an English language version of a search report that lists the foreign document, as explained above.

Timing of Filing an IDS

* – "I hereby state that each item of data contained in this Information Disclosure Statement was first cited in any communication from a foreign patent office in a counterpart strange awarding non more than three months prior to the filing of this Information Disclosure Statement." 37 C.F.R. § 1.97(e)(ane).

# – $240 for a large entity applicant, $120 for a small entity applicant, and $60 for a micro entity applicant.

+ – "I hereby country that no item of information in this Information Disclosure Argument was cited in a advice from a foreign patent role in a counterpart foreign application and, to my cognition after making reasonable inquiry, was known to any individual designated in 37 C.F.R. § 1.56(c) more than 3 months prior to the filing of this Information Disclosure Argument." 37 C.F.R. § 1.97(e)(ii).

Special Considerations for a Statement Under 37 C.F.R. § i.97(e)

• Argument refers to a "analogue" foreign application.Be careful when making this statement because not all "related" foreign applications are counterpart strange applications.
• A analogue foreign application has a specific pregnant:
  • "The term counterpart strange patent application means that a claim for priority [the PTO means foreign priority] has been fabricated in either the U.S. awarding or a foreign awarding based on the other, or that the disclosures of the U.S. and strange patent applications are substantively identical (e.g., an application filed in the European Patent Office claiming the same U.Thousand. priority as claimed in the U.S. application)." (MPEP 609.04(b) (5)).
• A U.Due south. or English language analogue of a foreign patent or application cited past a foreign patent office can qualify the IDS for certification under 37 C.F.R. § 1.97(e)(ane).
  • "Some applicants submit data disclosure statements to the PTO which list and include copies of both the particular patent cited in the foreign patent office communication and the related United States or other English language patent from the family unit list. Since this is to exist encouraged, the The states or other English language patent will be construed equally beingness cited by the strange patent office for purposes of a statement under 37 CFR 1.97(east)(1)." (MPEP 609.04(b)(V)).
    • For instance,
      • You take a counterpart application in Japan.
      • The Japanese examiner cites a published Japanese application, JP 2010-xxxxx, confronting your Japanese application.
      • JP 2010-xxxxx is the publication of the Japanese national stage application that arose from Percentage/US2010/yyyyyy.
      • Percent/US2010/yyyyyy was published in English.
      • Y'all are after final rejection in the analogue U.S. application.
      • You lot can file the IDS and certify under 37 C.F.R. § 1.97(e)(1) not only JP 2010-xxxxx but besides Pct/US2010/yyyyyy.
      • A car translation of an role action from the EPO, SIPO, KIPO and the JPO may be available on the awarding'due south Global Dossier (which tin can be reached through PAIR). Notwithstanding, especially with strange search reports, always cheque the original language document to ensure the motorcar translation correctly lists all the cited art. For example, nosotros take noticed that with supplemental search reports from CNIPA (formerly SIPO), that are on the Global Dossier (GD), the search report often shows simply the patent documents that were on the search written report. The not-patent documents do not testify up on the GD version of the search report. Obtain a copy of the function action/search report from your strange associate and ostend that y'all have a list of all the documents cited past the foreign patent part.

Establish an IDS Process

• Docket reminders to consider filing an IDS:
  • With or before long later the filing of whatsoever new nonprovisional application;
  • When a new search report or Office action is received in a related application; and
  • Before payment of the event fee.
• Keep a well-organized spreadsheet of cited documents in all related applications for more complex matters.
• When replying to an Office action, check that the examiner considered all previously submitted IDS's and consider whether any new documents should be cited.
• When filing an IDS in the U.S., consider whether the documents should too exist cited in any related applications in strange countries having a duty of disclosure.

Special Considerations for Patent Term Adjustment

• Avoid filing an IDS by itself during examination.
  • Considered "failure of the applicant to engage in reasonable efforts to conclude processing or examination of an awarding," which is counted against a patent term adjustment (PTA) to which a case may be entitled. 37 C.F.R. § i.704.
• An IDS filed solitary subsequently a reply to a restriction requirement and earlier a first Function activity on the merits is considered applicant delay counted against PTA. Gilead Sciences Inc. v. Lee, 778 F.3d 1341 (Fed. Cir. 2015). But, an IDS filed lone after a restriction requirement is issued and before a reply to the restriction requirement is filed, is not considered applicant delay counted against PTA.
• An IDS filed by itself earlier the mailing of a first role activity after the filing of an RCE did not count confronting PTA from the engagement of filing of the RCE until the filing of the IDS. Supernus Pharm., Inc. v. Iancu, 913 F.3d 1351 (Fed. Cir. 2019). The cited documents were related to an EP opposition that was not filed at the EPO until 546 days after the RCE was filed at the USPTO. Supernus filed an IDS citing the opposition documents 646 days later on the RCE was filed. The USPTO subtracted 646 days of PTA. Supernus argued that it was entitled to at least 546 of the 646 days of PTA reduction considering the IDS citing the opposition documents could non take been filed before that time. The Federal Excursion agreed and plant that the USPTO may not count as applicant delay a flow of time during which there was no action that the applicant could take to conclude prosecution of the patent.
• Request PTA Reconsideration: In view of the Supernus conclusion, The USPTO published a "Notice" that, effective May ix, 2019, a patentee who disagrees as to whether the USPTO's calculation of the period of PTA reduction exceeds the period of time during which the patentee failed to engage in reasonable efforts to conclude prosecution must enhance the issue and provide relevant data in a timely request for reconsideration of the PTA (84 Fed. Reg. 20343 (May 9, 2019). The problem is that the event from which the Federal Circuit measured the start of the PTA reduction in Supernus was a observe from a strange authority. That type of issue is not recorded in the USPTO PALM system. Therefore, the burden is on the applicant to bring such events to the USPTO'south attending and request afterthought of the PTA calculation.
• The USPTO published a Detect of Proposed Rulemaking to align PTO rules with the conclusion in Supernus (84 Fed. Reg. 53090 (Oct viii, 2019). The comment catamenia closed December three, 2019. The proposed rule revises the period of reduction of PTA in 37 C.F.R. § one.704 for the following events: deferral of issuance of a patent, abandonment of an application, submission of a preliminary amendment, submission of papers later on a PTAB or Federal court decision and submission of papers after a discover of allowance. The suggest rule specifies a period of reduction respective to "the period from the beginning to the stop of the applicant'due south failure to appoint in reasonable efforts to conclude prosecution."
• Safe Harbor Provisions: 37 C.F.R. § 1.704(d)(i) and (d)(ii)
  • PTA is not subtracted if the information:
    • Was first cited in a communication from the PTO or a patent role in a counterpart strange or international application, and this communication was non received more 30 days prior to the filing of the IDS (37 C.F.R. § 1.704(d)(i)); or
    • Is a communication that was issued past the PTO or a patent office in a counterpart strange or international application, and this advice was not received more than than xxx days prior to the filing of the data disclosure statement. (37 C.F.R. § 1.704(d)(2))
    • To accept reward of these prophylactic harbor provisions, exist certain to clearly characterization the pleading equally including a argument nether 37 C.F.R. § 1.704(d)(i) or (d)(ii) (or use the USPTO forms beneath) and actually brand the appropriate statement(s).
• USPTO safety harbor forms
  • To make an IDS "safety harbor" argument and to request PTA recalculation based on the prophylactic harbor statement
    • Use the USPTO's "Acting Procedure" for requesting recalculation of PTA with respect to IDS'south that are accompanied by a safe harbor statement under 37 C.F.R. § 1.704(d)(i) or (d)(ii).(83 Fed. Reg. 55102 (November 2, 2018)).
    • Use class PTO/SB/133 to make a safe harbor statement under 37 C.F.R. § ane.704(d). Important: this course volition not satisfy the requirement of 37 CFR 1.97(e).
    • Use form PTO/SB/134 to asking recalculation of PTA in view of having fabricated a safe harbor statement nether 37 CFR i.704(d). This form must be filed within the time period ready forth in 37 C.F.R. § one.705(b).
    • Both forms are available at (https://www.uspto.gov/patent/patents-forms). The USPTO PALM organization is being updated to automatically include these forms when calculating PTA (even so in the time to come).

Special Considerations for Continuing Applications

• The examiner will consider information considered by the PTO in a parent awarding when examining a continuation, divisional or continuation-in-role application. MPEP 609.02.
• This information need non be resubmitted, unless the applicant desires the information to be printed on the patent.
• Even so, when filing a continuing awarding that claims benefit to an international application, documents cited in the international search report (ISR) and/or international preliminary report on patentability (IPRP) should be submitted.

Special Considerations for National Phase Applications

• Documents cited in an ISR should be considered when Form PCT/Practice/EO/903 indicates that the ISR and copies of the cited documents are present in the national phase file. MPEP 609.03.
• ISR, IPRP and their translations
  • English language translations of the ISR and IPRP/Written Opinion are available for download directly from WIPO'south website.

  • If the English language translation of the IPRP/Written Opinion is not bachelor when the IDS is filed, docket to obtain it and submit information technology in a supplemental IDS as a courtesy to the examiner if WIPO has not automatically sent information technology to the PTO.

  • Be sure to check the ISR and IPRP translations to ensure they are accurate.
    • Nosotros accept found errors in the listings of the documents.
    • For example, in the list of the cited documents in 2 highly related applications, the foreign language ISRs cited different documents, but both translations cited the aforementioned documents.
    • If y'all only looked at the translations of the ISRs, y'all would take missed important documents cited in the original ISRs.
• Chapter Two prosecution during PCT phase
  • If Chapter II was entered, check the IPRP to determine if boosted documents were cited by the examiner.
  • Includes:
    • Affirmative misrepresentations of fabric fact;
    • Failure to disembalm fabric information; or
    • Submission of false material information;
    • With an intent to deceive.
  • If you consider a document, simply ultimately do not cite it in an IDS:
    • Place a memo in the file that indicates why you decided not to cite it (east.g., document is non material or is cumulative). MPEP 2004(18).
    • Could serve as evidence of no intent to deceive.
    • In Therasense, the Federal Circuit established that the materiality of a withheld reference is assessed using a "only-for" materiality examination (Therasense, Inc. v. Becton, Dickinson & Co., 649 F.3d 1276 (Fed. Cir. 2011)). The court must determine whether the PTO would have allowed the claim if it had been aware of the undisclosed reference.
    • The USPTO published a proposed rulemaking to improve 37 C.F.R. § 1.56 to prefer the Therasense but-for materiality exam (81 Fed. Reg. 74987; Oct 28, 2016). The annotate period closed in December, 2016.

---

This article appeared in the 2020 Patent Prosecution Tool Kit.

hardenanaid1952.blogspot.com

Source: https://www.sternekessler.com/news-insights/publications/information-disclosure-avoiding-common-pitfalls

Share this post