David Kappos has wrapped up his first year as Director of the USPTO. As noted in his blog, he has implemented a number of new programs and rolled out several new initiatives. Perhaps most importantly, he has fostered an atmosphere of cooperation between the USPTO and the stakeholder community. With that in mind, I again urge the USPTO to take action to solve the McKesson Information Disclosure Statement (IDS) problem. I am not the only one concerned with this issue. One of the most common search topics that bring people to this blog relate to "McKesson" and "IDS." Clearly, stakeholders are burdened by this problem and are looking for guidance and solutions.
The McKesson IDS Problem
As I wrote previously, Federal Circuit decisions such as McKesson Information Solutions, Inc. v. Bridge Medical, Inc., 487 F.3d 897 (Fed. Cir. 2007), indicate that there can be a duty to disclose information from co-pending U.S. applications, including Office Actions and cited references. With a small application family, the requirement is usually manageable, but the burden grows exponentially with each additional family member.
The USPTO’s current IDS rules do not provide an efficient framework for citing information from a co-pending U.S. application that is undergoing parallel examination. As a result, applicants are forced to submit copies of documents that are already in the hands of the USPTO. There is no justification for this duplication of effort (and paper!), because there are at least three simple solutions that the USPTO could adopt:
(1) Treat Co-Pending U.S. Applications Like Parent-Child Applications
MPEP 2001.06(b) provides that if an application is filed as a CON, DIV or CIP of an earlier application, the examiner will consider the prior art cited in the earlier application without the applicant having to cite to same art in the later application. The USPTO should extend this provision to co-pending U.S. applications that are identified by the applicant.
For example, once an applicant identifies a co-pending U.S. application (such as in an initial IDS), the examiner—not the applicant—would be obligated to periodically check the co-pending application file for new information that may be material to patentability. The examiner could do this prior to issuing each Office Action or a Notice of Allowance. This extra step could actually reduce examiner workload, because examiners could quickly assess whether any new information is relevant to patentability instead of having to review and process an IDS submitted by the applicant. In cases where the examiner is handling multiple applications in the same family, the examiner already would be familiar with the Office Actions and references of record.
(2) Treat References Cited in Co-Pending U.S. Applications Like Those Cited In Foreign Applications
The timing requirements of the current IDS rules include several exceptions for information first cited in a counterpart foreign application. The USPTO should extend these provisions to co-pending U.S. patent applications.
For example, applicants could submit information newly cited in a co-pending U.S. application without having to pay a fee (after a first Office Action) or file an RCE (after a final Office Action). There is no reason the USPTO should make it more difficult for applicants to obtain consideration of information produced in a co-pending U.S. application as compared to a foreign application.
(3) Treat Non-Patent Documents Cited in Co-Pending U.S. Applications Like Those Cited in Parent Applications
The documentation requirements of the current IDS rules require applicants to submit copies of all references (other than U.S. patent documents) unless the references already were cited in an earlier U.S. parent application. The USPTO should extend this exception to co-pending U.S. applications.
Under current practice, if an Office Action is issued in a co-pending U.S. application that is not a parent application, applicants must file copies of the Office Action and cited references to comply with the IDS rules for the other application. In essence, an applicant must copy and re-file at the USPTO the same documents that the USPTO just copied and mailed to the applicant. This can amount to a tremendous administrative burden (not to mention a colossal waste of paper) as stacks of references may need to copied or scanned. This can be a particular problem in chemical and biotech applications, where the cited references may include long PCT applications or applications with lengthy Sequence Listings.
An examiner can access information of record in the co-pending application electronically, and nearly as easily as information of record in the application at hand. Thus, there is no justification for imposing this burden on applicants. Indeed, this rule stems from the days of paper patent files, and now is obsolete in view of the USPTO’s electronic file system.
The USPTO Should Act Now
I know Director Kappos has bigger issues than IDSs on his agenda, but fixing the McKesson IDS problem would have an immediate, positive impact on stakeholders. The USPTO could implement these changes without Congressional approval or budget appropriations. Making it easier for applicants to comply with the IDS requirements would significantly reduce the costs and burdens of patent prosecution, permitting stakeholders to put more of their patent budgets to better use.