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Beware The IDS Of March

Posted by Courtenay Brinckerhoff on Posted in Duty of Disclosure

The oracle told Julius Caesar to “beware the ides of March,” but patent practitioners have more cause for concern about the IDSs they will have to file in March.

The McKesson Problem

Federal Circuit decisions such as McKesson indicate that there can be a duty to disclose information from co-pendng U.S. applications, including Office Actions and cited references. However, 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 already in the hands of the USPTO. 

I have proposed three changes to the MPEP and USPTO regulations that the USPTO could adopt to alleviate the burdens of complying with the duty of disclosure in this context. I have pointed out that the required refiling of documents that the USPTO already has burdens the USPTO as well as applicants. I have noted that “McKesson IDS” is one of the most common search topics that bring people to this blog.

The IDS of March

The “IDS of March” is an IDS that caught my attention as symbolizing the wastefulness imposed by the current IDS rules that require applicants to file copies of documents in one application that the USPTO already has in connection with another (identified) application.

IDS2-28.jpg

There has to be a more efficient way to get this information in front of examiners without needlessly burdening applicants, the USPTO and the environment.

Do you have a McKesson-type IDS that should be featured as an IDS of March?

Leave a comment and I will follow-up with you.

  • Trupti Joshi

    Hi Courtenay,
    Thank you for your blog post regarding “McKesson IDS”. For past 2 years, we have been filing IDSs citing related/co-pending applications and Office Actions issued in these applications. In our IDS transmittal letters we point out to MPEP 609.04(a)(II)(C) and do not submit copies of application specification or Office Actions in related/co-pending applications.
    MPEP 609.04(a)(II)(C) and 609.04(a)(II)(D) in short state that a requirement for legible copies of US applications or US Office Actions is waived where the cited pending application is stored in the USPTO’s IFW system. Accordingly, we submit copies of only those Office Actions for which applications are not available in the IFW system. All such IDSs have been considered by the USPTO.
    I agree with point 2 of your “three proposed changes” that the PTO needs to extend 37 CFR 1.97 to co-pending applications.

  • http://www.pharmapatentsblog.com/ Courtenay Brinckerhoff

    Thanks for the tip. We had not read MPEP 609.04(a)(II)(C)/(D)as applying to Office Actions (it should!), but will take another look.

  • http://www.cpaglobal.com/ Rajiv Kumar Prasad

    What you have discussed must have crossed millions of minds. It is absolutely insane citing office actions from co-pending cases that the USPTO itself has mailed! Even citing references from parent applications should be waived off. Just a mention in an IDS communication for the child case that references from such and such parent and co-pending applications are not being submitted and the Examiner is requested to acknowledge these prior submissions should suffice.

  • http://www.cpaglobal.com/ Rajiv Kumar Prasad

    Trupti (and Courtenay) there is waiver for U.S. patent or U.S. patent publication but not for office action or amendment etc. (anything other than the specification, including the claims, and the drawings). Read on MPEP 609.04(a)(II)(D):
    …The requirement for a copy of each U.S. patent or U.S. patent application publication listed in an IDS, has been eliminated, unless required by the Office. 37 CFR 1.98(a)(2). 37 CFR 1.98(a)(2)(iii) requires a copy of a pending U.S. application that is being cited in an IDS if “(A) the cited
    information is not part of the specification, including the claims, and the drawings (e.g., an Office Action, remarks in an amendment paper, etc.)”, or (B) the cited application is not stored in the USPTO’s IFW system.
    …