I know that the USPTO is busy studying the America Invents Act and drafting its implementing regulations, but it is disappointing that nothing has been done to address the inefficiencies of the current Information Disclosure Statement (IDS) rules. This inaction is even more egregious now that the Trilateral Patent Offices (EPO, JPO, USPTO) have launched the Common Citation Document Application (CCD) to provide easy access to references identified in search reports.
The McKesson Problem
As I have written previously, Federal Circuit decisions such as McKesson indicate that there can be a duty to disclose information from co-pending 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. Still, the USPTO has done nothing to address this problem.
References Cited In Co-Pending Foreign Applications
MPEP § 2001.06(a) indicates that there is a duty to disclose in a U.S. application “any material prior art or other information cited or brought to their attention in any related foreign application.” While the IDS rules have special timing provisions for submitting references cited in foreign applications, there are no exceptions to the general requirement that copies of such references must be submitted, even if the examiner readily can obtain copies from free electronic databases. The need to submit copies of references cited in foreign applications compounds the IDS burden.
The Common Citation Document Application
The Common Citation Document Application (CCD) is the result of a joint effort by the EPO, the JPO, and the USPTO to make prior art search results obtained by each patent office readily available to the other patent offices, and to the public. As explained on the Trilateral website:
The Common Citation Document (CCD) application is a patent information tool developed by the Trilateral Offices to provide single point access to citation data for their examined patent applications. It consolidates the prior art cited by all participating offices for the family members of a patent application, thus enabling the search results for the same invention produced by several offices to be visualised on a single page.
The CCD application uses the EPO’s global patent database family system and is hosted by the EPO. It can be accessed on the Trilateral website at www.trilateral.net/ccd. As further explained in a press release:
The CCD tool offers a single point of access to citation data from all three offices. It enables patent examiners as well as innovators to search for and view, in a single screen, the prior art cited by the patent offices for the family members of a patent application. While designed to boost the efficiency of the offices, the CCD is also expected to save considerable time and effort for anyone using patents, for example inventors and patent analysts, as a source of information.
This statement indicates that the participating patent offices expect examiners to use the CCD application as a tool during the examination process, but does not outline any logistics. It would be nice if the USPTO would adopt its IDS rules to reflect this new resource that examiners have at their fingertips. For example, the IDS rules could be updated to:
- Extend MPEP 2001.06(b) to Foreign Applications encompassed by the CCDMPEP 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 related foreign applications encompassed by the CCD (e.g., at least corresponding EPO and JPO applications).
- Extend 37 CFR 1.98 to References available on the CCD. 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 include references available on the CCD.
Will International Pressure Sway The USPTO?
While I am no longer optimistic that the USPTO will heed my pleas on behalf of applicants, news of the CCD application gives me hope that the USPTO will feel international pressure from its trilateral colleagues to put the CCD application to good use. For example, in order to ensure that corresponding applications are examined in view of the same prior art, the EPO and JPO will expect U.S. examiners to review references available on the CCD, regardless of whether the applicant has submitted them in an IDS. In order to meet these expectations, U.S. examiners will have to review the CCD on their own initiative. If U.S. examiners adopt this practice, there should be no need for applicants to submit the references again in an IDS, and certainly no reason for applicants to submit copies of such references.
Until the USPTO takes advantage of this new tool, applicants will continue to copy and file stacks of paper like this—even when the USPTO already has these documents in a co-pending application, and even when the majority are published PCT applications and issued U.S. Office Actions that examiners readily could access electronically.