In a Federal Register Notice published October 18, 2012, the USPTO announced proposed changes to its rules of professional responsibility that would replace the current rules with rules based on the ABA Model Rules of Professional Conduct, with some modifications. While most of the proposed rules are familiar, a few appear to elevate the duty of disclosure over client confidentiality obligations in ways that may conflict with some state bar rules of professional responsibility. The USPTO will consider written comments received by December 17, 2012.Continue reading this entry
The USPTO has announced a new pilot program to permit Applicants to obtain consideration of certain Information Disclosure Statements (IDSs) after the Issue Fee has been paid without having to reopen prosecution. The “Quick Path Information Disclosure Statement (QPIDS) Pilot Program” takes effect May 16, 2012 and will run through September 30, 2012 unless it is extended.
As I previously pointed out, there are three proposed rules in the USPTO’s patent trial proceedings rules package that raise concerns and should be dropped. Public comments on these proposed rules were due April 9-10, 2012. Now that the public has spoken, let’s take a look at what people had to say about these three specific proposals.Continue reading this entry
As announced in a recent Federal Register Notice, the USPTO is soliciting public comments on its information collection requirements, in accordance with the Paperwork Reduction Act. This is an important opportunity to highlight requirements that are unnecessarily burdensome and that may go beyond requirements authorized by statute. While my main paperwork concerns relate to the IDS rules, the Notice highlights other areas where the USPTO may be underestimating the burdens of its regulations. The USPTO will consider written comments received by May 21, 2012. Continue reading this entry
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 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.
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.
European patent applications filed on or after January 1, 2011 will be subject to a new disclosure requirement designed to support international worksharing efforts. The new rule will require applicants to submit copies of search results received from the national patent office of the priority country (the Office of First Filing, or OFF). Failure to comply with the new requirement can result in abandonment of the European patent application, but the EPO plans to implement steps to facilitate compliance.
This week the Federal Circuit heard oral arguments in its en banc rehearing of Therasense, Inc. v. Becton, Dickinson & Co. As reflected in the en banc order, the court took this case en banc in order to reconsider—and hopefully reform—the law of inequitable conduct. The court’s decision could solve the McKesson problem and rein in the threat of inequitable conduct charges that drives practitioners to submit references even when they are not believed to be relevant to patentability.
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.
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-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 and to undertake the costly and time-consuming process of filing Requests for Continued Examination (RCEs) in order to comply with the current IDS rules.
Now that it has been three years since the McKesson decision was issued, the time for the USPTO to relieve the burden of these decisions is long overdue. Here are three simple solutions that the USPTO could adopt: