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.
In a Federal Register Notice issued December 1, 2011, the USPTO issued a final rule that tweaks the patent term adjustment rules to permit applicants to promptly file McKesson-type Information Disclosure Statements (IDSs) without incurring a patent term adjustment deduction. The rule change took effect on December 1, 2011.
(The Federal Register Notice indicates that previously proposed changes to the calculation of patent term adjustment when the USPTO reopens prosecution after a Notice of Appeal are being revised and will be published for comment separately.) 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 USPTO announced on July 21, 2011, that it plans to “revise the standard for materiality” for the duty of disclosure in view of the Federal Circuit’s decision in Therasense, Inc. v. Becton, Dickinson & Co. In particular, the USPTO plans to “match” the materiality standard the court announced in the context of its inequitable conduct decision. The USPTO acknowledges that the Supreme Court may take up Therasense for review, but has decided to move forward for the time being. The USPTO will accept written comments on its proposal until September 19, 2011.
As I noted last week, the USPTO is revisiting its guidance on the Duty of Disclosure in the wake of the Federal Circuit’s en banc decision in Therasense. While the USPTO is reviewing the substantive requirements of the Duty of Disclosure, I hope that it also takes this opportunity to ease the procedural burdens associated with Information Disclosure Statements (IDSs).
On the heels of the Federal Circuit’s en banc decision in Therasense, the USPTO has announced that it will be issuing guidance “related to the prior art and information [applicants] must disclose to the Office in view of Therasense.”
According to the USPTO’s press release:
We are now studying the potential impact of Therasense . . . on Office practice, and we expect to soon issue guidance to applicants regarding the materials they must submit to the Office under their duty of disclosure.
As I noted in my case summary, the Therasense decision expressly rejected the “materiality” standard set forth in USPTO Rule 56 (37 CFR § 1.56). Thus, the USPTO may revoke or revise this rule, although new provisions might be promulgated through the notice and comment process. Several provisions of MPEP Chapter 2000 are based on Rule 56, and may be revised as well.
It will be interesting to see whether the USPTO conforms its rules and guidance to the court’s decision, or tries to maintain a higher duty of disclosure.
On May 25, 2011, the Federal Circuit issued its long-awaited en banc decision in Therasense, Inc. v. Becton, Dickinson & Co. After a panel affirmed the district court’s finding of inequitable conduct, the court agreed to rehear the appeal en banc in order to revisit the law of inequitable conduct. The court’s decision “tightens the standards” for proving inequitable conduct, holding that evidence of “intent” must be considered independently from materiality, and that materiality generally must be proven by a “but-for” test, except in cases of “affirmative egregious misconduct.”
In a recent post on his blog, Director Kappos discussed the progress the USTPO has made towards improving patent processes. He reports that in fiscal year 2010 the USPTO "[e]ntered more than 2.9 million documents." Now, he doesn’t categorize these documents, but I wonder how many include Information Disclosure Statements that submit copies of references or Office Actions that the Patent Office already has in the electronic files of other patent applications. Yes, I am referring to the McKesson IDS problem again!
One of my first blog articles proposed three easy solutions to the McKesson IDS problem. I understand that this problem is not a major prioirty for the USPTO, but I was hopeful that it would make the agenda after Director Kappos wrapped up his first year leading the USPTO.
When the EPO waived its new disclosure requirements for applications where it could readily obtain the information itself, I thought that the USPTO would take notice. How can the USPTO require US applicants to submit in one application copies of references and Office Actions from another application, when the EPO has decided that applicants with US priority applications do not have to submit copies of US Office Actions, because the EPO can obtain those documents itself from the USPTO’s PAIR website?
Now, Director Kappos has shined a spotlight on the overwhelming number of documents the USPTO must process on a yearly basis. If the USPTO has not investigated what portion of these documents is made up of Information Disclosure Statements, and what portion of Information Disclosure Statements submit copies of documents that the USPTO already has on file in association with another application, it should. And, if it has looked at those numbers, it should share them with the public.
The current IDS processes waste applicant resources, USPTO resources, and paper:
If we recieve an Office Action in one application, we may decide (pursuant to McKesson) to cite it (and any newly cited references) in an IDS in a copending application. Even though the USPTO already has a copy of the Office Action and the references from the first application, the current IDS rules require us to submit copies in the second application in order to have them considered by the examiner.
If the IDS includes a large number of documents or lengthy documents, we are likely to file hard copies, because copying documents is faster than scanning and uploading them one by one to PAIR.
When the USPTO receives the hard copies, it then scans them into its own electronic files to be indexed in PAIR with the second application.
Thus, the current rules require the same documents to be processed three times:
- First, when the USPTO issues the first Office Action and provides copies of non-patent references.
- Second, when the applicant copies the Office Action and references for the IDS in the copending application.
- Third, when the USPTO scans the Office Action and references from the IDS for the electronic file of the copending application.
Even if only a small fraction of the 2.9 million documents processed by the USPTO in 2010 are McKesson-type IDSs, it is clear that the USPTO could realize signficant process improvements if it at least waived the requirement to submit copies of documents already in its possession. As the number of pending applications continues to grow year over year, the number of IDSs will only increase. The USPTO’s failure to address this issue will undermine its efforts to improve its internal processes and could delay the overall patent process if examination is delayed while IDS documents are entered into the USPTO’s system.