Tag Archives: Duty of Disclosure

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:

1. First, when the USPTO issues the first Office Action and provides copies of non-patent references. 
2. Second, when the applicant copies the Office Action and references for the IDS in the copending application.
3. 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.