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.
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