Tag Archives: Duty of Disclosure

USPTO Access To Relevant Prior Art Initiative

In an October 25, 2018 Federal Register Notice, the USPTO announced staged implementation of the first phase of an initiative aimed at “leveraging electronic resources to retrieve information” of record in one patent application for consideration in another. While the first phase of the Access to Relevant Prior Art Initiative is limited to importing citations from a … Continue reading this entry

USPTO Expands Collaborative Search Pilot Program

As announced in this October 30, 2017 Federal Register notice, the USPTO is expanding the Collaborative Search Pilot Program under which applicants can request that multiple intellectual property offices exchange search results prior to issuing a first office action. As explained in the notice, the CSP is designed to provide examiners with a “more comprehensive set … Continue reading this entry

USPTO Announces QPIDS Pilot Program For Post-Issue Fee Information Disclosure Statements

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 … Continue reading this entry

USPTO Tweaks Patent Term Adjustment Rules To Accommodate McKesson-Type IDS Submissions

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 … Continue reading this entry

Will The USPTO Use The New CCD Tool To Lessen The IDS Burden?

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 … Continue reading this entry

USPTO Adapts To Therasense

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 … Continue reading this entry

Revisiting IDS Guidelines? While You're At It . . .

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 … Continue reading this entry

USPTO Will Issue Guidance On Therasense

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 . … Continue reading this entry

Therasense Decision "Tightens" Inequitable Conduct Standard

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” … Continue reading this entry

How Much Do IDS's Contribute to the USPTO's Patent Process Problems?

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! … Continue reading this entry