By Kevin Noonan.
The U.S. Patent and Trademark Office, having encountered open hostility to some recent proposals, is again trying to address the issues of patent pendency and quality by proposing new rules regarding Information Disclosure Statements.
An Information Disclosure Statement is a document through which an applicant can fulfill (in part) the duty of disclosure under Rule 56 of Patent Office regulations. Using an IDS, an applicant can identify and submit copies of prior art references, including U.S. patents, U.S. and foreign patent applications (including international applications) and scientific references, as well as other documents such as product manuals, advertisements, and any other printed publication. Although there are no separate requirements that an IDS must be filed, the Office does impose a fee for filing an IDS after the first action on the merits, and will not consider an IDS filed after a final rejection or notice of allowance without good cause. There is currently no limit on the number of documents that can be submitted with an IDS.
The new proposals do away with the fees associated with "late" filing of an IDS. However, the proposal will permit an applicant to submit no more than 20 references without explanation. If more than 20 documents are submitted, the applicant will be subject to "increasingly more stringent" requirements to explain the significance of the documents. These requirements will also apply to applicants who submit "very long" documents (a term that is not very precisely defined).
The latest proposals seek once again to shift the burden for examination from the Examiner to the applicant, and to require increased assertions on the record regarding patentability over the prior art. It appears that the Office has no confidence that the examining corps, properly supported in both numbers and resources, can perform its tasks properly and efficiently. In response, the Office continues to produce proposals that are inconsistent with the reality that the inequitable conduct "defense" will certainly inhibit if not preclude applicants' counsel from providing precisely the sort of information the proposal is designed to seek.
Note: Kevin Noonan is a partner at MBHB LLP in Chicago.
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