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IP Alerts
Client Alert — USPTO New Proposed Information Disclosure Statement Framework
November 23, 2015

By: Douglas J. Bucklin, Esquire
Danielle N. Gross, Ph.D.

The USPTO proposed several patent fee changes, which include proposed changes to not only Information Disclosure Statement (IDS) fees, but also the entire IDS framework. Essentially the requirements for certification statements would be eliminated, and replaced with increased IDS fees. Notably, an IDS could be filed at any time up to grant, even after payment of the issue fee. A comparison of the current versus proposed changes is represented below.

Time Period

Current

Proposed

After first Office Action on the merits, but before final Office Action or a Notice of Allowance

$180 OR

Certification

$300

(Certification not permitted)

After a final Office Action or a Notice of Allowance, but before payment of Issue Fee

$180 AND

Certification*
(Potential filing fee for RCE or Continuation)

$600

(Certification not permitted)

After payment of Issue Fee, but before Grant

IDS not considered

-Petition Fee for Petition to withdraw from issue and filing fee for RCE or Continuation, or QPIDS**

IDS considered

-$600 + Petition Fee for Petition to withdraw from issue

*If certification could not be made because the reference in a corresponding case was cited more than 90 days from disclosure in an IDS, a RCE or Continuation had to filed in order to have the IDS considered; **QPIDS (Quick Path IDS) Pilot Program allows for an IDS to be considered following a Petition to Withdraw without the need to reopen prosecution.

Elimination of the requirement for a certification statement is expected to decrease the number of RCE filings. However, this would not eliminate the need to reopen prosecution should a newly cited reference be considered prior art by the Examiner. In an effort to further discourage RCE filings, the proposed changes also include a fee increase for filing an RCE from $1200 to $1500.

On the up side, references could be cited after a notice of allowance, and even after payment of the issue fee, without an RCE. On the down side, costs for an Applicant may increase. This is in large part the result of the escalating proposed fee structure, which could become nettlesome when corresponding foreign applications are being pursued. The additional references generated during the pendency of an Application could result in overall higher costs for complying with the duty of disclosure than under the current system, especially when the timing of the IDS is not in the Applicant’s control.

A more cost effective and time efficient way of citing references for consideration in an IDS would be to allow Examiners the ability to consider references already cited in corresponding applications that are already part of the record in the Global Dossier of related IP5 applications. Examiners have access to the dossier information, yet Applicants are still required to submit these very same references for consideration in an IDS. A still more effective way to reduce RCE or staggered IDS filings would be to abolish the duty to disclose. Such a step would recognize that Examiners are no longer limited to card catalogs and search shoes, and can access information efficiently by modern search methods.

On November 19th, 2015, the USPTO held public hearings at its headquarters in Alexandria, VA. Its comments are not yet posted; however, they will be accepting written comments until November 25, 2015. The target date for implementing the new fees, including the new IDS framework, is before January 2017.

Please contact Doug Bucklin (at 215-568-6400 or by email at dbucklin@vklaw.com)  if you have questions regarding the USPTO new proposed information disclosure statement framework.

 

About Volpe and Koenig, P.C. — Volpe and Koenig, P.C. provides worldwide client counseling on patents, trademarks, copyrights, trade secrets, technology transfers, due diligence, licensing and enforcement of intellectual property rights. The Firm’s attorneys, agents and technical advisors have expertise in a wide range of industries and serve a diverse roster of U.S. and multinational clients. For additional information, please visit www.vklaw.com.