In an attempt to make the late submission of IDSes less costly, the Patent Office is instituting a pilot program to extend the ability to submit an Information Disclosure Statement under 37 C.F.R. 1.97(d) to after the payment of the issue fee. The pilot program starts on Wednesday, March 16, 2012, and is slated to end September 30, 2012. However, the process is somewhat complex, and unlikely to be much used.
The Patent Office issued a Press Release, and published the Federal Register Notice that includes all the rules.
Submission of such an IDS will require:
1. New transmittal form PTO/SB/09 which will be made available as a PTO form. (currently not there, I will update the link when it is added)
2. IDS including IDS submission fee ($180)
3. Declaration under 1.97(e)(1) or (2) that:
- That each item of information contained in the information disclosure statement was first cited in any communication from a foreign patent office in a counterpart foreign application not more than three months prior to the filing of the information disclosure statement; or
- That no item of information contained in the information disclosure statement was cited in a communication from a foreign patent office in a counterpart foreign application, and, to the knowledge of the person signing the certification after making reasonable inquiry, no item of information contained in the information disclosure statement was known to any individual designated in § 1.56(c) more than three months prior to the filing of the information disclosure statement.
4. A Petition to Withdraw from issue after payment of issue under 37 CFR 1.313(c)(2), including fee ($130)
5. A Request for Continued Examination (RCE) form, including fee ($930/$465)
The Examiner will, upon review of the IDS, determine whether prosecution needs to be reopened. If so, the RCE will be entered, and prosecution will be reopened. However, the IDS fee will not be refunded.
If the Examiner determines that the IDS does not raise new issues, the Examiner will issue a Corrected Notice of Allowability, indicating that the IDS has been considered. The RCE fee will be refunded. There will be no need to respond to the corrected Notice of Allowability, the case will automatically progress to issue.
So the new policy effectively requires exactly the same process as you would use now, upon receiving a late reference, except that the Patent Office will treat the RCE request as conditional, and will refund the RCE fee if they determine that the references do not raise new issues.
As a general policy, we do not recommend the use of declarations under 1.97(e)(2) because it requires “reasonable inquiry” that no one associated with the case was aware of any of the references. There is a real risk that someone, maybe an inventor who is no longer with the assignee, was aware of a reference. However, a declaration under 1.97(e)(1) only requires is a reference from a foreign patent office in a computerpart foreign application. Unfortunately, that does not include related patent applications, whether U.S. or foreign, only references from foreign counterpart applications.
There are two potential advantages to this procedure. First, there is the savings of the RCE fee, a savings of between $750 and $285, since the IDS fee is now required). Second, any such submission will be placed on the examiner’s “expedited” stack. Currently the wait for RCE responses has been increasing drastically, due to the pressure on Examiners to reduce wait time for the first office action. Thus, being on the expedited stack may be a significant time advantage. Despite these advantages I don’t think this procedure will significantly change existing practice, or help with the excessive RCEs.