Wednesday, December 12, 2007

OMB Approves IDS Rule Changes for PTO

The OMB completed its review of the IDS Rules and published its approval on (link). From the website:

Title: Changes to Information Disclosure Statement Requirements and Other Related Matters

Abstract: The U.S. Patent and Trademark Office (Office) amends its regulations on information disclosure statement (IDS) requirements and other related matters to improve the quality and efficiency of the examination process. These changes would enable the examiner to focus in on the relevant portions of submitted prior art at the very beginning of the examination process, give higher quality first actions, and minimize wasted steps.

This action would make the following changes relating to submissions of IDS's by applicants:

  • impose a requirement for the personal review of, and to provide information about, certain citations;
  • eliminate the fees for, but permit only timely, IDS submissions; and
  • only permit the filing of an IDS after the mailing of a notice of allowance if a claim is admitted to be unpatentable and a narrowing amendment is also submitted.
The Office would also
  • permit third parties to submit prior art up until the mailing of a notice of allowance after application publication;
  • to no longer permit an IDS to meet the submission requirement for a request for continued examination (RCE);
  • to permit, after payment of the issue fee, certain amendments and petitions so applicants will not have to file a continuation application or an RCE for such items; and
  • to revise the protest rule to better set forth options that applicants have for dealing with unsolicited information received from third parties.

Despite multiple challenges (see here and here), the OMB largely ignored the evidence showing a "substantial" economic impact. Also, just as in the continuation rule changes, the rules have not been shown to the public. The rules are expected to go into effect late January.

See earlier OG Notice (July '06) on the IDS Rules (link)

- Executive Summary (link)

- Detailed Summary (link)

See PTO PPT Presentation ('06) on IDS Rule Changes (link)

- The 4 time period for submitting IDS (link)

- Application prosecution timeline (link)

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