What is the extent of an examiner’s consideration of IDS documents?
An examiner’s consideration of documents listed in an Information Disclosure Statement (IDS) is as follows:
- Documents are considered in the same manner as other documents in Office search files.
- The examiner conducts a proper field of search.
- For non-English language documents, consideration is limited to what can be understood from the concise statement and any drawings or chemical formulas.
The MPEP states: Consideration by the examiner of the information submitted in an IDS means that the examiner will consider the documents in the same manner as other documents in Office search files are considered by the examiner while conducting a search of the prior art in a proper field of search.
(MPEP 609.05(b))
Regarding non-English documents, the Federal Circuit has noted: [A]s MPEP Section 609C(2) reveals, the examiner’s understanding of a foreign reference is generally limited to that which he or she can glean from the applicant’s concise statement…Consequently, while the examiner’s initials require that we presume that he or she considered the [foreign] reference, this presumption extends only to the examiner’s consideration of the brief translated portion and the concise statement.
(Semiconductor Energy Laboratory Co. v. Samsung Electronics Co., 204 F.3d 1368, 1377-78, 54 USPQ2d 1001, 1008 (Fed. Cir. 2000))
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