How are documents submitted as part of an applicant’s reply to an Office action handled?
Documents submitted as part of an applicant’s reply to an Office action are handled differently from regular Information Disclosure Statements: They do not need to comply with 37 CFR 1.97 and 37 CFR 1.98 to be considered The examiner will consider the portion of the document relied upon as rebuttal evidence The entire document may…
Read MoreWhat are the requirements for an IDS filed within three months of the application filing date?
An Information Disclosure Statement (IDS) filed within three months of the application filing date or before the mailing of a first Office action on the merits, whichever is later, has the following requirements: No fee is required No statement under 37 CFR 1.97(e) is needed Must comply with the content requirements of 37 CFR 1.98…
Read MoreWhat are the requirements for submitting an IDS electronically?
Electronic submission of an Information Disclosure Statement (IDS) is limited to specific methods and formats. The MPEP states: ‘Electronic means or medium for filing IDSs are not permitted except for: (A) IDSs electronically submitted using the USPTO patent electronic filing system (see MPEP § 609.07); or (B) copies of large tables, computer program listings, and…
Read MoreHow does an examiner handle a large number of cited references in an IDS?
How does an examiner handle a large number of cited references in an IDS? When an examiner encounters a large number of cited references in an Information Disclosure Statement (IDS), they should: Review each reference to the extent required to form an initial assessment of its relevance. Focus more attention on those references that appear…
Read MoreHow does an examiner handle noncomplying Information Disclosure Statements?
When an Information Disclosure Statement (IDS) does not comply with the requirements of 37 CFR 1.97 and 37 CFR 1.98, the examiner will handle it as follows: The IDS will be placed in the application file, but the information will not be considered. The examiner will write ‘not considered’ on the IDS where none of…
Read MoreHow should patent examiners review and consider an Information Disclosure Statement (IDS)?
Patent examiners should review and consider an Information Disclosure Statement (IDS) as follows: Check for compliance with 37 CFR 1.97 and 1.98 Consider the properly submitted information in the same manner as other documents in Office search files For e-IDS, use the e-IDS icon on the examiner’s workstation to consider cited U.S. patents and U.S.…
Read MoreHow does an examiner notify an applicant about a noncomplying IDS?
When an examiner encounters a noncomplying Information Disclosure Statement (IDS), they use specific form paragraphs to notify the applicant. The MPEP 609.05(a) states: The examiner may use form paragraph 6.49 which is reproduced below to inform applicant that the information has not been considered. The examiner will typically use form paragraph 6.49 or one of…
Read MoreWhat should an examiner do if an IDS is filed after the first Office action?
What should an examiner do if an IDS is filed after the first Office action? If an Information Disclosure Statement (IDS) is filed after the first Office action, the examiner should follow these steps: Check if the IDS complies with the requirements of 37 CFR 1.97(c) and 37 CFR 1.97(e). Ensure that the appropriate fee…
Read MoreHow should an examiner handle non-compliant IDSs?
How should an examiner handle non-compliant IDSs? When an examiner encounters a non-compliant Information Disclosure Statement (IDS), they should follow these steps: Identify the specific non-compliance issue(s). Return the IDS to the applicant or patent owner. Provide a Notice of Non-Compliant Information Disclosure Statement (PTO-1449). Explain the reason(s) for non-compliance in the notice. Do not…
Read MoreWhat is the examiner’s responsibility regarding NPL citations in an IDS?
What is the examiner’s responsibility regarding NPL citations in an IDS? Examiners have specific responsibilities when handling Non-Patent Literature (NPL) citations in an Information Disclosure Statement (IDS): The examiner should indicate that all references have been considered, except where lined through. For NPL, the examiner should ensure that bibliographic information is complete and legible. If…
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