What is the examiner’s responsibility regarding non-compliant IDSs?
What is the examiner’s responsibility regarding non-compliant IDSs? When an examiner encounters a non-compliant Information Disclosure Statement (IDS), they have specific responsibilities: The examiner must inform the applicant of the non-compliance in the next Office action. The examiner should clearly indicate which requirements have not been met. The non-compliant IDS will be placed in the…
Read MoreIs filing an Information Disclosure Statement considered an admission of prior art search?
No, filing an Information Disclosure Statement (IDS) is not considered an admission that a prior art search has been conducted. The MPEP clearly states: The filing of an information disclosure statement shall not be construed as a representation that a search has been made. 37 CFR 1.97(g). Furthermore, the MPEP emphasizes that There is no…
Read MoreHow should foreign language documents be handled in an Information Disclosure Statement?
For foreign language documents cited in an Information Disclosure Statement: A concise explanation of relevance must be provided for non-English documents If a complete English translation is submitted, no concise explanation is required An English language abstract may satisfy the concise explanation requirement A copy of a search report from a foreign patent office citing…
Read MoreHow does the examiner handle foreign language documents in an IDS?
When dealing with foreign language documents in an Information Disclosure Statement (IDS), the examiner follows specific guidelines as outlined in MPEP 609.05(b): Foreign language documents cited on an information disclosure statement will be considered in view of the concise explanation submitted and insofar as it is understood on its face, e.g., drawings, chemical formulas, in…
Read MoreWhat happens if an item in an IDS fails to comply with regulations?
If an item in an Information Disclosure Statement (IDS) fails to comply with the requirements of 37 CFR 1.97 and 37 CFR 1.98, the following actions are taken: A line is drawn through the citation to show it has not been considered. Other compliant items in the IDS are still considered and initialed by the…
Read MoreHow are non-English language documents in an Information Disclosure Statement handled?
Non-English language documents submitted in an Information Disclosure Statement (IDS) are handled as follows: They are considered in view of the concise explanation submitted They are understood to the extent possible based on drawings, chemical formulas, etc. Examiners are not required to have the documents translated Examiners indicate consideration in the same manner as English…
Read MoreHow does an examiner indicate that they have considered an information disclosure statement (IDS)?
An examiner can indicate consideration of an IDS in two ways: By placing their initials adjacent to the citations on the PTO/SB/08 form or its equivalent. Using an alternative electronic signature method where: Each page of reference citations is stamped with “All references considered except where lined through” along with the examiner’s electronic initials. The…
Read MoreHow do I cite a foreign patent document in an Information Disclosure Statement (IDS)?
How do I cite a foreign patent document in an Information Disclosure Statement (IDS)? When citing a foreign patent document in an Information Disclosure Statement (IDS), you need to provide specific information as outlined in MPEP 609. The citation should include: The country or patent office that issued the document The document number The kind…
Read MoreWhat is a statement under 37 CFR 1.97(e) and when is it required?
A statement under 37 CFR 1.97(e) is a declaration that either: Each item of information in the IDS was first cited in a foreign patent office communication no more than 3 months prior to the IDS filing, or No item in the IDS was cited by a foreign patent office, and no item was known…
Read MoreHow should U.S. patents and patent application publications be listed in an IDS?
U.S. patents and U.S. patent application publications must be listed separately from other documents in an Information Disclosure Statement (IDS). This requirement is specified in 37 CFR 1.98(a)(1). The MPEP states: ‘37 CFR 1.98(a)(1) specifically requires that U.S. patents and U.S. patent application publications be listed separately from the citations of other documents. The separation…
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