How 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 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 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 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 consideration of an Information Disclosure Statement?
When an examiner considers an Information Disclosure Statement (IDS), they indicate their consideration in specific ways: Traditionally, the examiner places their initials adjacent to the citations on the PTO/SB/08 form or its equivalent. An alternative electronic signature method may also be used, where: Examiners no longer initial each reference citation considered. Citations not considered are…
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…
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