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July 10, 2006

IDS Revision

The patent office, singing the John Doll theme song to applicants of "do some work for us," is proposing changes to information disclosure statement (IDS) requirements, according the Monday's Federal Register.

Oddly, the agency didn't release a web page yet on the proposed changes, which focus on nominally limiting the number of pre-examination prior art references to 20, with some exceptions, and explaining long English-language documents (over 20 pages) or any foreign language references. IDS submission after an office action would be disallowed unless "additional disclosure requirements have been met." In return, the office is recommending eliminating fees for submitting an IDS.

There is currently a production-line mentality oftentimes counter-productive to improving patent quality, geared towards expediting the examination process, though of course stated with lip service to the quality aspect. The patent office as fountain of junk continues, only it's hoping to spew junk patents faster.

Posted by Patent Hawk at July 10, 2006 6:17 PM | Prosecution


As an examiner who recently received an IDS with 400 references, I say "It's about time!"

Posted by: M at July 10, 2006 10:25 PM

Examiner M makes a good point about applicant snow-jobs with cited art overkill.

It doesn't strike me as insensible to require applicants to explain the relevant features & passages of a cited reference, and how the claims overcome cited art; something less than the "make special" regime, but substantive commentary, putting the prosecutor on record, as well as expediting examination. That way, the threat of inequitable conduct would weigh in. I consider that better than arbitrarily limiting the number of cited references.

To me, any reasonable steps to ensure quality patent grants are welcome.

Posted by: Patent Hawk at July 10, 2006 10:54 PM

I am a former Primary Examiner and an attorney. I have go back and forth with this issue, but ulimately, I do not see how Examiners will derive much benefit from these proposed requirements. Requiring the applicant to provide a statement of relevance may have been useful years ago, but with the current search technology, I don't see how it will help very much with examination. If an Examiner receives a 500 patent IDS, for example, it is easy enough to copy those patent numbers into the EAST search system and perform a text or image search. If an applicant submits a large amount of non-patent literature, than some description of the relvance may be useful. However, this does raise a concern. In my experience, an Examiner takes a broader view of what is relevant than does the applicant.

When an applicant is determining what prior art is material, they are usually looking at the prior art in light of their invention, not necessarily what they have claimed. That is, an Examiner may find a piece of prior art material in rejecting a claim, whereas the applicant may not believe the prior art to be very relevant to the invention. Therefore, the applicant's view of what is material about a piece of prior art may be very different than what an Examiner would find relevant. It concerns me that Examiners may rely soley upon the applicant's statements, to determine what is material, rather than reading the prior art for themselves. In doing so, Examiners may pass up even more relvant prior art than they do at present.

Posted by: Mike Brooke at July 18, 2006 12:32 PM