There are other benefits for you when you submit an IDS. This can strengthen the patent application because in the patent application, you don`t spend time talking about information that you already know is already patented or that is already described somewhere. Since you won`t have patented it, you can focus on your improvements. A minimum level of public accessibility is required for documents or information on non-patent literature (NPL) to be classified as state-of-the-art [see MPEP § 2128.01]. If copies are not available, the information may not be available to the public. If copies are available, there seems to be no excuse for not getting a copy of the NPL information to be included in an IDS. The auditor must write “not considered” on an information disclosure statement if none of the listed information meets the requirements, para. B example if the format requirements of paragraph 1.98(a)(1) of 37 CFR are not met. If none of the information on a form PTO/SB/08A and 08B is taken into account, a diagonal line or “X” must also be drawn on the form and the form in the application file. The examiner informs the applicant that the information has not been taken into account and why this is done using forms 6.49 to 6.49.10.
If the incorrect citation appears as part of another article, e.B a change that can be correctly entered and taken into account, the part of the article that is suitable for testing will be taken into account. The obligation to be open only applies to relevant information that is defined as “essential to the patentability” of the invention claimed in your patent application. Think of “essential” information as something that calls into question the novelty of your claimed invention. Information can also be essential if it can make your invention obvious. This practice does not apply if a necessary part of an information disclosure report has been intentionally omitted or if the requirements have not been met based on when the return was filed pursuant to 37 CFR 1.97. The auditor will review the information contained in statements that meet both the substantive requirements of 37 CFR 1.98 and the requirements of 37 CFR 1.97 based on the timing of submission of the statement. Examination by the examiner of the information presented in an IDS means that the examiner examines the documents in the same way that other documents in the Office search files are taken into account by the examiner when performing a prior art search in an appropriate search field. The examiner`s initials placed next to the citations on PTO/SB/08A and 08B or an equivalent amount mean that the information has been taken into account by the examiner to the extent indicated above. In order to ensure that these types of applications take into account information previously submitted in a main application but not considered, the applicant must resubmit the information in the follow-up in accordance with 37 CFR 1.97 and 37 CFR 1.98. Pursuant to paragraph 1.98(d) of 37 CFR, it is not necessary to re-file copies of patents, publications, pending U.S.
applications or other information filed in the parent application if the IDS filed in the main application complies with paragraphs 1.98(a) to (c) of the REGULATIONS. The list of references in the PCT International Search Report is not considered a Declaration of Disclosure of Information (IDS), which corresponds to 37 CFR 1.98. 37 CFR 1.98(a)(2) requires a legible copy of: (1) any foreign patent; (2) any publication or the part that led to its registration; (3) for each U.S. progress cited. the application, the specification of the application, including the claims, and any drawing of the application or part of the application that led to its registration, including any claim directed to that part, unless the cited pending U.S. application is stored in the Image File Wrapper (IFW) system; and (4) any other information or the part that led to its registration. In addition, each SDI must contain a list of all patents, publications, applications or other information submitted to the Office for examination (see 37 CFR 1.98(a)(1) and (b)), and MPEP § 609.04(a), Subsection I. states: “The List. must be submitted on a separate document. Therefore, the references cited in the international search report were not taken into account. The applicant is advised that the date of submission of any missing information or item is the date of submission to determine compliance with the requirements based on the time of submission of the SDI, including any “declaration” requirements in paragraph 37 CFR 1.97(e).
See MPEP § 609.05(a). The primary purpose of an invention disclosure form is to provide sufficient information so that (1) business people or other decision-makers can assess whether the invention in question is well-founded, and (2) patent attorneys can draft a robust patent application for the invention. Information filed in an IDS typically includes other granted patents, published patent applications, scientific journal articles, books, journal articles, or any other published material relevant to the invention disclosed in the applicant`s own patent application, regardless of the country or language in which the published material was produced. The information provided with a declaration under 37 CFR 1.97(e) may be used in a new ground for rejection, and the Next Action of the Agency may be rendered final if the new ground for refusal was required by the amendment of the application by the applicant. If the information is filed during this period with a fee in accordance with paragraph 1.17(p) of 37 CFR, the examiner may use the information provided and make the next application of the Office final, whether or not the claims have been amended, unless the examiner provides another new ground for rejection that was not required by the amendment of the claims. See MPEP § 706.07(a). The essential information could be almost anything: it could include U.S. patents and U.S. patent applications. Essential information for your patent application can be foreign patents and foreign patent applications. Examiners can copy and paste publication numbers of U.S. patents and U.S.
patent applications from e-IDS to EAST and/or WEST. Examiners must copy and paste the publication numbers of U.S. patents and U.S. patent applications from e-IDS to EAST and/or WEST to verify the references listed in the e-IDS. Suppose you have two pending U.S. patent applications that are related to each other (for example. B two design patent applications from the same inventors/applicants with similar designs). If an Office share is issued in a first application based on prior art, you will likely need to file a cross-citation IDS in the second associated application. The objective is to take the references discovered in one case to the prior art and to take them into account in all other related cases.
For the information to be considered by the Office when filing a patent application pending, an information disclosure statement must (1) meet the substantive requirements of 37 CFR 1.98, (2) be filed in accordance with the procedural requirements of 37 CFR 1.97, and (3) be signed in accordance with 37 CFR 1.33(b) (e.B a separate signed page that references and accompanies the IDS. . . .