New USPTO IDS Regulations a Litigator’s Dream???????

August 9, 2007 on 6:02 pm | In Legislation/Regulation, Patent Searching, The-Practice-of-Law, USPTO |

Anyone notice that the newer 1449 “Information Disclosure Statement” form on the USPTO’s EFS Forms site has this little gem:

Hmm…they want us to state on the record why a reference is relevant (or not-relevant). Considering a little thing called “prosecution history estoppel”…I’m betting that most practitioners have been ignoring those boxes on the new forms.

Then…I see this [via 271 Patent Blog]:

Title: Changes to Information Disclosure Statement Requirements and Other Related Matters

Abstract: The U.S. Patent and Trademark Office (Office) amends its regulations on information disclosure statement (IDS) requirements and other related matters to improve the quality and efficiency of the examination process. These changes would enable the examiner to focus in on the relevant portions of submitted prior art at the very beginning of the examination process, give higher quality first actions, and minimize wasted steps. This action would make the following changes relating to submissions of IDSs by applicants: Impose a requirement for the personal review of, and to provide information about, certain citations; eliminate the fees for, but permit only timely, IDS submissions; and only permit the filing of an IDS after the mailing of a notice of allowance if a claim is admitted to be unpatentable and a narrowing amendment is also submitted. The Office would also: permit third parties to submit prior art up until the mailing of a notice of allowance after application publication; no longer permit an IDS to meet the submission requirement for a request for continued examination (RCE); permit, after payment of the issue fee, certain amendments and petitions so applicants will not have to file a continuation application or an RCE for such items; and revise the protest rule to better set forth options that applicants have for dealing with unsolicited information received from third parties. [Link] (emphasis added)

[Of course…who knows what the actual, secret rules say. Please let me know if the are actually public.]

Joy! A litigator’s dream! Think of all the “inequitable conduct” and “fraud” arguments that can be triggered by requiring the Applicant to comment on the prior art. I forsee an increase in patent attorneys advising applicants to NOT perform patent searches. Yeah, that will really improve the quality of the examination process.

The practice has changed so much in the past few years, it has become so adversarial, so much more frustrating for patent applicants and patent attorneys alike, that there are days I wonder where this is all going. Perhaps Peter is right…have the good times rolled out of here?

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