Now that we covered how to make the Information Disclosure Statement (IDS) certification under 37 CFR 1.97(e), we can discuss how to check a certification.
To be clear, we never can be certain a certification is proper. We can only be certain the certification is improper. So, how do we determine a certification is improper?
We attempt to find foreign (i.e., non-US) citations to the certified references more than 3 months prior to the filing of the certified IDS. To do that, we review prior search reports and rejections in all foreign counterpart applications. We can use databases like Global Dossier and Espacenet to locate some of these applications and communications. We can also consider the priority claim of the application itself, if the application claims priority to another jurisdiction. In addition, we can consider filing trends of the Applicant, such as if the Applicant frequently files in a particular jurisdiction outside of the PCT, such as Argentina.
If we find the references were previously cited in a counterpart foreign prosecution more than 3 months prior to the filing of the certified IDS, the certification is improper. MPEP 609.04(b) V.
That’s all we can say with certainty.
If we do not find the references to be previously cited, then we should try to find the communication triggering the filing of the IDS. So, we attempt to find a communication in a counterpart foreign prosecution citing those references within the 3 months prior to the filing of the IDS.
Ideally, the certified IDS itself cites this foreign communication. There are multiple good reasons to cite the foreign communication. So, the IDS usually does so. However, this citation is not required. MPEP 609.04(b) V.
If we cannot find the foreign communication, Applicant’s representative might know something we do not know. For example, maybe we are unaware of a recent office communication in another jurisdiction. We cannot determine whether the certification is proper.
The same is true in reverse. For example, after reviewing the foreign applications of which we are aware, we might know a reference does not appear to be cited more than 3 months prior to the certified IDS. We also might know which foreign communication within the 3 prior months triggered the filing of the IDS. We additionally might know this communication does cite the certified references. Still, we do not know if there is an older citation to these references in some other communication more than 3 months prior to the filing of the certified IDS.
Because of this uncertainty, accused infringers often attack IDS certifications. This tactic often relates to increasing the cost and complexity of defending the patent, not solely the merits of the accusation. It costs an accused infringer very little to attack the certification. However, defending the certification costs far more in attorney time than paying the USPTO fee under 37 CFR 1.17(p).
So, an Applicant should not view the certification as a way to avoid paying the USPTO IDS fee. Rather, a sophisticated Applicant should view the USPTO IDS fee as a way to avoid the far greater liability of certifying the references.