Common IDS Errors

Some of our competitors informed us they read our blog.  (Thank you for your support!)  We know they like our discussions of Information Disclosure Statement (IDS) practice.  So, let’s discuss some common IDS errors committed by US practitioners.

First, some practitioners shy away from citing foreign Office Actions on an IDS, when certifying the IDS under 37 CFR 1.97(e)(1).  Recall that the certification states, “each item of information . . . was first cited in any communication from a foreign patent office.” 37 CFR 1.97(e)(1) (emphasis supplied).  From the viewpoint of these practitioners, the foreign Office Action is itself the communication from the foreign patent office.  Therefore, the foreign Office Action cannot be “cited in” such a communication.  Thankfully, the MPEP settles this issue by stating the certification also applies to the Office Action itself.  MPEP 609.04(b) V.  In other words, it is possible to certify foreign Office Actions under 37 CFR 1.97(e)(1).

Second, practitioners sometimes make this certification for references cited in an International Search Report (ISR) of an international application.  Counterintuitively, MPEP 609.04(b) V states, “an international application filed under the Patent Cooperation Treaty, which designates the U.S., is not a counterpart foreign application for purposes of making the statement set forth in 37 CFR 1.97(e).”  MPEP 609.04(b) V (emphasis supplied).  Thus, the MPEP suggests considering a certification under 37 CFR 1.97(e)(2).  Id.

Further, practitioners sometimes improperly certify references under 37 CFR 1.97(e)(2), as well.  (This situation is not limited to ISRs.)  Specifically, that certification asserts, in part, “no item of information contained in the information disclosure statement was known to any individual designated in § 1.56(c).”  37 CFR 1.97.  Because inventors are designated individuals, practitioners cannot properly certify references of which the inventor(s) of the subject application knew.  37 CFR 1.56.  For example, if an inventor of the subject application was a co-inventor on a patent, then that patent typically cannot be certified under 37 CFR 1.97(e)(2) properly.

IDS practice is complicated and risky.  If Modal PLLC can assist you with IDS practice, please contact us at any time.

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