Information Disclosure Statements (IDSes) filed under 37 CFR 1.97 (c) or (d) can include a certification statement. One of these statements is “that each item of information contained in the information disclosure statement was first cited in any communication from a foreign patent office in a counterpart foreign application not more than three months prior to the filing of the statement.” 37 CFR 1.97(e). This statement is fairly complex. Let’s simplify it.
First, the statement pertains to “each item of information contained in the information disclosure statement.” That is, if the IDS includes information that cannot be certified under this first statement, the IDS must be modified prior to filing. This situation typically arises when US attorneys are asked to file IDSes from multiple sources at once, whether by coincidence, docketing convenience, or an attempt to reduce service fees. In this situation, multiple, separate IDSes sometimes must be filed, each containing a different certification statement. These separate filings must be performed, even if the IDSes are filed in the same application on the same day.
Second, the certification statement applies not to items that were simply cited, but only to those items that were first cited. For example, Reference A might be cited in an International Search Report (ISR) for a PCT application. Assume Reference A is not cited at that time. One year later, an Examiner in the national stage examination cites Reference A, such as a Chinese Office Action. Reference A cannot be certified based on its citation in the Chinese Office Action. The reason is that Reference A was not first cited by the Chinese Office Action: Reference A was first cited only in the ISR (or possibly earlier!).
Third, to simplify a little, the certification statement applies to communications from a foreign (i.e., non-US) patent office in a counterpart foreign application. Somewhat obviously, this certification statement does not apply to communications from the USPTO in the same application family or in an otherwise related filing. Less obviously, the certification statement only applies to communications in a counterpart foreign application. In other words, the certification does not apply to communications in an international application filed under the PCT, nor to a foreign application that is merely related (e.g., cross-cited or discussing similar, but not substantively identical, subject matter).
Fourth, the communication from the foreign patent office must be “not more than three months prior to the filing of the statement.” This portion can be difficult to understand. One issue is that the relevant date is based on the US attorney’s filing, not the date of the foreign communication (e.g., mail date of the Chinese Office Action).
Another issue is the US attorney is not making a certification about the citation in the foreign Office Action but whether that citation is the first citation. So, the US attorney is actually asking a complicated question, possibly about patent applications of which the US attorney has no knowledge.
For example, maybe the US attorney knows the applicant files in a limited number of jurisdictions with convenient access to electronic services (e.g., Japan, the US, and China). In this case, the US attorney conceivably could check the Japanese prosecution to determine if a Chinese citation to Reference A is its first citation.
Maybe a client does not provide such a clear indication. Thus, perhaps the client also filed an application in the Argentinian Patent and Trademark Office (selected as a major economy that has not signed the Patent Cooperation Treaty). Maybe the Argentinian Examiner also cited Reference A. Only the client (and the law firm coordinating the international filings) might know about the Argentinian application. That is, the US attorney does not know the Argentinian application exists. So, the US attorney is unable to even ask whether Reference A, cited in the Chinese prosecution, was previously cited in the Argentinian prosecution.
Further, it might not be a problem if Reference A was first cited in an Argentinian Office Action before Reference A was cited by CNIPA. Specifically, if the Argentinian Office Action was issued within three months of the filing of the IDS, the US attorney still can certify Reference A.
As a final thought, this first certification under 37 CFR 1.97(e) does not require the US attorney make an inquiry. (Compare the second certification.) However, unless the US attorney is coordinating the international filings or the US attorney otherwise has access to a database listing the international filings, the US attorney essentially must make an inquiry.