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IDS Basics
« on: Aug 17th, 2006, 8:43am »
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What should go into the IDS?  I have a client who gave a talk and used power point slides.  Does this need to be submitted in an IDS?  And does it matter if the talk was less than a year before the filing date of the application?  (is that referred to as the critical date?) Thank you very much.
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Re: IDS Basics
« Reply #1 on: Aug 17th, 2006, 9:33am »
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Well, I think you have good reason to believe the talk is not prior art.  Under 102(b), it would have to be a year prior to filing.  Under 102(a), it would have to have been before the invention was made.  I think it's unlikely that you cna provide your own prior art under 102(a) because any disclosure you make that's enabling would be a constructive reduction to practice to pre-date (or coincide with) the disclosure.  Of course, "enablement" is evaluated a little differently for prior art vs. sufficiency under S 112, so there's a slight possibility that your own disclosure could qualify as prior art under 102(a).
Having said all that, the safest thing to do is to cite (and provide) the slides in an IDS.  An IDS doesn't make any admissions with respect to what's prior art.  If the examiner cites it, you put in your arguments (probably along the lines I laid out above) and see how it goes.  If you leave it out, you risk having to argue about it later during enforcement.
Personally, I think you're pretty safe leaving it out given what little facts we have here.
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James D. Ivey
Law Offices of James D. Ivey
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