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   IDS after allowance
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   Author  Topic: IDS after allowance  (Read 515 times)
derekyeu
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IDS after allowance
« on: Oct 11th, 2007, 6:19pm »
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Hi, I searched this forum but can't quite get the answer I want.  My client's application received an NOA.  When I checked the file history, I discovered that a reference cited by the inventor in the original invention disclosure was not cited in the specification or IDS during the prosecution.  The normal thing to do is to file and RCE + IDS to enter the reference.  But the client being knowledgeable about patent prosecution wants to just submit an IDS to save the RCE fee.  My question is whether filing an IDS alone after NOA is enough to satisfy Applicant's duty to disclose assuming the reference is material.  What if the reference is not material, but you still want to submit an IDS to cover yourself.
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Isaac
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Posts: 3472
Re: IDS after allowance
« Reply #1 on: Oct 12th, 2007, 6:19am »
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on Oct 11th, 2007, 6:19pm, derekyeu wrote:
Hi, I searched this forum but can't quite get the answer I want.  My client's application received an NOA.  When I checked the file history, I discovered that a reference cited by the inventor in the original invention disclosure was not cited in the specification or IDS during the prosecution.  The normal thing to do is to file and RCE + IDS to enter the reference.  But the client being knowledgeable about patent prosecution wants to just submit an IDS to save the RCE fee.  My question is whether filing an IDS alone after NOA is enough to satisfy Applicant's duty to disclose assuming the reference is material.  What if the reference is not material, but you still want to submit an IDS to cover yourself.

 
In this circumstance, you would need an RCE to have the reference considered in your application.   If you don't file an RCE, the reference will most likely will not be considered, but will simply be placed in the prosecution file.
 
Under the new rules going into effect on Nov. 1, an IDS is not sufficient justification for filing a second RCE for an application or application family.
 
 
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Isaac
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