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[lacerda70]

Is there any way to get the PTO to consider references after you've paid the issue fee?

I suspect not.  According to CFR 1.97, once the issue fee is paid, the PTO won't consider references on an IDS.  So, it seems that reexamination is the only way to get references considered after the issue fee is paid.

Thanks in advance.

[DogDayPM 9er9er9er]

Is there any way to get the PTO to consider references after you've paid the issue fee?

I suspect not.  According to CFR 1.97, once the issue fee is paid, the PTO won't consider references on an IDS.  So, it seems that reexamination is the only way to get references considered after the issue fee is paid.

Thanks in advance.

After issue fee paid but before actual issue, you petition to have it withdrawn from issue (pay fee), and at same time file RCE and IDS and appropriate fees.

Edit: Here's the MPEP section http://www.uspto.gov/web/offices/pac/mpep/documents/1300_1308.htm#sect1308, the bold part is what gets you in the door.

1308 Withdrawal From Issue [R-5]

37 CFR 1.313 Withdrawal from issue.

(a) Applications may be withdrawn from issue for further action at the initiative of the Office or upon petition by the applicant. To request that the Office withdraw an application from issue, applicant must file a petition under this section including the fee set forth in § 1.17(h) and a showing of good and sufficient reasons why withdrawal of the application from issue is necessary. A petition under this section is not required if a request for continued examination under § 1.114 is filed prior to payment of the issue fee. If the Office withdraws the application from issue, the Office will issue a new notice of allowance if the Office again allows the application.

(b) Once the issue fee has been paid, the Office will not withdraw the application from issue at its own initiative for any reason except:

(1) A mistake on the part of the Office;

(2) A violation of § 1.56 or illegality in the application;

(3) Unpatentability of one or more claims; or

(4) For interference.

(c) Once the issue fee has been paid, the application will not be withdrawn from issue upon petition by the applicant for any reason except:

(1) Unpatentability of one of more claims, which petition must be accompanied by an unequivocal statement that one or more claims are unpatentable, an amendment to such claim or claims, and an explanation as to how the amendment causes such claim or claims to be patentable;

(2) Consideration of a request for continued examination in compliance with § 1.114; or

(3) Express abandonment of the application. Such express abandonment may be in favor of a continuing application.

(d) A petition under this section will not be effective to withdraw the application from issue unless it is actually received and granted by the appropriate officials before the date of issue. Withdrawal of an application from issue after payment of the issue fee may not be effective to avoid publication of application information.



That puts it back into prosecution without needing the re-ex.

[lacerda70]

Excellent - thanks very much. 

[DogDayPM 9er9er9er]

Excellent - thanks very much. 

Hey, just slip a few unmarked 20's in a blank envelope under my door on the way out.   

[JimIvey]

Do you really want the Office to consider the art, or are you just trying to comply with Rule 56?

If the latter, I think it's legit to file the IDS under 37 CFR 1.97(i) (art placed in the file but not considered) so long as you can include the statement under Rule 97(e).  Otherwise, cases would never issue as every bit of new art requires the applicant to withdraw the case from issue.

I think putting art that might be material in the file is enough -- it provides the art to anyone who might want to challenge the patent later and so isn't "hiding the ball".

On the other hand, I acknowledge that there are times in which you really want the art considered.  In that case, I think I agree -- withdrawing the case from issue is the only way (or allowing the case to issue then file a request for re-examination).

Regards.

[Bill Richards]

I have taken the approach Jim suggests.

[evolution]

Do you really want the Office to consider the art, or are you just trying to comply with Rule 56?

If the latter, I think it's legit to file the IDS under 37 CFR 1.97(i) (art placed in the file but not considered) so long as you can include the statement under Rule 97(e).  Otherwise, cases would never issue as every bit of new art requires the applicant to withdraw the case from issue.

I think putting art that might be material in the file is enough -- it provides the art to anyone who might want to challenge the patent later and so isn't "hiding the ball".

On the other hand, I acknowledge that there are times in which you really want the art considered.  In that case, I think I agree -- withdrawing the case from issue is the only way (or allowing the case to issue then file a request for re-examination).

Regards.

Jim (or anyone else), do you think this advice is adequate for complying with rule 56 in the following hypothetical situation?

After paying the issue fee, but before issuance, you realize that an "x" reference in an IDS was not cited in the corresponding allowed US case.

In this situation, you cannot include the 97(e) statement / certification.

[klaviernista]

Jim (or anyone else), do you think this advice is adequate for complying with rule 56 in the following hypothetical situation?
After paying the issue fee, but before issuance, you realize that an "x" reference in an IDS was not cited in the corresponding allowed US case.
In this situation, you cannot include the 97(e) statement / certification.

Jim and I have somewhat differing viewpoints on what is necessary to comply with the rule 56 duty of disclosure.  As I have posted before on this board, it is my view that the Mckesson and Dayco decisions clearly require the citation of art and other material information (US office actions, notices of allowance, etc.) identified in a family related application in any pending U.S. application.  And by citation, I mean submission in an information disclosure statement in such a way that the examiner is obligated to consider the information submitted.  In after final practice, this means filing an RCE with the IDS as a submission under 1.114.

Of course, the above is only my opinion.  Reasonable minds can differ. 

A similar issue was debated on this board in the following thread: http://www.intelproplaw.com/ip_forum/index.php/topic,14245.0.html

Here is a link to the text of Mckesson:  http://www.wilmerhale.com/files/upload/mckesson.pdf

[evolution]

Thanks klav, I certainly see your point.



Jim, do you happen to remember which case you were referring to in the below post, or what circuit it was in?

I've read at least one case (years ago) when something like that happened and it was determined that, if the practitioner really did want to deceive the PTO, he wouldn't have cited the reference in the continuation.  So, the late IDS was considered probative with respect to the absence of an intent to deceive in the parent.

http://www.intelproplaw.com/ip_forum/index.php/topic,14421.0.html

[JimIvey]

No, I don't remember the case.  I gave an MCLE presentation back in the early 1990s about the possibility of curing inequitable conduct, and my cases were all from that time -- well before the opinion Klav cited.

Second, it's important to remember that intent to deceive is a factual inquiry.  Klav's cited case is not contrary, from my very cursory reading of it.

Third, I think you're asking for problems if you can include the 1.97(e) statement.  That statement goes a long way to indicate that you're only using 1.97(i) because it's unfair to never allow a case to issue if new art keeps coming up.  If you can't make the 1.97(e) statement, I'd recommend an RCE to get the art in front of the examiner.

In short, a statement under 1.97(e) goes a long way to suggesting that you're not hiding anything whereas its absence is ... well, not helpful.

In the case Klav cited, the court noted that 22 months had passed from the applicant becoming aware of the reference to its being acknowledged by the applicant (in the related application).

It's all a factual inquiry.  A statement under 1.97(e) helps.  Nothing is a panacea.

Regards.