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[fb]

The search company I hired found no relevant prior art, and neither did the search I did myself, although my results were closer because of knowing more about the invention. The drafting attorney said to send them the results, but why should I if nothing correlates closely to the invention? Seems like it would just eat up hours.

[JimIvey]

If there is something in those references that happens to be relevant, even in a minor way buried in some footnote somewhere, and even if not relevant now but becomes relevant as claims get amended during prosecution, it could be really bad for everyone involved.

Give the attorney the references.  The attorney probably won't want to read them but rather just to cite them to the Patent Office, as the law requires (if they happen to be relevant).

The IDS (Information Disclosure Statement) shouldn't take much time.  If you like, you can ask the attorney what the attorney intends to do with the references and how much it should cost you.  The minimum is to just cite them in an IDS and it shouldn't take a full hour, depending on how many references and how many applications you have with the attorney.  If you have not yet received an office action or received the search results within 3 months of filing the IDS, there should be no fees required by the Patent Office.

Regards.

[fb]

Happy to do that, but doesn't that give the examiner more to construct obviousness?

[JimIvey]

Happy to do that, but doesn't that give the examiner more to construct obviousness?

Maybe.  But not citing the references is not an option under US patent law.

Regards.

[khazzah]

Happy to do that, but doesn't that give the examiner more to construct obviousness?

Maybe.  But not citing the references is not an option under US patent law.

Indeed. If the reference *material to patentability*, the Rule 56 Duty of Disclosure *requires* that you disclose it. If doing so results in the Examiner making rejections that wouldn't otherwise have been made, that's just the way it is.

If the reference is not material, there is no requirement -- though many practitioners choose to cite anyway, for the reasons you explained.

[fb]

But none of the reference enable the current invention. A wheel from one, a seat from another, and an engine from another. If the invention is a car, do these really need to be disclosed?

[JimIvey]

But none of the reference enable the current invention. A wheel from one, a seat from another, and an engine from another. If the invention is a car, do these really need to be disclosed?

Yes.

[khazzah]

But none of the reference enable the current invention. A wheel from one, a seat from another, and an engine from another. If the invention is a car, do these really need to be disclosed?

They may well be material to patentability. If they're material and not cumulative, then Rule 56 requires you disclose them.

First of all, reasonable minds can differ as to whether or not an anticipatory reference is enabled. If so, that reference can still be material to patentability, even if *you* don't think it's enabling. [And note that the standard for enabling a reference under 102/103 is slightly different than the standard for enabling your own claims.]

Second, it's irrelevant that a single reference doesn't anticipate because it's not enabling -- the Examiner can still make a valid obviousness rejection long as the combination of references produces the claimed invention.  That means the references may still be material.
Furthermore, obviousness in the post-KSR world doesn't always require that the references teach every feature, since the missing feature may in some cases be filled in by common sense or the like.
 

[fb]

I see. Well, since I spent over a hundred hours searching every possible variation, and read over a hundred patents and apps, and viewed over a thousand diagrams, I did not want to supply too much.

[JimIvey]

I see. Well, since I spent over a hundred hours searching every possible variation, and read over a hundred patents and apps, and viewed over a thousand diagrams, I did not want to supply too much.

In that case, preparing and filing the IDS might take more than a full hour, despite what I said above.

If you really believe some are less relevant than others and/or that some are "cumulative" (the part that may be relevant to your case is no more than said by another cited reference), you can leave those out.  However, you'd risk losing all your rights if you turn out to be wrong about the omitted references.

It sounds like you might have more time than money, so you might consider preparing your own IDS for review and filing by your attorney.  Just download the IDS form and instructions from this page:
http://www.uspto.gov/patents/process/file/efs/guidance/Form_fillable_pdfs_available.jsp

I wouldn't worry so much about the header and footer of the IDS; that's easily filled out by your attorney.  The time-consuming part would be entering the hundreds of references.  You can probably save yourself a bunch by doing that data entry yourself.

If you're nifty with computers, you can save some time by exporting the form data and editing it (it's XML).  That way, you can copy/paste many references that share data, or import the data from some tabulated format (CSV, for example).  Then, re-import the form data, of course.

Regards.

[asdfasdf]

The website submitids.com looks like it might help. I am not associated with it in any way.  I have only used it on a trial basis a couple of times. 

[fb]

Nice options, thanks.

[blakesq]

If your invention is a car, then you are out of luck, the car has already been invented.

However, if your invention is an improvement to a car, lets say the improvement is a car engine that runs on a combination of gasoline and salt water, then it should be easy to determine what patent documents are relevant.  Patent documents that are directed to new car seats would not be relevant, patents directed to improved suspensions and shock absorbers would not be relevant, patents directed to improved shatterproof windshields would not be relevant.  ON the other hand, patents directed toward engines using saltwater would probably be relevant, or engines using a combination of gasoline and any sort of water, would also probably be relevant.  Of course, you should run all this by your patent attorney.

But none of the reference enable the current invention. A wheel from one, a seat from another, and an engine from another. If the invention is a car, do these really need to be disclosed?

[fb]

Does it hurt to list all of those non-pertinent ones?

[George White]

There have been concerns that someone loading up an IDS with very way-out things was "hiding a relevant needle in a stack of irrelevant needles". However that doesn't seem to actually come up often. What has been a "plague" until two week ago was patents being invalidated due to something being left out - even if everyone concedes it would not have made a difference if the examiner did have that information. Very,very recently the Federal Circuit reversed all that. The USPTO has announced last week that it is reevaluating rule 56. However, until the dust settles one might chose to send in a lot - but maybe not 100's.


--George