Print

Please login or register.
1 Hour 1 Day 1 Week 1 Month Forever
Login with username, password and session length

[patentatt]

If you have to file an IDS after paying issue fee, are you limited to the three options in Rule 1.313 (c)(1)-(3) (certify claim is unpatentable in a petition, RCE, or abandon for continuation)?

Does it matter whether you just learned about the information?  For example, after a final rejection you can file an IDS by certifying under Rule 1.97(e) that you haven't known about it for three months?  Is there anything comparable once you pay the issue fee?  Or do you have to use the Rule 1.313(c)(1)-(3) options regardless of how and when you learned of the information?  I think the answer to the last question is yes, but I want to double check.

[klaviernista]

If you have to file an IDS after paying issue fee, are you limited to the three options in Rule 1.313 (c)(1)-(3) (certify claim is unpatentable in a petition, RCE, or abandon for continuation)?

Does it matter whether you just learned about the information?  For example, after a final rejection you can file an IDS by certifying under Rule 1.97(e) that you haven't known about it for three months?  Is there anything comparable once you pay the issue fee?  Or do you have to use the Rule 1.313(c)(1)-(3) options regardless of how and when you learned of the information?  I think the answer to the last question is yes, but I want to double check.

To my knowledge, the only way to file an IDS in that situation is to:

1.  Petition to withdraw from issue (under 1.313(c)(2)) and file an RCE

2.  File a continuation before issuance and (perhaps optionally) petition for withdrawal from issue for express abandonment (under 1.313(c)(3); or

3.  Petition for withdrawal from issue based on an unequivocal statement that one or more claims is unpatentable (under 1.313(c)(1).

See MPEP 609.04(b) for the gory details.

There is nothing equivalent to the 3 month certification that allows you to get an IDS considered in the after final period.

[bleedingpen]

Some practitioners will file an IDS after paying the issue fee without any certification statement.  The USPTO will then send a notice of non-compliance but will also put the IDS in the file but not considered. 

[khazzah]

Some practitioners will file an IDS after paying the issue fee without any certification statement.  The USPTO will then send a notice of non-compliance but will also put the IDS in the file but not considered. 

Right, an IDS under 1.97(i). I remember us talking about that here:

http://www.intelproplaw.com/ip_forum/index.php/topic,17183.msg86139.html#msg86139

[klaviernista]

Some practitioners will file an IDS after paying the issue fee without any certification statement.  The USPTO will then send a notice of non-compliance but will also put the IDS in the file but not considered. 

FWIW, I am not a fan of this approach.  Skirts the inequitable conduct issue too closely, IMO.  Recognzing that others disagree with me, and not wanting to get into an argument about procedure here, I won't comment further on the 1.97(i) approach.

[patentatt]

Some practitioners will file an IDS after paying the issue fee without any certification statement.  The USPTO will then send a notice of non-compliance but will also put the IDS in the file but not considered. 

FWIW, I am not a fan of this approach.  Skirts the inequitable conduct issue too closely, IMO.  Recognzing that others disagree with me, and not wanting to get into an argument about procedure here, I won't comment further on the 1.97(i) approach.

I still disagree with JimIvey on that one.

On the other hand, the PTO *should* create a mechanism to expressly let you submit information, at no cost, for the examiner to consider at his leisure, if you have no duty to disclose the information.

[JimIvey]

FWIW, I am not a fan of this approach.  Skirts the inequitable conduct issue too closely, IMO.  Recognzing that others disagree with me, and not wanting to get into an argument about procedure here, I won't comment further on the 1.97(i) approach.

I still disagree with JimIvey on that one.

Yeah, yeah, I know.  Just for the record, I don't use that approach for information I believe to be material; I only use it for information that's immaterial but marginally relevant -- like cumulative references cited in a co-pending application.

Just having read a post on re-exam, it occurred to me that you could follow the 1.97(i) IDS with a request for re-exam based on the same reference(s) and arguing no SNQ.

First, the re-exam request will put on record exactly why you think the information cited in the 1.97(i) IDS is not material -- bolstering a showing that there was no intent to deceive.

Second, while re-exam cannot be used to cure inequitable conduct, a good-faith attempt to get information in front of an examiner with authority to reject claims in view of the information (including through re-exam and re-issue) typically results in a court finding of no intent to deceive by delay in citing the information.

Getting your client enforceable rights, even with the possibility of having to defend against a losing charge of inequitable conduct, if better than perpetually deferring enforceable rights.  In fact, I think you have to ask yourself about whom you're serving by repeatedly withdrawing a case from issue to cite marginally relevant information -- your client or yourself.

Regards.

[bleedingpen]

FWIW Jim Ivey isn't the only practitioner doing this.  I have seen it done by others.