IDS management - current thinking, if any, practitioner's duty to disclose

[Jonathan]

(Admittedly, the subject could be improved but ran out of characters..)

Subject re-stated -- I am dealing with a law firm who, in my personal opinion, is not exercising a duty of disclosure-level that I think a practitioner ought to. Specifically, if a practitioner knows of relevant references, they should be IDS'd - tell a client what you will be doing, say it is required perhaps or other explanatory text and do it or even just do it and report it out.

Even more specifically, I am having continuations being filed and I am reminded of the duty to disclose and that they (the law firm doing the continuation filing) is relying on me to supply all relevant references. In this particular example, sure it is no big deal to tell them, look at parent, IDS all those references into continuation. Then again, if they are dealing with someone less astute on these matters, I can easily see how one would not know that references from a parent ought to be IDS'd into a continuation, to ensure consideration.

IDK, it just seems a little incredulous to basically say 'we notified you that this is your responsibility' yet perhaps know of references that should be IDS'd.

Then again, perhaps my thinking is out-of-date on IDSs and thus my post today.. 

[khazzah]

I'm confused.

First, are you saying that your practice when filing continuations is to file an IDS citing refs that showed up in the parent's prosecution? And that you're telling the law firm about those refs, since the law firm told you "your responsibility to let us know about refs" ?

And further, that you read the law firms notification (to you) of the duty to disclose as trying to abdicate their own (independent) duty?

[Tobmapsatonmi]

And further, that you read the law firms notification (to you) of the duty to disclose as trying to abdicate their own (independent) duty?

I took this to be his point.  They seem to be saying it's on him but his point is they fall under rule 56 as well.

I wonder if this is happening because they know he's experienced IP counsel?  E.g., for their client companies without in-house IP counsel, do they do more hand-holding?

[Jonathan]

Sorry for not being more succinct.n Tobmapsatonmi is spot-on as to my thoughts.

I don't think they are customizing form letters just for me, aside from filling in specific application info and my name and company. 

It all is not something I plan on making waves about; though I did inquire to ask about the specific scenario of a continuation ('you need me to give you a list of cited items in the parent to IDS in a continuation?'). At least the answer they gave was that just asking them to IDS all items from the parent would suffice.

In any event, I did want to sort of touch base on this with others on this.

[Itoen]

My understanding is that filing an IDS in a continuation to cite art considered in the parent is optional.  If it were required, like with related foreign applications, I would understand the concern.

[Tobmapsatonmi]

In any event, I did want to sort of touch base on this with others on this.

Well, in my own case, my frequently used US firms have prosecuted many cases in the same art fields on my behalf.  So for cases they are currently prosecuting, they do bring to my attention art they know of that is relevant enough to cite and indicate it should be put in an IDS.

[smgsmc]

My understanding is that filing an IDS in a continuation to cite art considered in the parent is optional.  If it were required, like with related foreign applications, I would understand the concern.

From MPEP 2001.06(b):

If the application under examination is identified as a continuation, divisional, or continuation-in-part of an earlier application, the examiner will consider the prior art cited in the earlier application.See MPEP § 609. The examiner must indicate in the first Office action whether the prior art in a related earlier application has been reviewed. Accordingly, no separate citation of the same prior art need be made in the later application.


In my firm, standard practice for most cons is not to refile an IDS for the con but to have boilerplate in the transmittal letter state that all prior art cited in the parent should be considered in the con, with a specific cite to MPEP 2001.06(b), although not strictly needed according to the above.  A few of our Megacorps clients, however, have become extremely paranoid about IDSs and require us to file a new IDS with the con, citing all the prior art references cited in the parent.

[MLM]

If you want to ensure all of the art from the parent is *listed* on the continuation patent when it issues, then file an IDS.

There is a cost associated with filing an IDS i.e. attorney time. Therefore, unless a client has standing orders to always file an IDS in a continuation citing the references from the parent, it makes sense for the firm to ask the client if they want to cite anything before sending them a bill for doing it without asking first.

The question also goes to citing any other art that the firm may not be aware of at the time, and reminding the client that their duty of disclosure continues until the patent issues. There are many cases where multiple outside counsel are working on related applications and the only people who know about everything going on is the client. So if an OA appears at one firm, the client needs to tell the other firm about the art if it is relevant to another app they are handling.

[khazzah]

I don't have much to add.

Some folks I work for insist on IDS in a con citing the parent refs, believing there is value in having the art listed on the face of the parent. But yeah, every filing has some cost, even if it's invisible to the client, so my personal preference is to opt out of such a filing since the MPEP specifically provides for the opt out. 

[smgsmc]

I don't have much to add.

Some folks I work for insist on IDS in a con citing the parent refs, believing there is value in having the art listed on the face of the parent. But yeah, every filing has some cost, even if it's invisible to the client, so my personal preference is to opt out of such a filing since the MPEP specifically provides for the opt out.

The Megacorp clients who changed the requirements to filing an IDS for cons are flat rate.  Unfortunately, when the new requirements were imposed, my firm didn't squawk and renegotiate the rates.  So those filings come out of the firm's pockets (plus reducing the efficiency of the practitioner in charge).

[Jonathan]

Thanks for the replies.. I figured there are some other viewpoints that I had not realized, and there are..