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November 30, 2020

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USPTO Proposes New IDS Framework

Tucked into the USPTO’s proposed patent fee changes is a proposal to change the Information Disclosure Statement (IDS) framework. While applicants may welcome the simplified procedures for obtaining consideration of an IDS, they may have to adjust their patent budgets to account for new IDS fees, especially if they pursue corresponding foreign applications that might generate additional references to be submitted. 

The Proposed IDS Framework

It appears that the USPTO is considering completely overhauling the current rules which require (i) a certification or fee to obtain consideration of an IDS after a first Office Action on the merits, (ii) a certification and fee or RCE to obtain consideration of an IDS after a final Office Action, and (iii) a certification, fee and QPIDS request or RCE to obtain consideration of an IDS after a Notice of Allowance. The proposal will eliminate the significance of receiving a final Office Action, no longer require (or permit) certifications, and eliminate the QPIDS program.

Instead, the new framework will provide for consideration of an IDS submitted after a first Office Action on the merits and until the Issue Fee is paid with payment of an escalating fee:

Time Period

Fee (Large/Small/Micro Entity)

Up to 3 months from filing date or
until first Office Action on the merits

No fee

After first Office Action on the merits but Before Notice of Allowance

$300/150/75

After Notice of Allowance but
Before Issue Fee Payment

$600/300/150

After Issue Fee Payment but
Before Grant

$600/300/150 +
petition to withdraw from issue
and petition fee

The most detailed information on the proposed changes to the IDS framework are found in the USPTO’s “Detailed Appendix” prepared for the Patent Public Advisory Committee (PPAC), which you can download from the USPTO Fee Setting and Adjusting page.

On the one hand, I think the proposed framework would simplify the IDS process and eliminate the need for the some RCEs. On the other hand, by abolishing the certification process for IDSs submitting items cited in a corresponding foreign application, the USPTO increases the costs of complying with the duty of disclosure when the timing of the IDS is not in the applicant’s control. This is particularly frustrating when the USPTO does not require examiners to use tools that provide free, easy, and immediate access to references cited in corresponding IP5 applications (such as the new Global Dossier), but instead requires applicants to submit the references in IDSs.

Public Comment Period

As noted in my article on the proposed patent prosecution fee changes and reflected in the USPTO’s October 20, 2015 Federal Register Notice, the proposed changes are at a preliminary stage. The USPTO is holding a public hearing at its Alexandria, Virginia campus on November 19, 2015, and accepting written comments until November 25, 2015. Those comments will inform a formal rulemaking process that the USPTO hopes to initiate in early 2016, to meet its goal of implementing the new fees (and new IDS framework) before January 20, 2017.

© 2020 Foley & Lardner LLPNational Law Review, Volume V, Number 316
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About this Author

Courtenay C. Brinckerhoff, intellectual property  law attorney, Foley & Lardner  Law Firm
Partner

Courtenay Brinckerhoff is a partner and intellectual property lawyer with Foley & Lardner LLP. Ms. Brinckerhoff’s practice focuses on client counseling in all aspects of obtaining, licensing and enforcing patents and conducting freedom-to-operate and due diligence investigations. She is chair of the firm’s IP Law and Practice committee, immediate past vice chair of the firm’s Chemical, Biotechnology & Pharmaceutical Practice and a member of the firm's Patent Trials group, Appellate Practice and Life Sciences Industry Team. She also is involved with Foley’s...

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