Eliminate Unnecessary Cost:
1. Review the materiality to the patentability of existing claims: It is important to review the reference for materiality to the patentability of existing claims by the attorneys/applicant before the submission. Also, perform a good prior-art or pre-filing search to identify all the relevant references and cite them, which can avoid RCE fee at the notice of allowance stage.
2. File the IDS within the first three months: An IDS can be filed at no extra cost within 3 months from the filing date of a national/original application (other than a continued prosecution application) or before the receipt of the first OA. This also helps examiner to review the application in relevance to the IDS filed.
3. Check the publication/priority date of the references against the priority date of the application: In some cases, the applicant/attorneys may fail to check on the publication date of the references against the priority date of the application which leads to unnecessary attorney review time and cost. To avoid such situation, it is advised to check the publication/priority date of the reference against the earliest filing date of the application.
4. Avoid filing foreign counterparts as references: Sometimes, the applicant/attorneys would want to be on a safer side with all the references and file foreign counterparts of the corresponding US as a reference. It is recommended to avoid such practice of filing foreign counterparts as references of the same family as it is an unnecessary cost/effort.
5. Cite references from other jurisdictions: It is recommended to file Prior arts from other jurisdictions within 3 months (after you became aware of it) with USPTO and there is no fee involved if it is filed within three All the more, it is advisable to cite it within a month to avoid any PTA delays.
Avoid Redundant Effort:
6. References for continuity applications: By default, the examiner will consider information which has been considered by the Office in a parent application when examining a,
- continuation application filed under 37 CFR 1.53
- divisional application filed under 37 CFR 1.53 or
- continuation-in-part application filed under 37 CFR 1.53
You may need to cite them again only if you/your attorney need them to be displayed on the face of the patent.
7. Need to check for any new reference on a frequent basis (monthly review) to avoid RCE at the allowance stage: In general, if the IDSes are filed after the issue fee is paid; the examiner will consider it only if RCE is filed. This not only implicates extra fee, but also procrastinates the prosecution.
Keep it Clean and Relevant:
8. It is important to check and remove cumulative publications: It is advisable to remove cumulative (corresponding publication in a different jurisdiction) publications of already cited art especially while reviewing the case during allowance (Issue Fee Review – Checklist which shall be explained in the next post). This process of checking and removing cumulative references may result in clean IDS and can avoid RCE at the NOA stage.
9. The significance of preparing a matrix of references cited/submitted in related/co-pending applications: The duty of disclosure relates to submitting to the PTO all information known to the applicant, that an examiner would consider important while examining the given application. Especially the references cited in all related (genealogical and/or subject matter) applications. Also, preparing a reference matrix for a family of applications (even in Excel) could help in not missing any reference.
Accelerate the Examination:
10. The Quick Path Information Disclosure Statement (QPIDS) pilot program: It is a part of the USPTO’s on-going efforts towards compact prosecution and pendency reduction. The advantage of the USPTO’s QPIDS pilot program is to file IDS without an RCE post making the issue fee payment. This expedites the examination process and also the RCE fee gets refunded if the examiner notices that the references are not convincing enough for reopening prosecution.
MaxVal offers Max-IDS, a stand-alone software product, an easy to use, integrated, and customizable environment for legal operations to collaboratively manage patent references and generate IDS with a few clicks. Clients can also avail MaxVal’s migration and data upkeep services.