There is a duty on all applicants to disclose prior art or background information that may be relevant to the patentability of the applicant's invention, as established USC 35 and related sections of 37 CFR and the Manual of Patent Examining Procedure (MPEP). An information disclosure statement (or IDS) refers to a form used in the submission of relevant art to the US Patent and Trademark Office by an applicant for a patent application during prosecution. IDS may include issued patents, published patent applications, scientific journal articles, books, magazines or any other published material that are relevant to the invention disclosed in the applicant’s own patent application, irrespective of country or language. This is usually filed electronically. IDS filings are thus important in strengthening patents from invalidity attacks.
This article identifies challenges in a) keeping up with timelines for IDS filing and b) error-free management of patent citations across patent families and discusses strategies for minimizing patent prosecution costs through optimal management of IDS filings.
When is an IDS Filed?
A patent applicant may have to submit substantive references as prior art, not only at the time of filing the application, but also any time the applicant becomes aware of any new art. Typically, a family of patents may be prosecuted in a variety of jurisdictions, in each of which there may be references cited by the examiner during prosecution. On average, amendments to claims in most jurisdictions are carried out at least one or two times during prosecution. Every time a fresh or amended set of claims is considered by an examiner, he may cite new references. It becomes mandatory for the applicant to file IDS (in all the related applications), every time references are cited by an examiner in prosecution of a patent for substantially the same invention, or one with overlapping subject matter, in any other jurisdiction. It therefore becomes necessary for the prosecution team to keep excellent track of prosecution events to trigger IDS filings whenever required.
There are no fees to be paid to USPTO, if IDS is filed,
- Within three months of the filing date,
- Prior to the first Office Action, or
- With references from non-US search report, provided, all of the references disclosed in the IDS are cited in a non-US search report (a search report from any international jurisdiction or a PCT International Search Report) in a counterpart patent application, and if the search report was mailed within the past three months, and if the USPTO has not mailed a final rejection or a notice of allowance.
The above conditions would likely not be met if a citation that is part of any previously filed IDS or issued patent is overlooked in the IDS for a new filing. Typically, references that require to be cited need to be identified and tracked. Moreover, the citations must be scrupulously carried over to the entire family of related applications such as continuations or CIPs of a parent patent.
IDS Filing and Related Costs
The USPTO charges a $180 fee per IDS (as per MPEP) if not filed with the above time windows, or if any of the above conditions are not met. While the IDS filing fee is an avoidable expense in most instances, if a reference is required to be cited after a notice of allowance (NOA), it would become necessary for the prosecuting attorney to file a request for continuing examination (RCE), which goes with a fee of $1200 for the first RCE and $1700 for the second and subsequent request (fees for a large entity). The economic benefits of timely IDS filings to avoid IDS fees and especially RCEs, are therefore clear.
Reference Data Management
Handling IDS filings during prosecution of a large patent portfolio can be extremely challenging and may require several full time staff engaged in the steps of a) tracking office actions, b) identifying examiner citations, c) identifying related US applications, d) preparing and filing IDS forms for each family member where a citation is warranted, and e) keeping track of the citations across the patent family in a reliable way.
In many technologies, it may be necessary to cite typically 40-50 references, or sometimes, as many as a few hundred references. Many of the patents in a portfolio may share several references in their citations. Some references may be cited only in a smaller subset of the portfolio. Any reference that is cited in any patent or IDS of a patent application within the portfolio is subject to potential discovery as material to a new or existing filing. It is therefore a continuing challenge for the prosecution team to identify references key to the technology that are already part of the reference database at various stages of every case in prosecution. A related challenge is to examine the relevance of each newly identified reference to the entire portfolio, irrespective of family relationships.
The need therefore, is for a database to have the following features:
- Error-free storage of citation data without duplication of storage requirements,
- Identification of cross-citations within a given set of patents – these may or may not share a family relationship,
- Ability to associate a reference with a patent application so that an IDS can be filed citing that reference, whenever necessary and within deadlines,
- Tracking whether a reference has been filed in an IDS or not, not only to avoid missing out on citing critical references, but also to avoid duplicating citations,
- Good search features to quickly identify a reference when needed, and
- Automated, error-free EFS-ready IDS generation with minimal time overhead, thereby saving valuable time.
Reference Management Alternatives
Computer spreadsheets copy the format of paper-based sheets that have been used by accountants and bookkeepers for many years. Maintaining IDS references on spreadsheets might now be considered archaic when compared to a database management system as they are hard to share, collaborate and maintain as a single spreadsheet with large datasets.
Issues encountered when using Spreadsheets
Spreadsheets are often not very scalable for accessing and manipulating large volumes of data, specifically when it comes to managing IDS which involves enormous data requiring sophisticated association and tracking functions. Managing IDS data in a spreadsheet would be time consuming, tedious and unsuited for business continuity. It is also susceptible to human errors that are usually difficult to troubleshoot. Multiple spreadsheets or files may be required to maintain references, necessitating a large amount of hard-drive space for data storage. Report generation using spreadsheets has limited flexibilities, although it may be possible for small databases to be handled using merge functions.
Managing Risks in IDS Filings
Since disclosure is mandatory under statute, not filing a reference in an IDS carries high risk that the patent claims could be invalidated or otherwise its claims curtailed in scope, entailing a potentially high cost of default. The new AIA rules allowing third party submission of references also pose a high risk from uncited references during pre-grant and post grant stages, which can be mitigated through timely IDS filings. Some of the strategies followed to identify related references within one’s own portfolio are to cross-cite references based on priorities (family applications), or based on common inventors, in an attempt to be sufficiently inclusive in reference disclosures. Even so, managing thousands of references from even a few families is a huge task, which makes web-based collaborative work features very useful. Keeping spreadsheet-based data updated can be extremely challenging due to the complexity involved. Another important feature in a dedicated database system is the ability to set reminders using the calendaring function built into such a solution.
In view of the limitations in using spreadsheet-based solutions for reference management, the case for a dedicated web-based collaborative database system is well supported. Even a small patent portfolio with just a handful of inventions would require handling filing deadlines for 2-3 times the number of applications in prosecution, while requiring handling of several hundreds if not thousands of references. Using a dedicated reference management solution with excellent search, retrieval, calendaring and report functions is likely to provide immense operational and financial benefits.
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