USPTO Proposes New IDS Framework

12 November 2015 PharmaPatents Blog

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.

This blog is made available by Foley & Lardner LLP (“Foley” or “the Firm”) for informational purposes only. It is not meant to convey the Firm’s legal position on behalf of any client, nor is it intended to convey specific legal advice. Any opinions expressed in this article do not necessarily reflect the views of Foley & Lardner LLP, its partners, or its clients. Accordingly, do not act upon this information without seeking counsel from a licensed attorney. This blog is not intended to create, and receipt of it does not constitute, an attorney-client relationship. Communicating with Foley through this website by email, blog post, or otherwise, does not create an attorney-client relationship for any legal matter. Therefore, any communication or material you transmit to Foley through this blog, whether by email, blog post or any other manner, will not be treated as confidential or proprietary. The information on this blog is published “AS IS” and is not guaranteed to be complete, accurate, and or up-to-date. Foley makes no representations or warranties of any kind, express or implied, as to the operation or content of the site. Foley expressly disclaims all other guarantees, warranties, conditions and representations of any kind, either express or implied, whether arising under any statute, law, commercial use or otherwise, including implied warranties of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Foley or any of its partners, officers, employees, agents or affiliates be liable, directly or indirectly, under any theory of law (contract, tort, negligence or otherwise), to you or anyone else, for any claims, losses or damages, direct, indirect special, incidental, punitive or consequential, resulting from or occasioned by the creation, use of or reliance on this site (including information and other content) or any third party websites or the information, resources or material accessed through any such websites. In some jurisdictions, the contents of this blog may be considered Attorney Advertising. If applicable, please note that prior results do not guarantee a similar outcome. Photographs are for dramatization purposes only and may include models. Likenesses do not necessarily imply current client, partnership or employee status.

Related Services