The Information Disclosure Statement (IDS)

1. The Information Disclosure Statement (IDS) • Is found in ~every patent file history, usually near the beginning • See Fontirroche '594 patent file history at 19934-36 • Contains a listing of prior art references (Form PTO-1449) • U.S. patents and applications • Foreign patents • Non-patent literature • Is governed by regulations based on caselaw; is not in the statute. • The caselaw states that applicants have a DUTY OF CANDOR to the PTO. • Must include a certification of compliance with IDS requirements What is the difference between statutes, regulations, and rules of agency practice such as the MPEP? For PTO forms generally, go to http://www.uspto.gov/web/forms/index.html#startforms MELAHN - IDS

2. Rule 56: 37 C.F.R. § 1.56 Patent Rule X = 37 C.F.R. § 1.X Ask me what CFR is. • “Each individual associated with . . . a patent application has a duty of candor and good faith . . . to disclose . . . all information known to that individual to be material to patentability . . . .” Rule 56(a) third sentence. • Incorporates requirements of Rules 97 and 98, 37 C.F.R. §§ 1.97 and 1.98 (see next slide) The violation of the duty of candor (that violation used to be called “fraud on the patent office”) renders the patent (ALL claims) UNENFORCEABLE. Compare INVALIDITY. MELAHN - IDS

3. Rules 97 and 98: 37 C.F.R. §§ 1.97 and 1.98 • Rule 97: When do you file an IDS? • Within 3 months of filing application, or • Before mailing of a first Office action • After that, as long as it is within 3 months of discovering the information (e.g., by having a foreign patent office cited it against you) • By payment of a fee, as long as it is before a final office action or notice of allowance • Rule 98: What do you file (content and form of the required disclosures)? Generally: link to rule X: http://www.uspto.gov/web/offices/pac/mpep/documents/appxr_1_X.htm MELAHN - IDS

4. Who has to disclose what? Implications? • “(c) Individuals associated with the filing or prosecution of a patent application within the meaning of this section are: • “(1) Each inventor named in the application; • “(2) Each attorney or agent who prepares or prosecutes the application; and • “(3) Every other person • who is substantively involved in the • preparation or • prosecution • of the application and • who is associated • with the inventor, • with the assignee or • with anyone to whom • there is an obligation to assign the • application. • “(d) Individuals • other than the attorney, agent or inventor may comply with this section • by disclosing information • to the attorney, agent, or inventor.” • Who selects the references listed? Short answer: The attorney prosecuting the application. Longer answer, see Rule 56 (c), (d) • Does listing constitute an admission? No. Rule 97(g),(h): Disclosure is not a representation that (1) a search has been made, nor (2) that the information disclosed is material to patentability. MELAHN - IDS

5. WARNING: Proposed changes to IDS rules – in the works?? • “As part of its ongoing efforts to promote investment in innovation and spur economic growth, the USPTO announced on July 10, 2006, new proposed IDS rule changes that would encourage patent applicants to provide the USPTO the most relevant information related to their inventions in the early stages of the review process.” http://www.uspto.gov/web/offices/pac/dapp/opla/presentation/focuspp.html#ids • Public comment was due by September 8, 2006, but comments have never been published. Other PTO Rules were enjoined last year, 10/31/07 Tafas v. Dudas (EDVa). That decision probably affected the PTO’s plans for the new IDS rules. • For argument that proposed IDS changes alter too much too fast, see Russell S. Magaziner, U.S. Patent and Trademark Office’s Proposed Information Disclosure Statement Rules: Too Novel and Nonobvious, 83 Ind. L.J. Supp. 719 (2008). MELAHN - IDS