Proposed USPTO Fee Changes for Information Disclosure Statements Foreshadow Possible Procedural Changes

By Kelly Patrick Fitzgerald

The United States Patent and Trademark Office (USPTO) recently published proposed patent fee changes.  The proposal for Information Disclosure Statements (IDS’s) seems to imply some relatively major changes forthcoming to IDS procedure.  These changes may include the elimination of certification requirements, the elimination of the Quick Path Information Disclosure Statement (QPIDS) program, the elimination of the need to file a Request for Continued Examination for consideration of any IDS’s, and substantial fee increases for some IDS’s.   Basically, under the new IDS framework described in the proposed fee changes, the Applicants would be permitted to file an IDS at any time during patent prosecution, without certification, up to the date of issuance of the patent.   The fees required for filing the IDS will differ, depending on when the IDS is filed in the patent process.       

Background:

United States patent law imposes a “duty of disclosure” to disclose to the Patent Office any known prior art that is material to the patentability of the invention claimed in the patent application.  This duty of disclosure applies to all individuals (e.g., inventors and attorneys) that are involved in the patenting process.  

Failure to satisfy the duty of disclosure can result in patent unenforceability.  In particular, the failure to cite one or more material references that were known to the Applicants can be the basis of an inequitable conduct claim, if there is also an “intent to deceive” the Patent Office.   

For these and other reasons, it is generally preferable to cite any and all known prior art that might be considered material to the Patent Office during the prosecution of a patent application.   This procedure is meant to improve the patenting process by making the Patent Office aware of such prior art that is material to patentability.  Cited references are also listed on the face of any issued patent, which may help to ensure that the Applicants enjoy the presumption of validity of the issued patent relative to the citation. 

37 CFR 1.97 sets forth how and when the Applicants can submit IDSs.   Under these rules, the Applicants are generally entitled to Patent Office consideration of an IDS if it is filed: within three months of application filing date or national phase entry, before the mailing of a first office action, or before the mailing of a first Office action after the filing of an request for continued examination (RCE).     

After these time periods and before prosecution closes on an application (such as following a Notice of Allowance or Final Rejection), the Applicants are entitled to Patent Office consideration of an IDS by either paying a $180 fee or making an IDS certification.  After a Notice of Allowance or Final Rejection, the Applicants are entitled to Patent Office consideration of an IDS by both paying the $180 fee and making the IDS certification, provided the Issue Fee has not yet been paid in the case of a Notice of Allowance.

The Applicants were previously unable to file an IDS after payment of the Issue Fee.  However, a recent pilot program at the USPTO, i.e., the Quick Path IDS (QPIDS) program, allows the Applicants to file an IDS after payment of the issue fee by paying the $180 IDS fee, making the IDS certification, and filing a petition and fee to conditionally withdraw the case from issue. 

The IDS certification requirements are set forth in 37 CFR 1.97(e).   If certification is needed, the Applicants must state either:

(1) That each item of information contained in the information disclosure statement was first cited in any communication from a foreign patent office in a counterpart foreign application not more than three months prior to the filing of the information disclosure statement; or

(2) That no item of information contained in the information disclosure statement was cited in a communication from a foreign patent office in a counterpart foreign application, and, to the knowledge of the person signing the certification after making reasonable inquiry, no item of information contained in the information disclosure statement was known to any individual involved in the patent process more than three months prior to the filing of the information disclosure statement.

Unfortunately, some facts or circumstances can make it impossible or undesirable for the Applicants to make either of these certifications.  In such instances, the Applicant’s best option to get an IDS considered may be to file a request for continued examination (RCE) and the requisite RCE fee.  Filing an RCE not only drives up costs, but \also delays the patenting process, usually to the detriment of the Applicants.        

Related Cases can complicate IDS practice

Some Applicants file groups of patent applications claiming related subject matter that may be considered so-called “related-cases.”  When cases are related, the prior art cited in such cases may also be related and possibly considered material to the patentability of the different cases.   Accordingly, upon identifying “related” cases, the Applicants often cross-cite prior art that is cited by the Patent Office amongst the related cases.  As the patent process unfolds in such “related” cases, the Applicants may be presented with numerous opportunities to file information disclosure statements in different related cases to cross-cite the art.  

When the number of “related” cases increases, the burden of cross-citing art also increases.   Indeed, each filing of an IDS increases the costs imposed upon the Applicants (e.g., by requiring more Attorney time and possibly additional USPTO fees).  Moreover, as noted above, in some instances, the Applicants may be required to file an RCE  in order to get an IDS considered, such as when a Patent Application has already been allowed and the Applicants are unable or unwilling to make a legal certification needed to force consideration of the IDS by the Patent Office.

With regard to such “related-cases,” it may be desirable to also cite the Applicants’ arguments amongst the different cases.  Indeed, there is case law indicating that the Applicants’ arguments in one case may be material to the patentability of another closely related case.  See Dayco Products, Inc. v. Total Containment, Inc., 329 F.3d 1358 (Fed. Cir 2003); see also McKesson Information Solutions, Inc. v. Bridge Medical, Inc., 487 f.3d897 (Fed. Cir. 2007).  Moreover, when a patent application is filed in several countries, it is often desirable to cite the references being cited against the corresponding patent applications in other countries (as well as arguments made by the Applicants).  The practical effect of these different factors is that the Applicants often need to file numerous IDS’s throughout patent prosecution.

These factors of “cross-citing” related cases, “cross-citing” art and prosecution of corresponding cases in other jurisdictions, certifications, fees, and attorney time can make IDS practice burdensome and expensive for the Applicants.  Moreover, in some instances, such as where the Applicants need or choose to file an RCE to get an IDS properly considered, the effect of IDS procedure can delay issuance of a patent by a considerable amount of time, usually without any ability to adjust the patent term.

The Applicants can try to mitigate the need to file multiple IDS’s by consolidating IDS filings, i.e., collecting and holding references as they are received, and filing IDS’s at specific times along the patent process.  In doing so, the Applicants can monitor USPTO predictions of the first Office Action, e.g., and try to file a consolidated IDS prior to the first office action.  After the first Office Action, however, it becomes more desirable for the Applicants, under the current rules, to file IDS’s more quickly and regularly.  After a Notice of Allowance, an IDS is only considered if Applicants can make the IDS certification explained above.  After paying the Issue Fee but prior to Grant, the Applicant’s only avenue (other than RCE) for entry of an IDS is via the QPIDS program, which is only available if the Applicants can make the IDS certification.       

Changes to IDS procedure implied by proposed Fee changes 

The proposed fee changes divide the application into four different periods, and require different fees and (and other requirements) for the Applicants to file IDS’s in each respective period as follows:

Period 1 – Time between application filing date and the later of either the first action on the merits or 3 months from the filing date

Period 2 – After Period 1 and before the Notice of Allowance

Period 3 – After Period 2 and before payment of the Issue Fee

Period 4 – After Issue fee payment and before Patent Grant

In Period 1, there is no fee for filing an IDS.  In period 2, the IDS fee is $300 for a large entity, $150 for a small entity, and $75 for a micro entity.  In period 3, the IDS fee is $600 for a large entity, $300 for a small entity, and $150 for a micro entity.  In period 4, the IDS fees are the same as in Period 3, but the Applicants must also file a petition (and fee) to withdraw the case from issuance.   Presumably, this petition fee needed in Period 4 is only charged to the Applicants if the case is actually withdrawn from issuance in response to the IDS (which is similar to the current QPIDS program).

Likely Result of the proposed changes

If these changes are promulgated, the changes will likely have positive effects on patent delays due to IDS filings.  In particular, the changes appear to eliminate any need for RCE filings, which generally cause delays in patent issuance, to submit art.

The changes will also simplify IDS filings by eliminating certification requirements under 37 CFR 1.97.  Certifications may no longer be required for any IDS filings.   Instead, the Applicants will be able to file an IDS at any time in the patent process, with payment of the appropriate fee.   It should be noted, however, that even with the elimination of certification requirements under 37 CFR 1.97, it may still be desirable to make other certifications under 37 CFR 1.704, when possible, to help adjust the patent term and avoid reductions in patent term adjustment that might otherwise be applicable due to Applicant delay.

The proposed changes create a different fee structure for IDS filing fees.   Most notably, the proposal changes substantially increase the costs of IDS’s; particularly for periods 3 and 4.  

With such changes, it seems that any cost savings to the Applicants for avoiding RCE’s and certifications would appear to be thwarted by cost increases in the IDS fees.   Moreover, the issues related to “cross-citing” related cases and “cross-citing” art from corresponding cases in other jurisdictions remain.  However, the proposed rules would appear to allow the Applicants to consolidate IDS filings, and doing so could help to control costs.  To be sure, the elimination of certification requirements would seem to make it much more viable for the Applicants to consolidate IDS filings at very late stages of the patent process.  At the same time, however, the Applicants may still benefit from earlier IDS filings, which would bring prior art to the attention of the Patent Office earlier in the patent process, so that the Examiner may consider it in moving toward allowance.  Accordingly, under the proposed changes to IDS practice, the Applicants may want to balance the cost saving benefits associated with later consolidated IDS filings with the earlier disclosure benefits associated with earlier IDS filings.

In summary, the elimination of IDS certifications and RCE filings for IDSs appear to both be desirable changes for patent applications to reduce delay.  At the same time, however, IDS procedure will likely remain complicated and costly for the Applicant.