Anticipate This!™ | Patent and Trademark Law Blog

OMB Concludes Proposed IDS Rules Are “Consistent without Change”.

Posted in General Commentary by Jake Ward on December 11, 2007

The USPTO’s proposed changes to information disclosure statement (IDS) requirements have recently been approved by the OMB.  The proposed rules have been labeled as “Consistent without Change”.  The phrase “Consistent without Change” means that the OMB has found the rules to be consistent with the principles of Executive Order 12291, i.e., the proposed rules are not economically significant.

The abstract of the proposed rules, currently available on the Federal Regulatory Information Web site here, states:

The U.S. Patent and Trademark Office (Office) amends its regulations on information disclosure statement (IDS) requirements and other related matters to improve the quality and efficiency of the examination process. These changes would enable the examiner to focus in on the relevant portions of submitted prior art at the very beginning of the examination process, give higher quality first actions, and minimize wasted steps. This action would make the following changes relating to submissions of IDS’s by applicants: impose a requirement for the personal review of, and to provide information about, certain citations; eliminate the fees for, but permit only timely, IDS submissions; and only permit the filing of an IDS after the mailing of a notice of allowance if a claim is admitted to be unpatentable and a narrowing amendment is also submitted. The Office would also permit third parties to submit prior art up until the mailing of a notice of allowance after application publication; to no longer permit an IDS to meet the submission requirement for a request for continued examination (RCE); to permit, after payment of the issue fee, certain amendments and petitions so applicants will not have to file a continuation application or an RCE for such items; and to revise the protest rule to better set forth options that applicants have for dealing with unsolicited information received from third parties.

The Federal Register notice related to the proposed IDS rules may be found here.  The patent practice community now anxiously awaits publication of the rules in their final form.

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