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1
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- Stephen P. Burr
- Burr & Brown
- 101 South Salina Street, 7th Floor
- Syracuse, NY 13202
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3
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- Rule 97(c)
- Must also file
- Rule 97(e) Certification (references known for less than three months)
- OR
- Rule 17(p) Fee ($180.00)
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4
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- Rule 97(d)
- Must also file
- Rule 97(e) Certification (references known for less than three
months),
- AND
- Rule 17(p) Fee ($180.00)
- If references have been known for more than three months, cannot file
IDS under Rule 97(d)
- Need to file RCE or Rule 53(b) Continuation Application to submit IDS
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5
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- After Payment of the Issue Fee
- Must file Petition to Withdraw the Application from Issue (Rule 313(c))
to submit IDS
- Rule 313(c) Petition usually granted IF filed far enough in advance of
projected issue date of patent (on PTO PAIR system)
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6
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- List of References
- Legible Copy of Each Reference
- no longer required for U.S. references in applications filed after June
30, 2003
- Still need to file copies of copending U.S. applications
- Concise Explanation of Relevance
- “Readily Available” Translations of Non-English References
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7
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- Potential Penalties:
- Patent is unenforceable (all claims)
- Related patents may be unenforceable
- Antitrust Liability (damages)
- Award of Attorney’s fees (35 USC §285)
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8
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- Two-step Analysis
- Misrepresentation of material fact, failure to disclose material
information, or submission of false material information
- AND
- Intent to mislead or deceive
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9
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10
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- MPEP Section 2004 (Aids to Compliance With Duty of Disclosure) provides
some helpful points to consider.
- Who is the proper inventor?
- Do all of the inventors understand that they agreed to satisfy the Duty
of Disclosure when they signed the Application Declaration?
- - the foreign attorney must confirm that each inventor recognizes his
responsibilities in signing the oath or declaration. See 37 CFR 1.69(a),
which states
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11
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- Be certain that all of the individuals who are subject to the Duty of
Disclosure are informed of and fulfill their duty. The Duty of Disclosure applies to
inventors, the assignee, the US attorney and the foreign attorney.
- - See Gemveto Jewelry Co. v. Lambert Bros., Inc., 542 F. Supp. 933, 216
USPQ 976 (S.D.N.Y. 1982), wherein a patent was held unenforceable
because the patentee's foreign attorney did not disclose to the
patentee's US attorney (or to the PTO) prior art cited by the foreign
Patent Office in the corresponding foreign application. The court stated:
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12
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- You must cross-reference pending applications that are directed to
related subject matter. As MPEP Section 2004, paragraph 9 states:
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13
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- When in doubt submit the information to the PTO (MPEP §2004,¶10). “The question of relevancy in close
cases, should be left to the examiner and not the applicant.” U.S. Industries v. Norton Co., 210
USPQ 94, 107 (N.D. N.Y. 1980); see also LaBounty Mfg., Inc. v. U.S.
Int'l Trade Comm'n, 958 F.2d 1066, 22 USPQ2d 1025 (Fed. Cir. 1992).
- Do not submit a relevant reference “buried” among a large group of
marginal references. Molins PLC
v. Textron, Inc., 33 USPQ2d 1823 (Fed. Cir. 1995).
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14
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- If the prior art is not in English, be sure to provide any English
translation that is readily available.
See Semiconductor Energy Laboratory Co. v. Samsung Electronics
Co., 54 USPQ2d 1001 (Fed. Cir. 2000), where the inventor submitted
Japanese reference, concise explanation of its relevance and an existing
one-page partial English translation, both of which were directed to
less material portions of the reference.
The Court stated:
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15
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- Rule 132 Declarations
- - statements must be truthful
- - experiments must be actual
- - must be signed by the person who conducted (or supervised) the
experiments
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Notes
