USPTO Waives Requirement for IDS Copies of Applications Filed after June 2003

On September 21, 2004, the U.S. Patent and Trademark Office sua sponte waived the requirement in 37 CFR 1.98(a)(2)(iii) on Information Disclosure Statements requiring that a legible copy of the specification (including the claims, and drawings) of each cited pending U.S. patent application (or portion of the application which caused it to be listed) where the cited pending application is stored in the USPTO's IFW system. This waiver is effective immediately.

Applications filed under 35 U.S.C. 111 on or after June 30, 2003, and international applications that have entered the national stage on or after June 30, 2003, have been or are being scanned into the USPTO's IFW system. When citing to a pending U.S. patent application that has been published under 35 U.S.C. ? 122(b) (eighteen-month publication), the USPTO prefers that the citation be to the patent application publication (by publication number) rather than to the application itself (by application number). If material other than the specification, including the claims, and drawings in the file of a U.S. patent application is being cited in an IDS, the IDS must contain a legible copy of such material.

According to to the Notice posted on September 23, the USPTO has been scanning newly filed patent applications and the existing inventory of patent applications into USPTO's Image File Wrapper (IFW) system since June of 2003. Applications stored in the IFW system may be viewed by examiners on their desktop computers. Consequently, there is no longer a need to require a copy of the specification, including claims, and drawings of a U.S. patent application (or portion of the application) listed on an IDS when the cited application is stored in the USPTO's IFW system, and can be readily viewed by examiners, applicants and members of the public.