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Archived updates for Wednesday, December 12, 2007

USPTO Information Disclosure Rules Expected Within Six Weeks

[Although] the content of the rules as they will be adopted is not known . . . As proposed, the rules required an "explanation," which included an "identification" and "correlation," of all prior art references if more than 20 references were submitted or for any reference of more than 25 pages. Based on past experience, the rules are likely to be announced by the USPTO within 2 to 6 weeks and take effect some weeks later.

More specifically, the original proposal included
  • Before a first Office action on the merits, requiring additional disclosure for English language documents over twenty-five pages, for any foreign language documents, or if more than twenty documents are submitted (documents submitted in reply to a requirement for information or resulting from a foreign search or examination report would not count towards the twenty document limit);

  • Permitting the filing of an IDS after a first Office action on the merits only if certain additional disclosure requirements have been met; and eliminate the fees for submitting an IDS.

  • Updates to the additional disclosure requirements would be required as needed for every substantive amendment.

  • Revising the protest rule to better set forth options that applicants have for dealing with unsolicited information received from third parties.
More information on the original proposal is available here, with more links to supporting materials available from Peter Zura's 271 Patent Blog.
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