July 12, 2006

On Monday, the USPTO announced its most recent effort to improve the process of obtaining a patent in the United States, focusing on “clear disclosure” of the “most relevant information” related to an invention. The changes surround the current practice of an applicant’s duty to disclosing information to the USPTO (under 37 CFR § 1.56) via Information Disclosure Statement (IDS), noting that applicants sometimes send a large number of documents and/or lengthy documents to the Examiner for review during the application review process. The current disclosure process does not require an applicant to point out why a document is being submitted or the particular portion of the document that is relevant. This newest proposal would eliminate all fees related to an IDS submission, allowing an applicant to submit up to 20 documents without additional explanation if submitted prior to the examiner’s first “communication” to the client (“first Office Action on the merits” according to the Federal Register). Any IDS documents outside of this scope (either more than 20 documents or after the first communication has been sent), the applicant could be required to identify specific areas of relevance in the document, clarify how it adds new information not previously considered, or to explain why the applicant feels that claims are patentable in view of the documents. A window for comments is open until September 8, 2006. Jon Dudas, the Under Secretary of Commerce for Intellectual Property, stated that “[c]lear, forthright disclosure benefits all, because the public – including potential investors - wants to know that a patent application has been thoroughly reviewed, applying the best data available.”

USPTO Proposal Release: LINK
Federal Register Excerpt: LINK
37 CFR § 1.56: LINK

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Mark Reichel
Reichel IP LLC

I am a patent attorney with Reichel IP LLC, where I concentrate my practice on patent drafting and prosecution, trademarks, and general intellectual property matters. I currently focus on the preparation and prosecution of medical device and other life sciences patent applications, and being actively involved in a number of local not-for-profit organizations.

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