Frequently Asked Questions (FAQ)

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Patent Prosecution

In almost every patent application, your patent professional will usually talk about filing an “IDS” with a list of literature that may be related to your application — patents and patent applications, websites, articles, and more.

“IDS” is simply the acronym for an “Information Disclosure Statement,” a straightforward method provided by the USPTO for applicants to submit any ‘art’ they may be aware of that might be considered to affect the patentability of the invention.

Many inventor’s first impulse is to let the USPTO find any prior art by themselves. However, this is not really helpful — first, the more prior art that is considered, the stronger any resulting patent is. Second, the duty of disclosure is required by law as part of the ‘exchange’ inventors make in order to receive a period of exclusivity.

A patent by its very nature is affected with a public interest. The public interest is best served, and the most effective patent examination occurs when, at the time an application is being examined, the Office is aware of and evaluates the teachings of all information material to patentability. Each individual associated with the filing and prosecution of a patent application has a duty of candor and good faith in dealing with the Office, which includes a duty to disclose to the Office all information known to that individual to be material to patentability as defined in this section. (emphasis added)

The law provides that using an IDS to submit all required information meets this “duty to disclose,” which helps streamline the process of fulfilling this duty.

The duty to disclose all information known to be material to patentability is deemed to be satisfied if all information known to be material to patentability of any claim issued in a patent was cited by the Office or submitted to the Office in the manner prescribed by §§1.97(b)-(d) and 1.98. (i.e. an IDS) (Emphasis added, note in parentheses added)

It is important to note that this duty to disclose is taken very seriously. If it is determined that the duty to disclose has not been properly fulfilled, the patent application will be canceled.

However, no patent will be granted on an application in connection with which fraud on the Office was practiced or attempted or the duty of disclosure was violated through bad faith or intentional misconduct.

Of course, this can make it very appealing for a competitor looking to invalidate your patent at a later date to carefully scrutinize whether you — and your patent professional(s) — have met your duty to disclose. If it is found that the duty to disclose was not properly met, your patent can be found unenforceable — such as was the case in McKesson v. Bridge Medical when a patent was found unenforceable because a patent attorney did not disclose an Office action found to be material to patentability.

On the other hand, there is very little incentive not to file an IDS, especially because providing a reference with an IDS is not an admission of prior art. It’s hard to disclose too much.

Mere listing of a reference in an information disclosure statement is not taken as an admission that the reference is prior art against the claims.

Even if you don’t consider a reference as prior art, but think a reasonable person may consider it helpful for an Examiner to know, there’s multiple reasons to include it, and not usually any good reasons not to.

Therefore, you and everyone involved with your patent application — including your patent professional — should carefully submit any references (including previous disclosures, trade shows, sale offers, information regarding enablement, etc.) that might be able to be considered “material to the patentability” of the invention as claimed. Erring on the side of disclosure can be one of the easiest ways you can strengthen any patent that issues from your application.

The quick answer is: yes.

The job of the USPTO is to filter applications by examining them — primarily for novelty and obviousness. For this reason, the Examiner’s first substantial response in most cases is to reject the application for being non-novel or non-obvious. However, this is NOT inherently a rejection of your invention as a whole, and should not be taken as such. Instead, it is a rejection of the initial set of claims (which define exactly what your invention is) that were filed with your application. Experience indicates that the USPTO expects that Examiners who are doing a thorough job will typically reject every application at least once so that the claims are refined.

The Examiner is instructed that:

… the patent application should be reviewed and analyzed in conjunction with the state of the prior art to determine whether the claims define a useful, novel, nonobvious, and enabled invention that has been clearly described in the specification. The goal of examination is to clearly articulate any rejection early in the prosecution process so that the applicant has the opportunity to provide evidence of patentability and otherwise reply completely at the earliest opportunity.

MPEP 706

Think of it this way: your (and your patent practitioner’s) job is to get the broadest set of claims, while the USPTO Examiner’s job is to make sure the claims don’t take away what is public knowledge. Together, this helps to make the strongest set of claims available for your invention. Without the USPTO, you would easily overlap publicly known information. Without you and your patent practitioner, the USPTO would narrow your claims too much to be on the safe side. Working together, you can make a strong set of claims.

Thus, the patent application process is a back-and-forth process. Your patent professional submits an application on your behalf with an initial claim set. The Examiner responds with a rejection, stating where they believe the claims overlap other ‘prior art.’ Then, your patent professional responds (often after conducting an interview with the Examiner), either making one or more amendment to more clearly distinguish what is your novel invention, or pointing out where the Examiner misunderstood something … or, more often, doing both. Ideally, an agreement is eventually reached and a patent issued.

If you cannot reach an agreement after 2 rounds back and forth, you may:

  • file a continuing application or request for continued examination to continue the process
  • file a continuation-in-part to add information to the application that may make it more likely to be allowed
  • appeal the Examiner’s decision to the PTAB
  • abandon the application.

However, a well-researched and thoroughly-prepared patent application often does not reach this pass, and can reach an agreement and receive a Notice of Allowance on some of the claims. It is important to work with an experienced and diligent patent professional who will collaborate with you to create a thorough application, and will work with the Examiner on your behalf, representing your interest while still collaborating with — rather than alienating — the Examiner to produce a strong set of allowable claims.

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