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As part of its ongoing efforts to promote investment in innovation and spur economic growth, the Department of Commerce's United States Patent and Trademark Office (USPTO) today announced a new proposal that would streamline and improve the patent application review process. The new proposal would encourage patent applicants to provide the USPTO the most relevant information related to their inventions in the early stages of the review process.
"Clear disclosure upfront by applicants helps examiners more quickly make the correct decision about whether a claimed invention deserves a patent," noted Jon Dudas, under secretary of commerce for intellectual property. "Clear, 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."
Patent applicants and their attorneys or agents currently have an obligation to inform USPTO's patent examiners of all information known to be material to patentability of the invention claimed by the applicant. Applicants list information for the examiner to consider in a communication called an Information Disclosure Statement (IDS).
The USPTO has observed that applicants sometimes provide information in a way that hinders rather than helps timely, accurate examination. For example, some applicants send a very large number of documents to the examiner, without identifying why they have been submitted, thus tending to obscure the most relevant information. Additionally, some applicants send very long documents without pointing out what part of the document makes it relevant to the claimed invention. Sometimes applicants delay sending key information to the examiner. These practices make it extremely difficult for the patent examiner to find and properly consider the most relevant information in the limited time available for examination of an application.
The USPTO's proposed rule change is designed to encourage early submission of relevant information, and to discourage submission of information that is unimportant or does not add something new for the examiner to consider. With the proposed changes, patent examiners would not have to review documents that do not directly relate to the claimed invention, or that duplicate other information already submitted.
To encourage submission of relevant information to the patent examiner promptly and in a way that brings the most important information to the attention of the examiner, the USPTO is proposing to eliminate all fees associated with submitting an IDS. Under the proposal, applicants in most cases would be permitted to send up to 20 documents without additional explanation, if these documents are provided to the USPTO before the examiner sends a first communication to the applicant.
Were an applicant to submit more than 20 documents, or wait until after the patent examiner's first communication has been sent, the applicant would face increasing requirements to provide more detailed information about the documents and how they relate to the claimed invention. Applicants could be required to point out what part of the document makes it important, to identify specific claims to which a document applies, to clarify how a document adds new information not already considered by the examiner, or explain why the claims are patentable in light of the information provided.
Under the proposal, applicants would still be able to send in as many documents as they choose. However, there would be more stringent requirements for those choosing to submit large numbers of documents or very long documents.
For further information see: http://www.uspto.gov/web/offices/com/sol/notices/71fr38808.pdf.