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Excerpt re: 37 CFR 1.98

Excerpt of § 1.98 regarding particularly that § 1.98(a)(2)(i) has been amended to eliminate the requirement in paragraph (a)(2)(i) for a copy of each U.S. patent or U.S. patent application publication listed in an IDS in a patent application regardless of the filing date of the application. Except was taken from United States Patent and Trademark Office OG Notices: 12 October 2004

DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Parts 1, 5, 10, 41, and 104
[Docket No.: 2003-P-020]
RIN 0651-AB64

Changes To Support Implementation of the United States Patent and Trademark Office 21st Century Strategic Plan

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Final rule.

* * *

Section 1.98: Section 1.98(a) is amended by revising paragraph
(a)(1) to require: (1) A specified format/identification for each page
of an Information Disclosure Statement (IDS), and that U.S. patents and
U.S. patent application publications be listed in a section separately
from citations of other documents; (2) a column that provides a space
next to each document listed to permit the examiner's initials; and (3)
a heading that the list is an IDS. Section 1.98(a)(1) is specifically
amended to require that U.S. patents and U.S. patent application
publications be listed separately from the citations of other
documents. The separation of citations will permit the Office to obtain
the U.S. patent numbers and the U.S. patent application publication
numbers by optical character recognition (OCR) from the scanned
documents such that the documents can be made available electronically
to the examiner to facilitate searching and retrieval of the cited U.S.
patents and U.S. patent application publications from the Office's
search databases. Applicants will comply with this requirement if they
use forms PTO/SB/08A and 08B (or the more commonly used PTO-1449),
which provide a separate section for listing U.S. patents and U.S.
patent application publications. Applicants who do not use these forms
for submitting an IDS must make sure that the U.S. patents and U.S.
patent application publications are listed in a separate section from
citations of other documents. Section 1.98(a)(2)(i) is amended to
eliminate the requirement in paragraph (a)(2)(i) for a copy of each
U.S. patent or U.S. patent application publication listed in an IDS in
a patent application regardless of the filing date of the application.
(emphasis added)
Section 1.98(a)(2)(ii) is also amended to add the phrase "other than
U.S. patents and U.S. patent application publications unless required
by the Office." Section 1.98(c) is amended to add the phrase "as
specified in paragraph (a)" to be consistent with the changes to Sec.
1.98(a)(2). Section 1.98(e) is deleted as unnecessary.

 

Section 1.98(a)(1) previously did not require the use of a form
such as the PTO/SB/08A and 08B because the Office wished to provide
applicants the flexibility to use other types of lists. The Office,
however, has experienced problems associated with lists that do not
properly identify the application in which the IDS is being submitted:
e.g., when applicants submit a list that includes copies of PTO-1449 or
PTO-892 forms from other applications. Even though the IDS transmittal
letter had the proper application number, each page of the list did not
include the proper application number, but instead had the application
numbers of the other applications. If the pages of the list became
separated, the Office could not associate the pages with the proper
application. Therefore, the rule is amended to also require that each
page of the list must clearly identify the application number of the
application in which the IDS is being submitted.

Section 1.98(a)(1) is also amended to require that the list must
include a column that provides a space next to each document listed in
order to permit the examiner to enter his or her initials next to the
citations of the documents that have been considered by the examiner.
This provides a notification to the applicant and a clear record in the
application to indicate which documents have been considered by the
examiner in the application. Applicants are strongly discouraged from
submitting a list that includes copies of PTO/SB/08 (PTO-1449) or PTO-
892 forms from other applications. A completed PTO/SB/08 or PTO-1449
form from another application may already have initials of an examiner
and the application number of another application. This information
will likely confuse the record. Furthermore, when the spaces provided
on the form have initials of an examiner, there are no spaces available
next to the documents listed for the examiner of the subsequent
application to provide his or her initials, and the previously relevant
initials may be erroneously construed as being applied for the current
application, which can be particularly confusing if the application is
being handled by the same examiner.

Section 1.98(a)(1) is also amended to require that each page of the
list include a heading that clearly indicates that the list is an IDS.
Since the Office treats an IDS submitted by the applicant differently
than information submitted by a third-party (e.g., the Office may
discard any non-compliant third-party submission under Sec. 1.99), a
heading on each page of the list to indicate that the list is an IDS
would promote proper treatment of the IDS submitted by the applicant
and reduce handling errors.

Section 1.98(a)(2) is amended to eliminate the requirement for a
copy of each U.S. patent or U.S. patent application publication listed
in an IDS, unless required by the Office. The Office had provided a
waiver for the former requirement in Sec. 1.98(a)(2)(i) for a copy of
each cited U.S. patent or U.S. patent application publication in IDSs
submitted in U.S. national patent applications filed after June 30,
2003, and international applications that have entered the national
stage under 35 U.S.C. 371 after June 30, 2003, because these
applications are stored in electronic form in the Office's IFW system.
See Information Disclosure Statements May Be Filed Without Copies of
U.S. Patents and Published Applications in Patent Applications filed after
June 30, 2003, 1273 Off. Gaz. Pat. Office 55 (Aug. 5, 2003).

Information disclosure statements submitted for electronic
applications are processed by Office staff to create an electronic link
which permits cited U.S. patents and U.S. patent application
publications to be conveniently viewed by examiners through the
Office's electronic search system. This feature enables the Office to
avoid scanning these documents into IFW, obviating the need for a copy
of the cited U.S. patent documents. By October 2004, the Office will
store almost all pending U.S. nonprovisional patent applications in
electronic form in the IFW system. Accordingly, it will no longer be
necessary to require a copy of each cited U.S. patent or U.S. patent
application publication in an IDS regardless of the filing date of the
application or the national stage entry date under 35 U.S.C. 371,
unless it is required by the Office. In exceptional circumstances, such
as where the application had not been converted into IFW, or the IDS
includes a large number of cited U.S. patent documents, the Office may
require a copy of the cited U.S. patent documents because entering a
large number of cited U.S. patent documents into the Office system to
create the electronic link places a significant burden on the Office
and the Office cannot guarantee the accuracy of the electronic link
created by the Office staff due to data entry errors. Applicants are
encouraged to file an e-IDS that is submitted in compliance with the
Office's EFS requirements, and may do so to avoid supplying copies of
U.S. patent documents. The Office will continue to not require a copy
of any cited U.S. patent documents listed in an e-IDS that is submitted
in compliance with the Office's EFS requirements.

Section 1.98(c) is amended to add the phase "as specified in
paragraph (a)" to be consistent with the changes to Sec. 1.98(a)(2).
Section 1.98(e) is deleted as unnecessary. Previously, one could avoid
the need to supply a copy of the U.S. patent documents of former
paragraph (a)(2)(i) by using the Office's EFS. This exception is not
necessary because the requirement for copies of U.S. patent documents
has been deleted.

* * *

. 26. Section 1.98 is amended by revising paragraphs (a) and (c) and
removing paragraph (e) to read as follows:

Sec. 1.98 Content of information disclosure statement.

(a) Any information disclosure statement filed under Sec. 1.97
shall include the items listed in paragraphs (a)(1), (a)(2) and (a)(3)
of this section.

(1) A list of all patents, publications, applications, or other
information submitted for consideration by the Office. U.S. patents and
U.S. patent application publications must be listed in a section
separately from citations of other documents. Each page of the list
must include:

(i) The application number of the application in which the
information disclosure statement is being submitted;

(ii) A column that provides a space, next to each document to be
considered, for the examiner's initials; and

(iii) A heading that clearly indicates that the list is an information
disclosure statement.

(2) A legible copy of:

(i) Each foreign patent;

(ii) Each publication or that portion which caused it to be listed,
other than U.S. patents and U.S. patent application publications unless
required by the Office;

(iii) For each cited pending unpublished U.S. application, the
application specification including the claims, and any drawing of the
application, or that portion of the application which caused it to be
listed including any claims directed to that portion; and

(iv) All other information or that portion which caused it to be
listed.

(3)(i) A concise explanation of the relevance, as it is presently
understood by the individual designated in Sec. 1.56(c) most
knowledgeable about the content of the information, of each patent,
publication, or other information listed that is not in the English
language. The concise explanation may be either separate from
applicant's specification or incorporated therein.

(ii) A copy of the translation if a written English-language
translation of a non-English-language document, or portion thereof, is
within the possession, custody, or control of, or is readily available
to any individual designated in Sec. 1.56(c).

* * * * *

(c) When the disclosures of two or more patents or publications
listed in an information disclosure statement are substantively
cumulative, a copy of one of the patents or publications as specified
in paragraph (a) of this section may be submitted without copies of the
other patents or publications, provided that it is stated that these
other patents or publications are cumulative.

* * * * *

 

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