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Honorable Commissioner

Honorable Commissioner,

I am writing to provide personal comments on the proposed changes to the rules governing Information Disclosure Statements.

In particular, I believe that requiring that each citation submitted in an IDS be "uniquely described" will NOT necessarily prevent the USPTO from continuing to be "overwhelmed with voluminous IDS submissions". Instead, requiring such descriptions will simply add to applicantsÂ’ costs. In addition, I suspect that many of these citation descriptions would be larger and/or less helpful than the Office envisioned when proposing the rule change.

The following may be an alternative approach worth considering. The Office would place a limit on the amount of IDS submissions in any given case, with additional submissions being considered only in response to a successful petition. For instance, applicants might be limited to the lesser of 20 references or 200 pages. A petition to consider additional submissions would be granted only upon a persuasive showing, which would include at a minimum a unique description of the additional submissions and a discussion of their relevance to the claims. To help make petitions unusual rather than routine, the filing fee for each petition to consider additional IDS submissions would also be significant.

Unless the Office imposes a limit on the amount of IDS submissions, practitioners will have little choice but to continue to submit materials that the Office views as questionable, because doing otherwise leaves the patent (and the practitioner) open to attack during litigation. Merely requiring a description for additional submissions, or merely imposing an extra fee on additional submissions (as has been suggested elsewhere) will not prevent prudent practitioners from continuing to submit all materials which have even remotely arguable relevance. Only an IDS size limit which is imposed by the Office, and strictly enforced by the Office, will reduce the size of IDS submissions.

Please note that I have not attempted to determine whether the Office has authority to impose such a limit.


John W. L. Ogilvie

Reg. No. 37,987

United States Patent and Trademark Office
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Last Modified: 7/4/2009 4:56:06 PM