Patent It Yourself - PDF Archive

ChaPter 10 | FINALING and MAILING Your APPLICATION | 287
• Assignments: If you want to file an assignment, you
must do this through a separate part of the PTO’s
website. After you complete your electronic filing
and have your Acknowledgment Receipt, or after you
receive your official filing receipt by mail, fill in the
Serial Number of your application on the assignment,
and complete and sign the rest of the assignment. Then
convert the signed assignment to PDF and go to http://
epas.uspto.gov and follow the instructions.
Designs: To file a design application via EFS-Web,
prepare it as instructed below, except omit the postcard,
Design Application Transmittal, Fee Transmittal, and
CCPF or check. Do prepare the drawings, preamble,
specification, and claim, and prepare and sign and date the
declaration as instructed above and save these documents
as PDF files. Then proceed as in steps 1 to 14 above.
G. File the Information Disclosure
Statement Within Three Months
The PTO’s rules impose on each patent applicant a “duty
of candor and good faith” toward the PTO. This means
that all inventors (and attorneys) have a duty to disclose to
the PTO information (prior art and any other information
such as relevant litigation) of which they are aware. The
information must be of the type that might influence the
patent examiner in deciding on the patent application. (This
duty is embodied in Inventor’s Commandment 17, and
discussed in Section G above.) To comply with the “prior
art” part of Inventor’s Commandment 17, all applicants
should submit an Information Disclosure Statement (IDS)
at the time of filing the application or within the following
three months. It’s not enough to cite the prior-art references
in the Prior Art section of your specification. You must cite
them on a PTO/SB/08 form and supply copies of non-U.S.
patent references to the PTO.
Even if it weren’t required, it’s to your advantage to file
an IDS and to list as many relevant prior-art references as
possible in order to have them considered and noted by
the examiner. In this way they will be listed as “References
Cited” in the patent. This creates a presumption that the
claims of your patent are patentable over these references—
that is, you’ll have put these references behind you. You
may file the IDS with your application but I suggest that
you file the IDS afterward; this will prevent overload while
preparing your basic application.
The IDS actually consists of an IDS cover letter (Form
10-5 or PTO form SB/21) and the actual IDS (Form 10-6 (A
and B) or PTO/SB/08 (A and B), on which you list the prior
art. A filled-in sample is provided in Figs. 10O, 10P, and
10Q. (If you file via EFS-Web—discussed in Section F—you
should first fill out the PTO/SB/08 form and make PDF
copies of any non-U.S. patent references (known as Non-
Patent Literature or NPL). You will not need a cover letter
because the EFS-Web form provides its own cover letter.)
The IDS should list all prior-art references known to
the inventors (and any assignees) that are relevant to the
patentability of the application. These should include all
the references you discovered in your patentability search
(see Chapter 6), plus any other prior art of which you’re
aware, including even your own papers. In addition, the
inventors must include with the IDS a copy of each cited
non-U.S. patent reference and a discussion of the relevance
of any non–English-language references to the invention.
You must cite all references even if you discussed them
in the prior-art section of your patent application. (If you
aren’t aware of any prior art, don’t file an IDS.) You should
remove all marks and notes from any references that you
send to the PTO. If you have compiled a very large number
of references, list only those that are truly relevant (about
20 or so) and don’t include any cumulative (duplicative)
references.
If you cite a significant number of irrelevant references,
a court may hold that you tried to deceive the PTO by
burying the relevant references with a large number of
irrelevant references.
As a general rule, if you are not sure whether a reference
is relevant enough to cite, it’s best to cite it. It doesn’t cost
anything to cite an additional reference and the penalty for
not citing a relevant reference is severe—your patent can
be held invalid. One way to determine whether a reference
is relevant enough to cite as prior art in your IDS is to
consider not citing it in your IDS and then assume you
get a patent. Further assume that you sue an infringer and
they find out through discovery that you knew about the
reference. If the infringer then cites the reference to the
judge and charges you with fraud on the PTO for not citing
it, would a reasonable judge be likely to consider that the
reference was relevant enough that you should have cited it
to avoid fraud on the PTO?
Note that the PTO’s Rule 56 states that applicants should
examine the following to be sure that they disclose all
relevant prior art:
1. Prior art cited in search reports of a foreign patent
office in a counterpart application.
2. The closest information over which individuals
associated with the filing or prosecution of a patent
application believe any pending claim patentably
defines, to make sure that any material information
contained therein is disclosed to the Office.