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288 | PATENT IT YOURSELF The PTO considers that information is material to patentability when it is not cumulative to information already of record or being made of record in the application, and (a) it establishes, by itself or in combination with other information, a prima facie (on first sight) case of unpatentability of a claim; or (b) it refutes, or is inconsistent with, a position the applicant takes in (i) opposing an argument of unpatentability relied on by the Office, or (ii) asserting an argument of patentability. A prima facie case of unpatentability is established when the information compels a conclusion that a claim is unpatentable under the preponderance of evidence burden-of-proof standard, giving each term in the claim its broadest reasonable construction consistent with the specification. This is done before any consideration is given to evidence which may be submitted in an attempt to establish a contrary conclusion of patentability. As mentioned, you can send the IDS with your application instead of taking advantage of the three-month grace period. In this event, the names of the inventors and title of your invention are the only information you need to put at the top of Form 10-5. Don’t fill out the Certificate of Mailing at the bottom of the form. If you send it after your application is filed, you’ll know the serial number, filing date, and group art unit, and can insert them. Also, you should fill out the Certificate of Mailing at the bottom of the form. The blanks in Forms 10-5 and 10-6 are self-explanatory. Information about the Art Unit (requested in the upper right-hand corner of Form 10-6) is on your filing receipt. Before each patent number in the Foreign Patent Documents section, you may use a two-letter international country code, as indicated. The most common county codes are FR (France), JP (Japan), CN (China), GB (United Kingdom), CA (Canada), EP (Europe), and DE (Germany). In the right-hand column, headed “Pages, Columns …,” you can list any places in the document that you feel are particularly relevant, but this is optional since the pertinent rules (Rules 97 and 98) require that you merely cite the documents. If you include any non–English-language reference on Form 10-6, Rule 98(a)(3) requires that you also provide a concise explanation of its relevance on a separate paper or in the specification. I recommend that you also state how your invention, as claimed, differs physically from this reference(s). State the relevance of any non-English references, and any discussion as to how your invention differs, on Form 10-5. Fig. 10O provides an example. If you send in the IDS with the application, note this on the postcard and transmittal letter that you send with your application and don’t fill out the Certificate of Mailing at the bottom of Form 10-5. If you send it in after the application is filed, send it with a separate postcard and fill out the Certificate of Mailing. Again, address the front of the card to you; the back should read as in Fig. 10N. If you file the application by EFS-Web and include the IDS, you don’t have to send the PTO a postcard. The acknowledgment receipt you receive will list the IDS. If you file by EFS-Web and you’re a registered eFiler (or become one later), you can file the IDS via EFS-Web after you get your official filing receipt. If you file by EFS-Web and you’re not a registered eFiler, you will have to mail the IDS and cover sheet with a receipt postcard. If you haven’t followed my instructions in Chapter 6— that is, you haven’t made a search and are not aware of any prior art—as stated, you don’t have to file an IDS. The PTO won’t deny or delay your application if you don’t file an IDS. However, if they (or an infringer whom you later sue for patent infringement) discover that you knew of relevant prior art and didn’t file an IDS, your patent application or patent can be held invalid for “fraud on the PTO.” This is so even if the examiner discovers the reference you withheld and cites it in a regular Office Action. (See Fig. 10A.) In one case, a Dallas patent law firm neglected to disclose some relevant prior art to the PTO in its client’s patent application. The client got a patent and sued on it but because of the cloud the nondisclosed art cast on the patent, it had to settle the suit for far less than it would have gotten if the firm had disclosed the prior art to the PTO. The client then sued the firm and a jury awarded the client $72 million in damages for the firm’s omission! Suppose you are aware of information other than prior art that may be material to patentability—for example relevant litigation, an assertion by another person claiming to be an inventor, or a sale of a product embodying the invention before the filing date (but not before your date of invention). You have a duty to disclose this information also. You can do this with a narrative statement on a form such as Form 10-5. Also, be sure to state why the information does not negate the patentability of your invention. Information Disclosure Statement, Form PTO/SB/08 (A and B), and [insert number] References in patent application of [insert name(s) of inventor(s)], Serial No. , Filed received for filing today: Fig. 10N—Back of Postcard for Sending IDS After Filing
ChAPtER 10 | FINALING AND MAILING YOUR APPLICATION | 289 In the United States Patent and Trademark Office Serial Number: 11/123 456 Appn. Filed: 2011 Nov 11 Applicant(s): M. Goldberger & N. Briskin Appn. Title: Food chopper with convolute Blade Examiner/GAU: / 3240 Mailed: At: 2011 Dec 13, Thu Philadelphia, PA Commissioner for Patents P.O. Box 1450 Alexandria, VA 22313-1450 Sir: Information Disclosure Statement Cover Letter Attached is a completed Form PTO/SB/08(A&B) and copies of any non-U.S. patent references cited thereon. Following are comments on any non-English-language references pursuant to Rule 98: Rasmussen shows a fruit peeler with a bent guide for controlling the thickness of the fruit as it is being peeled. Gillet shows a knife mounted parallel to a space with knife that can be tilted out or in to adjust the spacing of its edge. None of the references shows a knife for making a cut of controlled depth wherein a flat-bladed knife with an elongated sharpened edge with an outward protrusion attached to the blade that is spaced back from the edge for limiting the depth of cut that can be made by said edge when it is used to cut in a direction perpendicular to the plane of the blade, as it is recited in independent claims 1 and 17, and hence their dependent claims 2 to 11 and 18 to 20. To the contrary, all of the references show guides that are mounted generally parallel to the blade for limiting the thickness of the peel that can be cut by the blade when it is used to peel in a direction parallel to its plane. Also, none of the references show any blade having a substantially right-angle bend parallel to its direction of elongation, as it is recited in independent claim 12 and its dependent claims 13 to 16. Very respectfully, Applicant(s): Enc.: PTO/SB/08(A&B) c/o: M. Goldberger, Applicant Pro Se 1901 Kennedy Blvd. Philadelphia, PA 19103 Telephone: 215-555-0362 Certificate of Mailing I certify that this correspondence will be deposited with the United States Postal Service as first class mail with proper postage affixed in an envelope addressed to: “Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450” on the date below. Date: 20 Mildred Goldberger Nathan Briskin 11 Dec 13 Mildred Goldberger , Applicant Fig. 10O—Completed IDS Cover Letter (Form 10-5 in Appendix 7)
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N O LO ® “The best roll-up-your-
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Products & Services Books & Softwar
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15th edition Patent It Yourself You
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Acknowledgments My deep thanks go t
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2 3 4 The Science and Magic of Inve
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8 9 E. Make and Sell Your Invention
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13 14 J. The Patent Laws of Other C
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Appendixes 1 2 Abbreviations Used i
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Your Legal Companion A. You Don’t
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Your Legal COMPANION | 3 D. Should
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Your Legal COMPANION | 5 E. New Mat
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C H A P T E R 4 Will Your Invention
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C H A P T E R 7 What Should I Do Ne
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Appendix 4 | Fee SCHEDULE | 475 37
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Nondisclosure Agreement 1. Parties.
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Invention Disclosure Sheet of Inven
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Form 3-4: Application Data Sheet—
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Form 3-4: Application Data Sheet—
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Positive and Negative Factors Evalu
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Consultant’s Work Agreement 1. Pa
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Searcher’s Worksheet Sheet of Inv
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Form 10-1A: Declaration for Utility
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Form 10-1A: Declaration for Utility
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In the United States Patent and Tra
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Design Patent Application—Preambl
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they may do so with the written con
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Form 16-4: Recordation Form Cover S
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Universal License Agreement 1. Part
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whether or not any royalty payment
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compensation it recovers for any su
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Bestsellers The Small Business Star
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Online Legal Forms Nolo offers a la
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Keep Up to Date 1 Go to Nolo.com/ne
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About the Author David Pressman is
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