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John G. Smith, Drinker Biddle & Reath LLP - United States Patent ...

John G. Smith, Drinker Biddle & Reath LLP - United States Patent ...

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37 CFR § 1.97(e)(2)(e)A statement under this section must state . . .(2)[t]hat no item of information contained in the informationdisclosure statement was cited in a communication from aforeign patent office in a counterpart foreign application, and, tothe knowledge of the person signing the certification aftermaking reasonable inquiry, no item of information contained inthe information disclosure statement was known to anyindividual designated in § 1.56(c) more than three months priorto the filing of the information disclosure statement.The Narrow Scope of Current 37 CFR § 1.97(e): A Root Cause of Numerous RCE Filings | March 6, 2013 4


Difficulties in Making a Proper Statement under 37 CFR § 1.97(e)(1)• Limited to communications from a foreign patent office in acounterpart foreign application• does not extend to related or counterpart U.S. (or PCT?) applications• arguably may not extend to the foreign communications themselves• Counterpart foreign application vaguely defined (see above)• Concerns about later allegations of inequitable conduct• Particularly problematic in cases where a family of relatedU.S. applications are being prosecuted simultaneouslyThe Narrow Scope of Current 37 CFR § 1.97(e): A Root Cause of Numerous RCE Filings | March 6, 2013 7


Proposed Changes in Office Procedure(s) orRegulation(s) that would Reduce the Need to File RCEs• Updating the language of 37 CFR 1.97(d) as proposed below• The relatively higher fee for proceeding under below-proposed37 CFR 1.97(d)(3) would encourage applicants to file IDSs inaccordance with 37 CFR 1.97(d)(1)/(2) - i.e., by making a 37CFR 1.97(e) statement plus paying the § 1.17(p) fee - wheneverpossible• If not possible, applicants could opt to proceed under belowproposed37 CFR 1.97(d)(3)• Could be expanded to address IDS filings after issue feepayment (by QPIDS program, for example)The Narrow Scope of Current 37 CFR § 1.97(e): A Root Cause of Numerous RCE Filings | March 6, 2013 10


Other Option(s)• Amend 37 CFR 1.97(e)• Either during current RCE outreach orduring upcoming IDS practice revisionsThe Narrow Scope of Current 37 CFR § 1.97(e): A Root Cause of Numerous RCE Filings | March 6, 2013 12


Thank youThe Narrow Scope of Current 37 CFR § 1.97(e): A Root Cause of Numerous RCE Filings | March 6, 2013 13

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