Changes To Information Disclosure Statement Requirements and Other Related Matters, 38808-38823 [06-6027]

Agencies

• DEPARTMENT OF COMMERCE
• Patent and Trademark Office

[Federal Register Volume 71, Number 131 (Monday, July 10, 2006)]
[Proposed Rules]
[Pages 38808-38823]
From the Federal Register Online via the Government Printing Office [www.gpo.gov]
[FR Doc No: 06-6027]


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DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Part 1

[Docket No.: PTO-P-2005-0024]
RIN 0651-AB95


Changes To Information Disclosure Statement Requirements and 
Other Related Matters

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Notice of proposed rulemaking.

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SUMMARY: The United States Patent and Trademark Office (Office) is 
proposing changes to information disclosure statement (IDS) 
requirements and other related matters to improve the quality and 
efficiency of the examination process. The proposed changes will enable 
the examiner to focus on the relevant portions of submitted information 
at the very beginning of the examination process, give higher quality 
first actions, and minimize wasted steps. The Office is proposing the 
following changes relating to submissions of IDSs by applicants/patent 
owners: Before a first Office action on the merits, require additional 
disclosure for English language documents over twenty-five pages, for 
any foreign language documents, or if more than twenty documents are 
submitted, but documents submitted in reply to a requirement for 
information or resulting from a foreign search or examination report 
would not count towards the twenty document limit; permit the filing of 
an IDS after a first Office action on the merits only if certain 
additional disclosure requirements have been met; and eliminate the 
fees for submitting an IDS. Updates to the additional disclosure 
requirements would be required as needed for every substantive 
amendment. The Office is also proposing to revise the protest rule to 
better set forth options that applicants have for dealing with 
unsolicited information received from third parties.

DATES: To be ensured of consideration, written comments must be 
received on or before September 8, 2006. No public hearing will be 
held.

ADDRESSES: Comments should be sent by electronic mail over the Internet 
addressed to: AB95.comments@uspto.gov. Comments may also be submitted 
by mail addressed to: Mail Stop Comments-Patents, Commissioner for 
Patents, P.O. Box 1450, Alexandria, VA 22313-1450; or by facsimile to 
(571) 273-7707, marked to the attention of Hiram H. Bernstein. Although 
comments may be submitted by mail or facsimile, the Office prefers to 
receive comments via the Internet.
    Comments may also be sent by electronic mail message over the 
Internet via the Federal eRulemaking Portal. See the Federal 
eRulemaking Portal Web site (https://www.regulations.gov) for additional 
instructions on providing comments via the Federal eRulemaking Portal.
    The comments will be available for public inspection at the Office 
of Patent Legal Administration, Office of the Deputy Commissioner for 
Patent Examination Policy, currently located at Room 7D74 of Madison 
West, 600 Dulany Street, Alexandria, Virginia, and will be available 
through anonymous file transfer protocol (ftp) via the Internet 
(address: https://www.uspto.gov). Because comments will be made 
available for public inspection, information that is not desired to be 
made public, such as an address or phone number, should not be included 
in the comments.

FOR FURTHER INFORMATION CONTACT: Hiram H. Bernstein ((571) 272-7707), 
Senior Legal Advisor, Office of Patent Legal Administration, Office of 
the Deputy Commissioner for Patent Examination Policy; or Robert J. 
Spar ((571) 272-7700), Director of the Office of Patent Legal 
Administration, Office of the Deputy Commissioner for Patent 
Examination Policy, directly by phone, or by facsimile to (571) 273-
7707, or by mail addressed to: Mail Stop Comments-Patents, Commissioner 
for Patents, P.O. Box 1450, Alexandria, VA 22313-1450.

SUPPLEMENTARY INFORMATION: The Office is proposing changes to the rules 
of practice in title 37 of the Code of Federal Regulations (CFR) to 
revise IDS practice. The Office is specifically proposing changes to 
Sec. Sec.  1.17, 1.48, 1.55, 1.56, 1.97, 1.98, 1.99 1.291, 1.312, 
1.555, and 1.948.
    The Office will post a copy of this notice on its Internet Web site 
(https://www.uspto.gov). Additionally, individuals or organizations that 
need a copy for the purpose of providing comments, may send a request 
by phone or e-mail to Terry Dey at ((571) 272-7730 or 
terry.dey@uspto.gov) to receive an e-mail copy of the notice. When 
making a request for an e-mail copy, it is requested that persons 
please specify whether they wish to receive the document in MS-Word, 
WordPerfect, or HTML format.
    The following definitions are intended to facilitate an 
understanding of the discussion of the proposed rules.

[[Page 38809]]

The words ``information,'' ``citation'' and ``document'' are used to 
describe any item of information listed in an IDS. Unless otherwise 
indicated, the term ``applicant'' is intended to cover the ``patent 
owner'' in regard to submissions of IDSs in ex parte or inter partes 
reexaminations. The words ``Sec.  1.56(c) individual'' are intended to 
cover all parties identified in Sec.  1.56(c).
    Background and Rationale: Persons associated with a patent 
application have a duty to disclose certain information to the Office. 
This duty was codified as Sec.  1.56 in 1977. Pursuant to Sec.  
1.56(a), each individual associated with the filing and prosecution of 
a patent application must disclose to the Office ``all information 
known to that individual to be material to patentability.'' It must be 
emphasized that there is no duty to disclose information to the Office 
if the information is not material. As a companion to Sec.  1.56, 
Sec. Sec.  1.97 and 1.98 were added to provide ``a mechanism by which 
patent applicants may comply with the duty of disclosure provided in 
Sec.  1.56.'' See Manual of Patent Examining Procedure Sec.  609 (8th 
ed. 2001) (Rev. 3, August 2005) (MPEP).
    Although Sec.  1.56 clearly imposes a duty to disclose material 
information, that rule neither authorizes nor requires anyone to file 
unreviewed or irrelevant documents with the Office. Such documents add 
little to the effectiveness of the examination process and, most 
likely, negatively impact the quality of the resulting Office 
determinations.
    One goal of the changes proposed in this notice is to enable an 
examiner to identify the most relevant prior art in an efficient and 
expeditious manner, even when an IDS containing a large number of 
documents is submitted. The changes proposed in this notice accomplish 
this by requiring in certain circumstances additional disclosure about 
documents cited in an IDS. Applicants and their representatives are 
reminded that the presentation of an IDS, like any other paper filed in 
the Office, is subject to the provisions of Sec.  10.18. The reasonable 
inquiry mandated by Sec. Sec.  10.18(b)(2) and 10.18(b)(2)(i) requires 
that information in an IDS be reviewed to assure its submission does 
not cause unnecessary delay or needlessly increase the cost of 
examination. Failure to review can also implicate obligations of 
registered practitioners under Sec. Sec.  10.23(b) and (c), and Sec.  
10.77(b). Likewise, when an IDS includes several documents of marginal 
relevance, combined with other evidence suggesting that the marginally 
relevant information was submitted with the intent to obscure material 
information, this may run afoul of the duty of candor and good faith 
set forth in Sec.  1.56(a). In such circumstance, an inference that the 
applicant or their representative attempted to cover up or conceal a 
material reference could be drawn. See Sec.  10.18(b); and see Molins 
PLC v. Textron, Inc., 48 F.3d 1172, 1184, 33 USPQ2nd 1823, 1831 (Fed. 
Cir. 1995) (``burying a particularly material reference in a prior art 
statement containing a multiplicity of other references can be 
probative of bad faith'').
    Current IDS requirements are ineffective: Current Sec. Sec.  1.97 
and 1.98 do not encourage applicants to bring the most relevant 
information to the attention of the examiner early in the examination 
process, at least, in part, because applicants and practitioners 
mistakenly believe that people associated with a patent application 
must submit questionably or marginally relevant documents in order to 
ensure compliance with the Sec.  1.56 duty of disclosure. A limited 
amount of time is available for an examiner's initial examination of 
the application, which includes at least a mandatory cursory review of 
each document cited. Thus, when large IDSs are submitted without any 
identification of relevant portions of documents, some of the 
examiner's limited time is diverted to consider the cited documents, 
and efforts to perform a quality examination may be adversely affected. 
This is especially true when the submission includes irrelevant or 
marginally relevant documents, and the situation is worsened when a 
large number of the documents are irrelevant, marginally relevant, or 
cumulative. It appears that applicants sometimes file large collections 
of information for the examiner's review without having first reviewed 
the information themselves for relevance in the mistaken belief that 
such action is permitted under the current rules. If irrelevant 
information is filtered out before an IDS is filed, the examiner will 
be able to focus upon the more relevant information, and perform a more 
efficient, effective examination.
    The effectiveness and quality of the examination process, as well 
as the resulting patentability determinations, stand to improve if the 
most pertinent information about the invention is before the examiner 
during examination, and especially before the first Office action. 
Early submission of pertinent information by the applicant goes hand in 
hand with an examiner's prior art search in making sure that the goals 
of improving the effectiveness and quality of the examination process, 
and the resulting patentability determinations, are achieved. The 
Office recognizes, however, that sometimes not all pertinent 
information is available for submission prior to the first Office 
action on the merits. Therefore, to allow for such circumstances while 
still achieving these goals, the later a document is submitted during 
the prosecution process, the greater the amount of additional 
disclosure that the applicant will be required to provide. The Office 
is proposing a structure for filing IDSs that will enable applicants to 
provide meaningful information to the examiner in the most effective 
and efficient manner.
    Elimination of fee requirements (Sec.  1.17(p)): The fee 
requirement under Sec.  1.17(p) for submitting an IDS is proposed to be 
eliminated. Under current Sec.  1.97, an applicant can delay the 
examiner's receipt of relevant information until after the initial 
stage of examination by simply paying the fee under Sec.  1.17(p). 
Under the proposed rules, an applicant wishing to submit an IDS after a 
first Office action on the merits and before the mailing date of a 
notice of allowability or a notice of allowance under Sec.  1.311 could 
only do so if applicant meets the certification requirements under 
Sec.  1.97(e)(1) (that the information was discovered as a result of 
being cited by a foreign patent office in a counterpart application and 
is being submitted to the Office within three months of its citation by 
the foreign patent office), or applicant complies with applicable 
additional disclosure requirements.
    The current requirements under Sec. Sec.  1.97 and 1.98 for 
submitting an IDS after a notice of allowance are proposed to be 
revised by providing two windows, one before, or with, and one after, 
payment of the issue fee. Submission of an IDS during either of these 
two windows will require compliance with heightened additional 
disclosure requirements (compared to those required for submissions 
after a first Office action but prior to a notice of allowance or 
notice of allowability), which will depend upon whether a current claim 
is unpatentable in view of the information in the newly submitted IDS.
    Threshold number of cited information: Under the proposed rules, 
when an applicant submits an unusually large amount of information 
before a first Office action, the applicant must help to ease the 
burden on the Office associated with the examiner's consideration of 
the information. The Office has surveyed, across all technologies, 
3,084 small entity applications and 9,469 non-small entity 
applications, covering a six-week period of allowed applications to 
determine the

[[Page 38810]]

appropriate threshold number of cited information. In this survey, 
which includes all IDSs submitted at any time during the prosecution 
process of an application, approximately eighty-five percent of the 
sample included twenty or fewer submitted documents, while eighty-one 
percent of applications included fifteen or fewer submitted documents. 
Thus, the Office has determined that for IDSs submitted prior to a 
first Office action on the merits, a threshold of twenty documents best 
balances the interests of the Office and of the applicants. It should 
be noted that a threshold of twenty documents for IDSs submitted prior 
to a first Office action on the merits would not require a change in 
practice for most applications. The Office expects that more than 
eighty-five percent of IDSs filed prior to first Office action on the 
merits would not require any explanation because the threshold number 
only applies to IDSs filed prior to first Office action and has certain 
exceptions, while the above-mentioned survey included all IDSs filed 
throughout the entire prosecution of the application with no 
exceptions. The threshold of twenty cited pieces of information is 
deemed adequate, particularly in view of the fact that documents 
resulting from a foreign search or examination report when accompanied 
by a copy of the foreign search or examination report, would be 
excepted (not counted toward the threshold number). In addition, 
documents submitted in reply to a requirement for information under 
Sec.  1.105 would also be excepted.
    Additional Disclosure Requirements: The Office is proposing 
additional disclosure requirements for some IDS submissions to promote 
effective and efficient examination. First, for applications in which 
twenty or fewer documents have been cited in one, or more IDS prior to 
a first Office action on the merits, an explanation is required only 
for English-language documents over twenty-five pages, and for non-
English-language documents of any length. Second, for applications in 
which more than twenty total documents have been cited in one, or more, 
IDS prior to a first Office action on the merits, an explanation is 
also required for each cited document. The required explanation must 
identify information in each document that is relevant to the claimed 
invention or supporting specification. These required explanations are 
intended to provide meaningful information to the examiner when a large 
IDS, considering all IDSs cumulatively which are filed within this 
window of time, is presented before a first Office action on the merits 
has been given.
    More extensive disclosure requirements would apply to IDS 
submissions after a first Office action on the merits. Thus, applicant 
would be required to provide a non-cumulative description as well as an 
explanation, or a copy of a recently issued foreign search or 
examination report, for each document submitted after a first Office 
action on the merits. Where an IDS is filed after the mailing date of a 
notice of allowability or a notice of allowance under Sec.  1.311, 
applicant would be required to provide an appropriate patentability 
justification, which includes the explanation and non-cumulative 
description required after a first Office action, and reasons why the 
claims are patentable over the cited document(s).
    If an applicant presents unusually long documents, foreign-language 
documents, or a large number of documents, more than a brief review by 
the examiner is likely to be needed to reveal the most pertinent 
portions of the documents. In such situations, the applicant's help is 
needed so that the examiner may provide the best and most efficient 
examination possible. Therefore, the proposed amended rules require 
that in appropriate cases applicants must provide additional 
disclosure, such as an identification of a portion of a document that 
caused it to be cited, and an explanation of how the specific feature, 
showing, or teaching of the document correlates with language in one or 
more claims. In those rare instances, where the specific feature, 
showing, or teaching cannot be correlated to a claim limitation, 
correlation to a specific portion of the supporting specification would 
be required.
    If an applicant presents cumulative information, review of such 
information would waste examiner resources. Accordingly, an IDS must 
not cite documents that are merely cumulative of other cited 
information or supply information merely cumulative of what is already 
present in the record. To aid in compliance with this prohibition, 
applicants are required to submit a non-cumulative description for IDSs 
submitted after a first Office action and after allowance. A non-
cumulative description is one that describes a disclosure in the cited 
document that is not present in any other document of record.
    Thus, while there may be substantial overlap between a currently 
cited document and a document previously of record, the currently cited 
document must include a teaching, showing, or feature not provided in 
other documents of record, and the non-cumulative description must 
point this out.
    Examiner's consideration of information: Documents submitted in an 
IDS are reviewed in the same manner as items of information obtained by 
the examiner from other sources. That is, a document is given an 
initial brief review in order to determine whether it warrants a more 
in-depth study. Two indicators of the need for a more thorough review 
are: (1) That the document has been applied in a rejection, or 
specifically commented on by an examiner, in a case drawn to the same 
or similar subject matter; or (2) that the document has been 
particularly described by the applicant and its relevance to the 
claimed invention and/or supporting specification clarified. This 
practice reflects the practical reality of patent examination which 
affords the examiner a limited amount of time to conclude all aspects 
of the examination process.
    Unsolicited information supplied to applicants by third parties: 
Some applicants receive large amounts of unsolicited information from 
third parties, sometimes accompanied by an allegation that the 
information is relevant to particular technologies or applications. 
Currently, many applicants simply submit such information to the Office 
via an IDS. The Office is proposing to avoid the burdens to both the 
Office and applicants occasioned by this practice by clarifying that 
applicant may opt to provide written consent to the filing of a protest 
by the third party based on such information, thus shifting the 
explanation burden back to the third party.
    Conclusion: The Office believes that the proposed changes will 
enhance the examination process for both examiners and applicants. 
Ensuring a focused and thorough examination is a joint responsibility 
of the examiner and the applicant, particularly as examination is not 
seen by the Office as an adversarial process. The proposed changes 
provide an incentive to the applicant to cite only the most relevant 
documents, and are designed to provide the examiner with useful and 
relevant information early in the examination process. All parties 
involved with, or affected by, the patent system want the patent 
examination system to ``get it right'' the first time. Concentrating 
the patent examiner's review on the information most pertinent to 
patentability prior to a first Office action on the merits will 
significantly help in achieving this goal.

[[Page 38811]]

Discussion of the Specific Rules

    Title 37 of the Code of Federal Regulations, Part 1, is proposed to 
be amended as follows:
    Section 1.17: Section 1.17(h) is proposed to be amended to provide 
a petition fee for a petition to withdraw a reexamination proceeding 
from the publication process under Sec.  1.98(a)(3)(iii)(B). This 
proposed amendment reflects that there is no withdrawal of a 
reexamination proceeding from issue available under Sec.  1.313; thus, 
a petition to withdraw a reexamination proceeding from the publication 
process would be filed under Sec.  1.98(a)(3)(iii)(B), not under Sec.  
1.313.
    Section 1.17(p) is proposed to be revised to delete the IDS fee 
requirements in Sec. Sec.  1.97(c) and (d), as a conforming change.
    Section 1.48: Section 1.48 is proposed to be amended in the title, 
paragraph (h), and by the addition of paragraph (k), including (k)(1) 
through (k)(3), to address a change in the order of inventors' names, 
and a change in the spelling, or updating of an inventor's name in 
pending or abandoned applications.
    Section 1.48(h) would be revised to clarify the exclusion of 
correction of inventorship via reexamination or reissue under Sec.  
1.48. This exclusion of reexamination is analogous to the exclusion of 
correction of inventorship in patents under Sec.  1.48 clarified by 
Sec.  1.48(i).
    Section 1.48(k) would require that the requests pursuant to Sec.  
1.48(k) be accompanied by a processing fee of $130.00 pursuant to Sec.  
1.17(i) for non-provisional applications, or $50.00 pursuant to Sec.  
1.17(q) for a provisional application (where applicable). Additionally, 
each request pursuant to Sec.  1.48(k) should also be accompanied by a 
supplemental application data sheet, pursuant to Sec.  1.76, for 
changes in a nonprovisional application. The concomitant submission of 
a supplemental application data sheet pursuant to Sec.  1.76 with a 
request pursuant to Sec.  1.48(k) is strongly advised as the best means 
to ensure that the Office will recognize such requested change, 
particularly after the mailing of a notice of allowance, when such 
information is needed for printing inventorship information on the face 
of any patent to issue. The requests permitted under Sec.  1.48(k) are 
limited to non-reissue applications and do not cover issued patents, 
which would require that a certificate of correction procedure be used. 
Thus, Sec.  1.48(k) is not applicable to reissue applications or 
reexamination proceedings. A newly executed Sec.  1.63 oath or 
declaration is not required. The submission of a newly executed Sec.  
1.63 declaration would not be effective; rather, applicant must proceed 
via Sec.  1.48(k) to effectuate the changes permitted by this 
provision.
    Section 1.48(k)(1) would provide that the order of the inventors' 
names may be changed to another specified order, except in provisional 
or reissue applications. Currently, such requests would generally be 
done by petition under Sec.  1.182 with a petition fee of $400. MPEP 
Sec.  605.04(f).
    Section 1.48(k)(2) would provide a means to change the spelling of 
an inventor's name in either a provisional or nonprovisional 
application. Currently, such requests, other than typographical or 
transliteration errors, would be done in nonprovisional applications by 
petition under Sec.  1.182 and a petition fee of $400.00. See MPEP 
Sec.  605.04(b). Section 1.48(k)(2) would cover all requests for a 
spelling change, including typographical errors (made by applicant) and 
transliteration errors. This would eliminate the time consuming back 
and forth correspondence as to whether a change in spelling was in fact 
a typographical or transliteration error, or whether a petition has to 
be filed, particularly as many requests for change in spelling are 
attempted to be submitted under the umbrella of typographical or 
transliteration errors when clearly they are not.
    Section 1.48(k)(3) would provide a means to update an inventor's 
name (e.g., changed due to marriage) when it has changed after the 
filing of an application (excluding reissue applications). A request 
for updating an inventor's name must be accompanied by: (i) An 
affidavit signed with both names and setting forth the procedure 
whereby the change of names was effected; or (ii) a certified copy of a 
court order for name change. Such change in name is currently 
accomplished by the filing of a petition under Sec.  1.182 and a 
petition fee of $400. MPEP Sec.  605.04(c). Where an inventor's name 
was changed prior to the filing of an application, yet the old name was 
utilized in an executed Sec.  1.63 declaration, a petition under Sec.  
1.48(a) would be required.
    Section 1.55: Section 1.55(a)(2) is proposed to be amended to be 
consistent with the proposed changes to Sec.  1.312, which provides an 
expanded opportunity for applicants to have entered certain technical 
amendments after the close of prosecution in an allowed application 
without withdrawal of the application from issue. Specifically, under 
the proposed changes to Sec.  1.312(a)(2), a foreign priority claim 
made after the payment of the issue fee may be included in the patent 
if submitted in sufficient time to allow the patent to be printed with 
the priority claim and a petition to accept an unintentionally delayed 
priority claim pursuant to Sec.  1.55(c) has been filed (if required) 
and granted. In addition, Sec.  1.312(b) is proposed to be amended to 
provide that if the patent does not include the amendment filed after 
payment of the issue fee, the amendment would not be effective unless 
the patent is corrected by a certificate of correction under 35 U.S.C. 
255 and Sec.  1.323. See the proposed changes to Sec. Sec.  1.312(a)(2) 
and (b).
    Accordingly, the last sentence of Sec.  1.55(a)(2) is proposed to 
be amended to delete the phrase ``but the patent will not include the 
priority claim unless corrected by a certificate of correction under 35 
U.S.C. 255 and Sec.  1.323'' and to insert a new last sentence, ``If 
the patent did not publish with the priority claim, the amendment 
adding the priority claim will not be effective unless corrected by a 
certificate of correction under 35 U.S.C. 255 and Sec.  1.323.'' The 
change in language in Sec.  1.55 is for conformance with the changes 
proposed to Sec.  1.312. The current language being replaced in Sec.  
1.55 presumes that a priority claim filed after the date the issue fee 
is paid will not be entered and will not, therefore, be effective and 
the addition of a priority claim must therefore be treated as a 
certificate of correction after the patent has issued. The proposed 
amendment to Sec.  1.312 would permit the entry of a priority claim 
after the issue fee has been paid, provided it is submitted in 
sufficient time to allow the priority claim to be printed on the face 
of the patent and a grantable petition under Sec.  1.55(c) to accept an 
unintentionally delayed priority claim is filed, if required. 
Accordingly, the new language to Sec.  1.55 addresses the situation 
where sufficient time was not present to allow printing of the priority 
claim on the face of the patent and the amendment adding the priority 
claim must be corrected by certificate of correction.
    Section 1.56: Section 1.56 is proposed to be amended by the 
addition of paragraph (f) that would provide a ``safe harbor'' for a 
Sec.  1.56(c) individual who, in good faith and to the best of the 
person's knowledge, information and belief, formed after a reasonable 
inquiry under the circumstances, took reasonable steps to comply with 
the additional disclosure requirements of Sec.  1.98(a)(3). While the 
proposed amendment to Sec.  1.56 may not act as a

[[Page 38812]]

complete defense in all situations, particularly as the court is not 
bound by any one duty of disclosure standard established by the Office, 
the Office is hopeful that a court in deciding a duty of disclosure 
issue will take the proposed safe harbor into account.
    Section 1.97: Section 1.97(a) is proposed to be amended to reflect 
the applicability of Sec.  1.97 to reexamination proceedings and to add 
other clarifying language.
    Sections 1.97(b), (c), (d)(1), and (d)(2) would identify four time 
periods for submission of information disclosure statements (IDSs). 
Section 1.98(a)(3) would set forth ``Additional disclosure 
requirements'' specific to each time period that must be met for 
submission of IDSs during each of these time periods.
    Section 1.97(b) would identify a ``First time period'' for 
submitting IDSs, with paragraphs (b)(1) through (b)(3) reciting the 
current periods for submitting an IDS within three months from the 
filing date of a national application or entry of the national stage, 
or before the mailing of a first Office action, or within three months 
of the filing of a reexamination. The expression ``filing date'' means 
the actual filing date of the application and does not include filing 
dates for which a benefit is claimed under 35 U.S.C. 119, 120, 121, or 
365. Thus, an IDS may be submitted within three months of the actual 
filing date of a continuation, divisional, or continuation-in-part 
application pursuant to Sec.  1.97(b)(1).
    Section 1.97(b)(1) is also proposed to be amended to add ``35 
U.S.C. 111(a),'' the statutory basis for the recited national 
application.
    Section 1.97(b)(4) is proposed to be deleted. Any IDS filed with a 
request for continued examination under Sec.  1.114 (RCE), or after an 
RCE is filed but before a first Office action is mailed in the RCE, 
would need to comply with the time requirements of Sec. Sec.  1.97(c) 
or (d), whichever is applicable.
    Section 1.97(c) would identify a ``Second time period'' for 
submitting IDSs and would apply to IDSs filed after the period 
specified in paragraph (b) of this section, and before the earlier of 
the mailing of a notice of allowability or a notice of allowance under 
Sec.  1.311 for an application, or the mailing of a Notice of Intent to 
Issue Reexamination Certificate (NIRC) for a reexamination proceeding.
    Currently, a second time period for submission of IDSs pursuant to 
Sec.  1.97(c) permits submission of an IDS in an application simply by 
payment of a fee or by compliance with the statements provided by Sec.  
1.97(e), relating to discovery of the information within three months 
of its submission to the Office. The proposed ``Second time period,'' 
Sec.  1.97(c), would eliminate the fee payment option, while retaining 
a Sec.  1.97(e)(1) option. Applicants/patent owners, in proposed Sec.  
1.98(a)(3)(ii), would be offered an additional option, other than 
compliance with Sec.  1.97(e)(1), provided the applicant/patent owner 
is willing to comply with additional disclosure requirements referenced 
in Sec. Sec.  1.98(a)(3)(iv) and (a)(3)(v).
    The references, in current Sec.  1.97(c), to a final action under 
Sec.  1.113 or actions that otherwise close prosecution, are 
unnecessary and thus deleted. IDSs that are submitted after close of 
prosecution, such as after a final rejection, are inherently included 
in the expression ``submitted prior to the mailing of a notice of 
allowance.'' The Sec.  1.97 practice of treating an IDS submitted after 
a final Office action under Sec.  1.113, such as a final rejection, 
would not change other than removal of the fee requirement and would 
still continue to be considered by the examiner in the next Office 
action, as appropriate. If there is no next Office action (e.g., the 
application goes abandoned), the IDS will be placed in the file but not 
considered, as in current practice.
    Section 1.97(c) would also be amended to provide for its 
applicability to reexamination proceedings in regard to the issuance of 
a Notice of Intent to Issue a Reexamination Certificate (``NIRC'').
    Section 1.97(d)(1) is proposed to be amended to be labeled a 
``Third time period,'' and would permit consideration of an IDS filed 
in an application after the period set forth in Sec.  1.97(c) (after 
the earlier of a notice of allowability or notice of allowance), and 
before or with payment of the issue fee. Submission under the ``Third 
time period'' would be under more limited conditions than the 
conditions for submitting an IDS during the ``Second time period''; 
however, the fee under Sec.  1.17(p) would be eliminated. Because 
reexamination proceedings are not required to pay an issue fee, this 
``Third time period'' is not applicable to reexamination proceedings. 
All IDSs filed in reexamination proceedings after the NIRC will be in 
the ``Fourth time period'' defined in proposed Sec.  1.97(d)(2).
    Proposed Sec.  1.97(d)(2) would be labeled a ``Fourth time 
period,'' and would permit consideration in an application of an IDS 
filed after payment of the issue fee and in sufficient time to be 
considered by the examiner before issue of the application, under more 
limited conditions than under the ``Third time period'' pursuant to 
Sec.  1.97(d)(1). In a reexamination proceeding, this time period would 
begin when the NIRC is issued and end at issue of a Reexamination 
Certificate under Sec.  1.570 or Sec.  1.997.
    Section 1.97(e) would be amended by changing ``statement'' to 
``certification'' and ``state'' to ``certify,'' to clarify this 
requirement in light of the requirements of proposed Sec.  1.98(a)(3).
    Section 1.97(f) would be amended to contain a reference to Sec.  
1.550 and Sec.  1.956 (for reexamination proceedings).
    Section 1.97(g) would be amended to replace ``section'' with 
``Sec.  1.98.''
    Section 1.97(h) is provided merely for context and no amendments 
are proposed therein.
    Section 1.97(i) would be amended by reformatting the current 
material as paragraph (i)(1), and adding paragraph (i)(2). In addition, 
Sec.  1.97(i)(1) would contain a reference to Sec.  1.98(a)(3)(vii)(C), 
requiring meaningful compliance with the requirements for explanations, 
non-cumulative descriptions, and reasons supporting a patentability 
justification or the Office may decline to consider the information 
disclosure statement.
    Section 1.97(i)(2) would permit applicant to obtain additional time 
to complete the required information to accompany the IDS where a 
portion of the information was inadvertently omitted. The grant of 
additional time would be solely at the discretion of the Office.
    New Sec.  1.97(j) would be added to make clear that IDSs filed 
during the ``Fourth time period'' (after the issue fee is paid or the 
NIRC) would not be effective to withdraw the application from issue, 
hence the requirement in Sec.  1.98(a)(3)(iii)(B), or to withdraw a 
reexamination proceeding from the publication procedure for a 
reexamination certificate.
    Sections 1.97(a), (b)(1), (c), and (d)(2) would be amended to 
explicitly set forth the required time frames for filing an IDS in a 
reexamination proceeding. Pursuant to current Sec.  1.555(a), an IDS in 
a reexamination proceeding ``must be filed with the items listed in 
Sec.  1.98(a) as applied to individuals associated with the patent 
owner in a reexamination proceeding.'' Section 1.555(a) then sets forth 
a recommended time for filing an IDS, stating that the IDS ``should be 
filed within two months of the date of the order for reexamination, or 
as soon thereafter as possible.'' The need to obtain the best art in 
the proceeding as soon as possible is even greater in a reexamination 
proceeding than in an application, since by statute (35 U.S.C. 305, and 
314(c)) reexamination

[[Page 38813]]

proceedings are to be ``conducted with special dispatch within the 
Office.'' Accordingly, it is proposed to revise the regulatory 
statement of the time frames for IDS submissions in reexaminations by 
revising Sec. Sec.  1.97(a), (b)(1), (c), and (d)(2), thus making the 
time frames for reexaminations track the time frames for IDS 
submissions in applications. It is also proposed that Sec.  1.555(a) be 
amended to delete the optional time frame appearing therein, and to 
require the time frames set forth in Sec.  1.97, as it is proposed to 
be revised.
    Section 1.98: Section 1.98 is proposed to be substantially amended, 
including Sec.  1.98(a)(3) defining ``Additional disclosure 
requirements'' composed of: (1) Paragraphs (a)(3)(i) through 
(a)(3)(iii), which define the type of additional disclosure 
requirements to be met based on the time period of submission of the 
IDS, including the particular documents requiring the additional 
disclosure; (2) paragraph (a)(3)(iv), which defines a two-part 
explanation requirement (identification of at least a portion of a 
cited document, and correlation of the portion(s) identified to 
specific claim language or to a specific portion of the specification 
when the document is cited for that purpose); (3) paragraph (a)(3)(v), 
which defines a non-cumulative description requirement; and (4) 
paragraph (a)(3)(vi), which defines two alternative types of 
patentability justification.
    Section 1.98(a), (a)(1) and (2), and (a)(1)(i) are proposed to be 
amended for technical corrections or conforming amendments.
    Section 1.98(a)(2)(iii) is proposed to be amended to no longer 
require submission of a legible copy of each cited pending or abandoned 
U.S. application's specification, including the claims, and drawing(s) 
when the cited pending or abandoned U.S. application is stored at the 
Office in the electronic form currently referred to as the image file 
wrapper (IFW). If the cited pending or abandoned U.S. application is 
not stored in the Office's IFW, a legible copy of the application or 
the portion of the application which caused it to be cited is still 
required. In addition, even if the cited pending or abandoned U.S. 
application is stored in the Office's IFW, consideration of any portion 
of the application file outside of the specification, including the 
claims, and drawings requires that a legible copy of that portion be 
included in the IDS. This proposed amendment implements a previous 
limited waiver of the requirement in Sec.  1.98(a)(2)(iii), and also 
expands on the previous waiver by including abandoned applications in 
addition to pending applications. See Waiver of the Copy Requirement in 
37 CFR 1.98 for Cited Pending U.S. Patent Applications, 1287 Off. Gaz. 
Pat. Office 162 (Oct. 19, 2004).
    Sections 1.98(a)(3)(i) and (a)(3)(ii) are proposed to be 
significantly amended and incorporated into newly proposed Sec.  
1.98(a)(3).
    Section 1.98(a)(3) is proposed to set forth ``Additional disclosure 
requirements'' specific to each time period identified in Sec. Sec.  
1.97(b), (c), (d)(1), and (d)(2) that must be met for submission of 
IDSs during each of these time periods.
    Section 1.98(a)(3)(i) would provide that IDSs submitted within the 
``First time period'' of Sec.  1.97(b) (e.g., prior to a first Office 
action) that contain: (1) Foreign language documents (Sec.  
1.98(a)(3)(i)(A)); (2) any document over twenty-five pages excluding 
sequence listings or computer program listings (Sec.  
1.98(a)(3)(i)(B)); or (3) more than twenty documents, calculated 
cumulatively (Sec.  1.98(a)(3)(i)(C)), would be required to provide 
additional disclosure in accordance with proposed Sec.  1.98(a)(3)(iv) 
of an explanation (an identification of at least one portion causing 
the document to be cited, including a specific feature, showing, or 
teaching, and correlation to specific claim language, or where 
correlation to claim language is not possible, correlation may be made 
to a specific portion of the supporting specification), with exceptions 
set forth in Sec. Sec.  1.98(a)(3)(viii)(A) and (a)(3)(viii)(C). In 
addition, where a foreign language document is being submitted, any 
existing translation would also be required, Sec.  1.98(a)(3)(xi).
    Foreign language documents of any length would trigger the 
explanation and translation requirements. English language documents 
(non-foreign language) include: English language nonpatent literature, 
U.S. patent documents (patents and patent application publications), 
and English language foreign patent documents. Use of foreign language 
terminology or expressions such as for Latin proper names for plants 
and animals would not make an otherwise English language document a 
non-English language document. Similarly, the presence of an English 
language abstract would not make a foreign language document an English 
language document for the purpose of Sec.  1.98(a)(3)(i)(A).
    The threshold for document size is over twenty-five pages. In 
calculating documents over twenty-five pages, sequence listings, or 
computer program listings, pursuant to Sec.  1.52(e)(1) would be 
excluded (Sec.  1.98(a)(3)(i)(B)). In determining the number of pages 
of a document, all sheets of the document being submitted are counted, 
including drawing sheets and cover sheets (but not sequence listings or 
computer program listings). Applicant is permitted to submit only a 
portion of a document and is encouraged to do so where that portion can 
be considered without further context and is the only portion that is 
relevant to the claimed invention. When applicant elects to submit 
selected pages of a document, those pages will be counted to determine 
the length of the cited (partial) document and whether an explanation 
is required for that document.
    The threshold number of documents for one or more IDSs filed before 
a first Office action is twenty calculated cumulatively in a single 
application or proceeding. The threshold number of documents can be 
reached either in multiple (sequential) IDSs each containing fewer than 
the twenty trigger value, or all at once in a single IDS. Documents 
that do not comply with the timeliness requirements of Sec.  1.97, or 
the technical requirements of Sec.  1.98, (and thus may not be 
considered) would not count toward the cumulative total pursuant to 
Sec.  1.98(a)(3)(i)(C). Additionally, a document that is not compliant 
with the requirements of Sec.  1.98 would not be double counted toward 
the threshold number if it was resubmitted to cure the non-compliance. 
Accordingly, for example, an applicant who realizes that a twenty-
three-document IDS submission made prior to the mailing of a first 
Office action on the merits did not contain the required additional 
disclosure may either submit the additional disclosure for the twenty-
three documents, or withdraw three of the documents, provided such 
action is taken within the time frame of Sec.  1.97(b)(3).
    Documents that are not included in an IDS but are mentioned in the 
specification as background information would not count toward the 
threshold number. The examiner is under no obligation to review 
documents cited in the specification. See MPEP Sec.  609 III C (1), 
Noncomplying Information Disclosure Statements. Where applicant desires 
review of a particular document, that document must be cited in a 
compliant IDS.
    For continuing applications, documents of a compliant IDS in the 
prior application, which were required to be reviewed by the examiner 
therein (see MPEP Sec.  609 I, IDS IN CONTINUED EXAMINATIONS OR 
CONTINUING APPLICATIONS), would not be considered as part of the 
cumulative total in a continuing application unless they are 
resubmitted in the continuing

[[Page 38814]]

application (so that they will appear on the face of the patent that 
issues from the continuing application). In addition, all other 
documents (e.g., previous documents that were noncompliant with 
Sec. Sec.  1.97 and 1.98 and never considered by the examiner in the 
prior application) in prior applications would not be counted toward 
the threshold number in a continuing application, unless they are 
resubmitted in the continuing application.
    Section 1.98(a)(3)(i) would provide for exceptions to the 
additional disclosure requirements by reference to Sec. Sec.  
1.98(a)(3)(viii)(A) and (a)(3)(viii)(C). For IDSs submitted in the 
first time period, applicant may submit documents resulting from a 
foreign search or examination report where a copy of the report is 
submitted (Sec.  1.98(a)(3)(viii)(A)), and documents submitted in reply 
to a requirement for information pursuant to Sec.  1.105 (Sec.  
1.98(a)(3)(viii)(C)), without triggering any additional disclosure 
requirements.
    Section 1.98(a)(3)(ii) would provide that all information in IDSs 
submitted within the ``Second time period'' of Sec.  1.97(c) (e.g., 
after a first Office action and prior to the earlier of a notice of 
allowability or a notice of allowance), must be accompanied by 
additional disclosure in accordance with Sec.  1.98(a)(3)(iv) 
(explanation) and Sec.  1.98(a)(3)(v) (non-cumulative description), 
with exceptions set forth in Sec. Sec.  1.98(a)(3)(viii)(B) and 
(a)(3)(viii)(C). Additionally, when a foreign language document is 
being submitted, any existing translation would also be required, Sec.  
1.98(a)(3)(xi).
    Section 1.98(a)(3)(ii) would provide for exceptions to the 
additional disclosure requirements by reference to Sec. Sec.  
1.98(a)(3)(viii)(B) and (C). For IDSs submitted in the second time 
period, applicant may, without triggering any additional disclosure 
requirements, submit documents accompanied by a certification pursuant 
to Sec.  1.97(e)(1) and a copy of the foreign search or examination 
report (Sec.  1.98(a)(3)(viii)(B)), and documents submitted in reply to 
a requirement for information pursuant to Sec.  1.105 (Sec.  
1.98(a)(3)(viii)(C)).
    Section 1.98(a)(3)(iii) would provide that all documents submitted 
within the ``Third time period'' (e.g., after the earlier of a notice 
of allowability or a notice of allowance and prior to payment of the 
issue fee), and the ``Fourth time period'' (e.g., after payment of the 
issue fee and in sufficient time to be considered) must be accompanied 
by a certification under either Sec. Sec.  1.97(e)(1) or (2).
    Section 1.98(a)(3)(iii)(A) would provide that information submitted 
within the ``Third time period'' of Sec.  1.97(d)(1) must be 
accompanied by either of two patentability justifications pursuant to 
Sec.  1.98(a)(3)(vi)(A) (explanation, non-cumulative description and 
reasons supporting the patentability of the independent claims) or (B) 
(explanation, noncumulative description, an amendment, and reasons 
supporting the patentability of the amended claims).
    Section 1.98(a)(3)(iii)(B) would provide that information submitted 
within the ``Fourth time period'' of Sec.  1.97(d)(2) must be 
accompanied by a petition to withdraw from issue pursuant to Sec.  
1.313(c)(1), or to withdraw a reexamination proceeding from the 
publication process, and the patentability justification under Sec.  
1.98(a)(3)(vi)(B).
    Section 1.98(a)(3)(iv) would provide a definition of the 
explanation that must be submitted to meet the additional disclosure 
requirements of Sec.  1.98(a)(3). The explanation requirement consists 
of three parts, two in regard to an identification (Sec.  
1.98(a)(3)(iv)(A)) and one in regard to a correlation, Sec.  
1.98(a)(3)(iv)(B).
    Section 1.98(a)(3)(iv)(A) would provide for the identification 
portion of the explanation requirement. Section 1.98(a)(3)(iv)(A) would 
require an identification of specific feature(s), showing(s), or 
teaching(s) that caused a document to be cited. Where applicant is 
unaware of any specific relevant portion(s) of a document, that 
document should not be submitted to the Office. The bare recitation 
that a document was provided to applicant by a third party or was 
discovered during a pre-examination search is an insufficient 
identification.
    Section 1.98(a)(3)(iv)(A) would provide for the identification of a 
portion(s) of a document where the specific feature(s), showing(s), or 
teaching(s) may be found. For example, a proper identification would 
indicate, by page and line number(s), or figure and element number(s), 
where to look in the document for the portion.
    The identification requirements require applicant to identify at 
least one appearance in the document (a representative portion) of a 
specific feature, showing, or teaching for which the document is being 
cited. Where applicant is aware that such feature, showing, or teaching 
appears in more than one portion of the document, applicant would not 
need to specifically point out more than one occurrence, although 
applicant may wish to, particularly where the additional appearance may 
not be apparent to the examiner and may have some additional 
significance over its first identified appearance. Where applicant 
recognizes that a document is relevant for more than one feature, 
showing, or teaching, and is being cited for more than one feature, 
showing, or teaching, applicant would need to specifically identify 
each additional feature, showing, or teaching (and the portion where 
the feature, showing, or teaching appears in the document).
    A mere statement indicating that the entire document, or 
substantially the entire document, is relevant, would not comply, and 
may result in the examiner electing not to consider the document. Where 
applicant believes that an entire document or most portions thereof are 
relevant and caused the document to be cited, applicant may make such 
statement so long as applicant establishes such fact by sufficient 
recitation of examples from the document. Sufficiency of recitation of 
examples will vary on a case-by-case basis. Applicant should, 
therefore, be wary of not identifying at least one specific portion of 
a document since noncompliance may, if not corrected in a timely and 
proper manner, result in the document not being considered.
    Documents merely representing background information may be 
identified and discussed in the specification. There is generally 
little utility in submitting a background document as part of an IDS, 
particularly after a first Office action. In the isolated situation 
where applicant wishes to identify a purely background document after a 
first Office action on the merits, the document can be discussed as 
part of the Remarks/Arguments section of a reply to the Office action. 
Clearly, background documents can be supplied prior to a first Office 
action on the merits in an IDS without discussion where twenty or fewer 
documents are being submitted, provided that the background document is 
less than twenty-five pages, and the document is not in a foreign 
language.
    Section 1.98(a)(3)(iv)(B) would additionally require a correlation 
of the specific feature(s), showing(s), or teaching(s) identified 
pursuant to Sec.  1.98(a)(3)(iv)(A) to specific corresponding claim 
language, or to a specific portion(s) of the specification that 
provides support for the claimed invention, where the document is cited 
for that purpose. Optionally, applicant may indicate any differences 
between the specific claim language and what is shown, or taught, in 
the document. The specific claim language may be in either an 
independent claim or a dependent claim.

[[Page 38815]]

    The alternative of correlation to a specific portion of the 
specification, rather than to a specific claim, is available in the 
limited circumstances where correlation cannot be made to specific 
claim language, as the document is not cited for that purpose. The 
alternative correlation is intended to include aspects of the 
supporting specification that define claim scope or support compliance 
with requirements of the patent statutes. For example, where a document 
is submitted to identify a particular scope of a claim, such as where 
there is a means-plus-function claim limitation pursuant to 35 U.S.C. 
112, ] 6, the correlation explanation would be satisfied when drawn to 
this aspect. Additionally, where a document is being submitted that 
relates to utility of the claimed invention, compliance with the 
written description requirement, or enablement, the correlation 
explanation would be satisfied when drawn to these aspects rather than 
being drawn directly to specific claim language.
    A particular correlation between a specific feature, showing, or 
teaching of a document and an element of a claim may not be 
representative of variations of the same specific feature, showing, or 
teaching as recited in another claim. For example, a specific feature, 
showing, or teaching may be recited by certain language in one claim, 
while that specific feature, showing, or teaching may be recited by 
entirely different claim language in another claim. In such 
circumstances, in order to comply with the correlation requirement, 
applicant would need to identify one instance of each different 
recitation of the specific feature, showing, or teaching in the 
different claims.
    The correlation explanation, whether to specific claim language or 
the supporting specification, must make clear why a specific feature, 
showing, or teaching in a document that is being correlated to the 
claimed invention, actually correlates thereto.
    The Office does not contemplate that complying with the 
identification and correlation of additional requirements will require 
an extensive submission. The Office believes that, in most cases, a 
compliant submission would include several sentences that: identify a 
specific feature, showing, or teaching causing submission of a document 
(e.g., rotary pump, element 32), identify the portion of the document 
where the feature, showing, or teaching may be found (e.g., Figure 3 in 
Patent A), and correlate the specific feature, showing, or teaching to 
specific claim language (e.g., the rotary pump in Figure 3, element 32 
of Patent A correlates to the rotary pump in claim 1 of the 
application).
    Applicant's attempted correlation of a specific feature, showing, 
or teaching in a document may not, for example, be readily recognizable 
as actually correlating to identified claim language, particularly 
where such claim language may be a more generic or alternative way of 
reciting the feature, showing, or teaching. In such instances, 
applicant would need to add some explanatory material, particularly to 
avoid a possible finding of noncompliance by the examiner with the 
correlation requirement.
    Section 1.98(a)(3)(v) would define a non-cumulative description 
requirement that must accompany an IDS submission when the IDS is 
submitted in the second, third, or fourth time periods, as citation of 
merely cumulative information must be avoided, Sec.  1.98(c). The non-
cumulative description would require a description of how each document 
being submitted is not merely cumulative of any other IDS-cited 
document previously submitted, any document previously cited by the 
examiner, or any document cited under Sec. Sec.  1.99 and 1.291. The 
description may be of a specific feature, showing, or teaching in a 
document that is not found in any other document of record. The non-
cumulative description requirement for the second time period (Sec.  
1.97(c)) is subject to the exceptions set forth in Sec. Sec.  
1.98(a)(3)(viii)(B) and (a)(3)(viii)(C), while the non-cumulative 
description requirement for the third time period (Sec.  1.97(d)(1)) is 
subject to the exception set forth in Sec.  1.98(a)(3)(viii)(B).
    Section 1.98(a)(3)(vi) would define alternative patentability 
justifications (Sec. Sec.  1.98(a)(3)(vi)(A) and (a)(3)(vi)(B)), which 
would be applicable for IDSs submitted during the third time period 
(e.g., after allowance), with the Sec.  1.98(a)(3)(vi)(B) justification 
required during the fourth time period (e.g., after payment of the 
issue fee). Section 1.98(a)(3)(vi)(A) would require an explanation 
pursuant to Sec.  1.98(a)(3)(iv), a non-cumulative description pursuant 
to Sec.  1.98(a)(3)(v), and reasons why (each of) the independent 
claims are patentable over the information in the IDS being submitted 
considered together, and in view of any information already of record, 
but particularly in view of information previously used to reject the 
independent claim(s).
    The expression ``information previously used to reject'' includes 
applied prior art used in a rejection which was subsequently withdrawn 
and is no longer utilized in a pending rejection.
    A foreign search or examination report may be acceptable as the 
required explanation of patentability or the statement of 
unpatentability under either of the above requirements, respectively, 
if the report provides sufficient details to comply with Sec.  
1.98(a)(3)(vi).
    Section 1.98(a)(3)(vi)(B) is the only procedure for IDSs submitted 
in the fourth time period (after payment of the issue fee or NIRC). In 
this time period, information may be submitted only if a claim is 
unpatentable over the information being submitted either considered 
alone or in combination with information already of record. This 
patentability justification would require an explanation pursuant to 
Sec.  1.98(a)(3)(iv) of this section, a non-cumulative description 
pursuant to Sec.  1.98(a)(3)(v) of this section, and reasons why an 
amendment causes claims, admitted to be unpatentable over the 
information submitted in an IDS, to now be patentable over such 
information when considered together, and in view of any information 
already of record, but particularly in view of information previously 
used to reject such claims.
    While the alternative patentability justifications require 
consideration of certain documents, the ``reasons why'' supplied need 
only address the most relevant documents and need not discuss all the 
documents required to be considered.
    Section 1.98(a)(3)(vii) would recognize that applicant must 
meaningfully comply with the additional disclosure requirements.
    Section 1.98(a)(3)(vii)(A) would require that the explanations 
pursuant to Sec.  1.98(a)(3)(iv) must include a level of specificity 
commensurate with specifics of the feature(s), showing(s), or 
teaching(s) which caused the document to be cited. These explanations 
must not be pro forma explanations. Additionally, it would be required 
that the non-cumulative descriptions pursuant to Sec.  1.98(a)(3)(v) 
must be significantly different so as to point out why the cited 
document is not merely cumulative of any other information currently 
being filed, or previously of record.
    Section 1.98(a)(3)(vii)(B) would require that the reasons for 
patentability justification, pursuant to Sec.  1.98(a)(3)(vi), must 
address specific claim language relative to the specific feature(s), 
showing(s), or teaching(s) of the cited documents, or those already of 
record. Section 1.98(a)(3)(vii)(C) would provide that where the 
explanations or non-cumulative descriptions do not comply with Sec.  
1.98(a)(3)(vii)(A), or the reasons

[[Page 38816]]

for patentability justification do not comply with Sec.  
1.98(a)(3)(vii)(B), the Office may decline to consider the information 
disclosure statement. See also Sec.  1.97(i)(1). The examiner may 
optionally, however, choose to cite a reference contained in a non-
compliant IDS.
    Section 1.98(a)(3)(viii) would provide for three possible 
exceptions to the additional description requirements of Sec.  
1.98(a)(3).
    Section 1.98(a)(3)(viii)(A) would provide an exception pursuant to 
Sec.  1.98(a)(3)(iv) for documents submitted within the first time 
period (i.e., prior to first Office action) that result from a foreign 
search or examination report where a copy of the report is submitted 
with the IDS. A specific certification pursuant to Sec.  1.97(e) is not 
required nor must the three-month time frame be met.
    Section 1.98(a)(3)(viii)(B) would provide an exception to the 
explanation and non-cumulative description requirements when an IDS is 
submitted in the second time period (Sec.  1.97(c)) and is accompanied 
by a certification pursuant to Sec.  1.97(e)(1) and a copy of the 
foreign search or examination report.
    Section 1.98(a)(3)(viii)(C) would provide an exception to the 
explanation and non-cumulative description requirements when an IDS is 
submitted in the first (Sec.  1.97(b)) and second (Sec.  1.97(c)) time 
periods for documents submitted in reply to a requirement for 
information pursuant to Sec.  1.105.
    Section 1.98(a)(3)(ix) would provide a requirement for updating 
previous IDSs for amendments affecting the scope of the claims, other 
than examiner's amendments, submitted after an IDS. Section 
1.98(a)(3)(ix)(A) would provide that any previously provided 
explanation pursuant to Sec.  1.98(a)(3)(iv) must be reviewed and 
updated where necessary in view of subsequently filed amendments. If, 
however, no update is warranted because all previous explanations are 
still relevant and accurate, Sec.  1.98(a)(3)(ix)(B) would provide that 
a statement must be supplied to the effect that updating of the 
previous IDS is unnecessary. Failure to comply with the update 
requirements, including the need for a statement that an update is 
needed, may result in a reply containing the amendment being treated as 
not fully responsive, pursuant to MPEP Sec.  714.03, with a correction 
required.
    Section 1.98(b)(3) would be amended to replace ``inventor'' with 
``applicant'' as a technical amendment to conform to the language of 
Sec.  1.98(b)(2).
    Section 1.98(c) would be amended to require that the submission of 
merely cumulative documents be avoided, and that the Office may decline 
to consider an information disclosure statement citing documents that 
are merely cumulative. The submission of cumulative information may 
obscure other more relevant information from the examiner. MPEP Sec.  
2004, item 13. Where review of an IDS reveals the presence of a pattern 
of merely cumulative documents to such extent that the utility of 
further review of the IDS is called into question, the IDS may be 
presumed to be non-compliant, and the Office may terminate further 
review of the IDS. In such instance, on the listing of the documents, 
the examiner will initial all citations that have been considered up to 
that point, including the cumulative documents, and line through all 
other documents not yet considered. In the next Office action, the 
examiner will identify to applicant the merely cumulative documents, 
and the non-compliant status of the IDS. Applicant could choose to 
resubmit the IDS in reply to the Office action provided applicant 
complies with any additional disclosure requirements, including the 
non-cumulative description, which will aid applicant in avoiding the 
submission of merely cumulative information.
    Documents could be merely cumulative, notwithstanding the presence 
of different explanations (e.g., two documents both containing only the 
same features A and B of the claimed invention, the explanation for the 
first document is to feature A, and the explanation for the second 
document is to feature B).
    Section 1.98(d) would be amended: By replacing the reference to 
paragraph (a) with a reference to paragraph (a)(2), clarifying the 
recitations to earlier and later submitted information disclosure 
statements in paragraphs (d) and (d)(1), correcting the tense of 
``complies'' to ``complied'' in paragraph (d)(2), and making a 
conforming change by removing the reference to paragraph (c) of Sec.  
1.98, and limiting the effect of paragraph (d)(2) to paragraphs (a)(1), 
(2), and (b) of Sec.  1.98.
    Section 1.99: Section 1.99 is proposed to be amended to change the 
time period for a submission under Sec.  1.99 to within six months from 
the date of publication of the application (Sec.  1.215(a)), or prior 
to the mailing of a notice of allowance (Sec.  1.311), whichever is 
earlier. Section 1.99 currently requires that any submission Sec.  1.99 
be filed within two months from the date of publication of the 
application (Sec.  1.215(a)), or prior to the mailing of a notice of 
allowance (Sec.  1.311), whichever is earlier. Section Sec.  1.99 is 
also proposed to be amended to eliminate the provision for filing a 
belated submission under Sec.  1.99. The time period for a submission 
under Sec.  1.99 (or the time period for a protest under Sec.  1.291) 
is to limit any right of third parties to have information entered