[Patentpractice] FW: USPTO Response to Inquiry About Changes to IDS Forms

[Pamela Brisky (Fujitsu)]

Hi Listmates:

Passing on the response from the USPTO that I received about the new IDS forms.

Pam

From: Patent Practice <PatentPractice at USPTO.GOV>
Sent: Monday, December 23, 2024 5:29 AM
To: Brisky, Pamela <pbrisky at fujitsu.com>
Subject: RE: Inquiry About Changes to IDS Forms

Thank you for your inquiry. The forms will be available for use on January 19.


From: Pamela Brisky (Fujitsu) <pbrisky at fujitsu.com<mailto:pbrisky at fujitsu.com>>
Sent: Wednesday, December 11, 2024 2:20 PM
To: Patent Practice <PatentPractice at USPTO.GOV<mailto:PatentPractice at USPTO.GOV>>
Cc: FPC-atty-agent at fujitsu.com<mailto:FPC-atty-agent at fujitsu.com>
Subject: Inquiry About Changes to IDS Forms

CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE SOURCE before responding, clicking on links, or opening attachments.

Good afternoon:

Will the patent center versions of the IDS form SB/08A be updated to include the mandated fee statements discussed at 89 FR 91925, Section 8, as follows:

Additionally, the USPTO is amending § 1.98(a) to include a new content requirement for an IDS that will facilitate implementation of the IDS size fee. Specifically, the USPTO is requiring that an IDS contain a clear written assertion by the applicant and patent owner that the IDS is accompanied by the appropriate IDS size fee or that no IDS size fee is required. This assertion is necessary because it ensures the record is clear as to which fee the applicant or patent owner believes may be due (or that no fee may be due) with the IDS so the examiner can promptly ascertain whether the IDS is compliant. There is no specific language required for the written assertion, but it should be readily identifiable on the IDS and clearly convey the applicable IDS size fee by specifying the particular paragraph in § 1.17(v) that applies ( e.g., “the fee due under 1.17(v)(2)”), if any.

If so, will the forms be available before the fee changes effective Jan 19, 2025?

Thank you in advance for your help with this matter.

Pamela Cei Brisky
Senior Patent Paralegal
Fujitsu Intellectual Property Center
Fujitsu North America, Inc.
(571) 216-2112
pbrisky at fujitsu.com<mailto:pbrisky at fujitsu.com>

[A dog wearing a winter hat sitting next to a snowman built on a sledge, with a red and magenta box containing a message saying: “Have a paws-itively Merry Christmas!”.]





-------------- next part --------------
An HTML attachment was scrubbed...
URL: <http://oppedahl-lists.com/pipermail/patentpractice_oppedahl-lists.com/attachments/20241223/6fdefb02/attachment.html>
-------------- next part --------------
A non-text attachment was scrubbed...
Name: image001.jpg
Type: image/jpg
Size: 150395 bytes
Desc: image001.jpg
URL: <http://oppedahl-lists.com/pipermail/patentpractice_oppedahl-lists.com/attachments/20241223/6fdefb02/attachment.jpg>