[Patentpractice] Amendment to 37 CFR 1.98(a) - IDS reference count "fee" rule impementation

[Carl Oppedahl]

Note:  the original posting was too big for the listserv.  The would-be 
attachment (the November 20, 2024 FR notice) can be obtained here 
<https://www.federalregister.gov/documents/2024/11/20/2024-26821/setting-and-adjusting-patent-fees-during-fiscal-year-2025>.


So here is what our listmate wanted to post:


As you are likely aware, effective January 19, 2025, the USPTO is 
requiring that each IDS contain a written assertion relating to the 
cumulative number of citations made by an applicant in a patent 
application.

The count is based on the number of items listed on an IDS, not the 
number of references submitted.  Each IDS filed from 1/19 on must 
contain this assertion and must state the specific fee that is being 
submitted, if any, corresponding to the cumulative reference count.

In the attached FR notice, the USPTO stated */_it was amending 37 CFR § 
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.”/

I have not found any amendments to 37 CFR 1.98(a) outlining the content 
requirement.  Additionally, despite their prior representation to me 
(also attached), no forms have been made available to us for use.

Shouldn’t this amendment to the CFR be made BEFORE the rule is effective?

The FR notice also said that “an authorization to charge fees to a 
deposit account is not a compliant written assertion under the new § 
1.98(a) requirement, unless the authorization clearly identifies the 
particular IDS size fee that should be charged for submission of a 
particular IDS.”

/For example, language such as ‘‘the Director is authorized to charge 
the § 1.17(v)(2)* fee for the IDS submitted on July 1, 2026 to deposit 
account XX–XXXXX’’ would be a compliant written assertion because 
reference to paragraph (v)(2) particularly identifies the IDS size fee 
due, but language such as ‘‘the Director is authorized to charge any 
applicable IDS size fee to deposit account XX–XXXXX’’ would not be a 
compliant written assertion because it fails to establish which IDS size 
fee is due. General authorizations to charge fees to a deposit account 
are not compliant written assertions under the new § 1.98(a) requirement./

What new requirement is there if the CFR has not been amended?

IDS filings made after January 19 that do not include the written 
assertion or size fee will not be considered by the Examiner – only 
placed in the file.  The applicant, upon learning of the 
non-consideration may file a new IDS with the requisite assertion and 
fee submission but the *_date the new IDS is filed will be the date of 
the IDS_* for the purpose of determining §1.97 compliance.

So, here is my question … if they have not provided us with the amended 
CFR, and/or if they have not amended the CFR is this rule enforceable?

I called OPLA today and left a message asking when we would see the 
amended CFR.  I have not received a call back yet.

I am but a lowly paralegal but this seems pretty derelict on the part of 
the USPTO.  This “fee rule” seems way beyond the scope of simple fee 
setting and adds a significant burden on the applicant.  The USPTO has 
stated that the purpose of this rule is deter what they call “clearly 
irrelevant and, marginally relevant, or cumulative information.”  They 
further state that current IDS practice is “onerous for examiners and 
hinders the USPTO’s statutory obligation to timely examine applications …”

That sounds more punitive than a fee rule made in good faith, especially 
when the USPTO goes on in the FR notice to say that they tried to 
address this in 2006 but the proposal was not adopted – “instead, to 
provide some relief for examiners burdened with large IDS submissions, 
the agency began providing examiners additional time to consider large 
IDS submissions in applications.”

They then go on to claim the agency spends $10 million annually for 
examiners to consider IDS submissions.

In defense of the new requirement, the USPTO states that less than 15% 
of all applicants will have to pay the size fee for the IDS filings.  
Okay, that may be true but 100% of all applicants have to adopt the 
written assertion requirement or face the consequence of having an IDS 
going unconsidered until it is too late to certify.

What are your thoughts on this?

Can this requirement be enforced without amendments to the CFR?

Is this truly within the scope of their fee setting authority?

The complete lack of transparency leading up to this rule change feels 
like bad faith to me.  Is the PTO really getting this sloppy?

Interested in your opinion(s).

Thanks in advance,

Pam

_****

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>

_

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