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

[Rick Neifeld]

Scott - My update is more concise.  It currently states:
__________
 37 CFR 1.97 INFORMATION DISCLOSURE STATEMENT

___   An "X" indicates that no IDS size fee is required; that less than 51
total items submitted in IDSs during pendency.
___   An "X" indicates that an IDS size fee is required; and the
appropriate IDS size fee for submission of 51-100; 101-200; or more than
200 items, is or has previously been submitted.
_______________
Rick


On Wed, Jan 15, 2025 at 10:05 PM Scott Nielson via Patentpractice <
patentpractice at oppedahl-lists.com> wrote:

> The amendment to 1.98 is located at the end of the FR final rule notice.
> This is what it says:
>
> 10. Section 1.98 is amended by revising paragraph (a) introductory text
> and adding paragraph (a)(4) to read as follows:
> § 1.98
> Content of information disclosure statement.
> (a) Any information disclosure statement filed under § 1.97 shall include
> the items listed in paragraphs (a)(1) through (4) of this section.
> * * * * *
> (4) A clear written assertion that the information disclosure statement is
> accompanied by the applicable information disclosure statement size fee
> under § 1.17(v) or a clear written assertion that no information disclosure
> statement size fee under § 1.17(v) is required.
>
> Some of the comments in the final rule argued that the USPTO does not have
> authority to implement the rule (search the final rule for the section that
> starts with "Legal Considerations").
>
> One thing about the IDS fee is it is a "springing" fee in the sense that
> you are subject to the fee even if the next IDS you file in the application
> only lists a single reference. If you previously filed an IDS with 250
> references, then filing a new IDS with one reference will require payment
> of the full fee. If you have any IDSs you need to file, then it's probably
> best to do it before the 19th.
>
> The PTO said it would provide an updated IDS form, but I haven't seen
> anything yet. In the absence of the updated form, I added the following
> section to my IDS form to keep track of the number of items that have been
> submitted (and to add a deposit account authorization that I believe
> complies with the USPTO's requirements). I'm open to suggestions about ways
> to improve it and/or to know what others are planning to do.
>
> *Size Fee*
>
> The cumulative number of items of information cited by the applicant in
> one or more information disclosure statements during the pendency of this
> application is *[**__**]*. This number includes the items cited above but
> does not include any items that were refused consideration.
>
> Applicant states that:
>
> ¨ no size fee is required by 37 CFR 1.17(v); the cumulative number of
> items is 1–50; or
>
> ¨ the information disclosure statement is accompanied by the following
> size fee as required by 37 CFR 1.17(v):
>
> ¨ the size fee in 37 CFR 1.17(v)(1); the cumulative number of items is
> 51–100;
>
> ¨ the size fee in 37 CFR 1.17(v)(2); the cumulative number of items is
> 101–200;
>
> ¨ the amount is reduced due to previous payment of the 37 CFR 1.17(v)(1)
> fee; or
>
> ¨ the size fee in 37 CFR 1.17(v)(3); the cumulative number of items is
> more than 200;
>
> ¨ the amount is reduced due to previous payment of the 37 CFR 1.17(v)(1)
> fee; and/or
>
> ¨ the amount is reduced due to previous payment of the 37 CFR 1.17(v)(2)
> fee.
>
> The required size fee should have been paid as part of filing the
> information disclosure statement. However, if the size fee was not paid or
> the incorrect amount was paid, then the Director is authorized to charge
> the size fee above or any payment deficiency for the size fee above to
> Deposit Account No. __.
>
> *Scott Nielson*
>
> 801-660-4400
>
> ------------------------------
> *From:* Patentpractice <patentpractice-bounces at oppedahl-lists.com> on
> behalf of Carl Oppedahl via Patentpractice <
> patentpractice at oppedahl-lists.com>
> *Sent:* Wednesday, January 15, 2025 6:02 PM
> *To:* patentpractice at oppedahl-lists.com <patentpractice at oppedahl-lists.com
> >
> *Cc:* Carl Oppedahl <carl at oppedahl.com>
> *Subject:* [Patentpractice] Amendment to 37 CFR 1.98(a) - IDS reference
> count "fee" rule impementation
>
>
> 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
>
>
>
>
>
>
>
>
>
>
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>
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>


-- 
Best regards
Rick Neifeld, J.D., Ph.D.
Neifeld IP Law PLLC
9112 Shearman Street, Fairfax VA 22032
Mobile: 7034470727
Email: RichardNeifeld at gmail.com;
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