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

Thu Jan 16 17:45:36 UTC 2025

Thanks Eileen. That's good to know. I hope the examiners are trained on these details.

Scott Nielson

801-660-4400

________________________________
From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> on behalf of Moore, Eileen M. via Patentpractice <patentpractice at oppedahl-lists.com>
Sent: Thursday, January 16, 2025 10:23 AM
To: For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com>
Cc: Moore, Eileen M. <Eileen.Moore at WolfGreenfield.com>
Subject: Re: [Patentpractice] Amendment to 37 CFR 1.98(a) - IDS reference count "fee" rule impementation

I don’t think the below yellow highlighted info about the springing fee with the example of 250 refs is correct. If you file an IDS before the 19th with 250 refs (or any number), you pay no fee. If you file an IDS with one more reference after the 19th, you will then be at 251 refs, but you still do not pay a fee because the IDS did not CAUSE (see blue highlighting) the total number of refs to exceed 200 (it was already over 200 before the rule change). I have called OPLA on this and they have confirmed this is correct and that several people have called to confirm this understanding.  It did not sound correct to me at first either but it’s how the language reads.

It is correct to say though that it is springing in the sense that if you file an IDS with 200 refs before the rule change, and then file an IDS with 201 after the rule change, you will pay the fee then because the second IDS CAUSED the cumulate number of references to exceed 200.

(v) Information disclosure statement size fee for an information disclosure statement filed under § 1.97 that, inclusive of the number of applicant-provided or patent owner-provided items of information listed under § 1.98(a)(1) on the information disclosure statement, causes the cumulative number of applicant-provided or patent owner-provided items of information under § 1.98(a)(1) during the pendency of the application or reexamination proceeding to:

(1) Exceed 50 but not exceed 100. . . . . .$200;

(2) Exceed 100 but not exceed 200. . . . . .$500, less any amount previously paid under paragraph (v)(1) of this section; and

(3) Exceed 200. . . . . .$800, less any amounts previously paid under paragraphs (v)(1) and/or (2) of this section.

From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> On Behalf Of Scott Nielson via Patentpractice
Sent: Thursday, January 16, 2025 12:04 PM
To: Rick Neifeld <richardneifeld at gmail.com>; For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com>
Cc: Scott Nielson <scnielson at outlook.com>
Subject: Re: [Patentpractice] Amendment to 37 CFR 1.98(a) - IDS reference count "fee" rule impementation

That is more concise. Do you think your statement is specific enough to authorize charging a deposit account for any deficiency or lack of payment?

Scott Nielson

801-660-4400

________________________________

From: Rick Neifeld <richardneifeld at gmail.com<mailto:richardneifeld at gmail.com>>
Sent: Wednesday, January 15, 2025 8:22 PM
To: For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com>>
Cc: Scott Nielson <scnielson at outlook.com<mailto:scnielson at outlook.com>>
Subject: Re: [Patentpractice] Amendment to 37 CFR 1.98(a) - IDS reference count "fee" rule impementation

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<mailto: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<mailto:patentpractice-bounces at oppedahl-lists.com>> on behalf of Carl Oppedahl via Patentpractice <patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com>>
Sent: Wednesday, January 15, 2025 6:02 PM
To: patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com> <patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com>>
Cc: Carl Oppedahl <carl at oppedahl.com<mailto: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<mailto:pbrisky at fujitsu.com>

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