[Patentpractice] Inquiry About Changes to IDS Forms

[Pamela Brisky (Fujitsu)]

Also  - Just curious.  Anyone have any best practice suggestions on keeping track of the citation count?  Is anyone using spreadsheets?  Are admin support reviewing at IDS filing?

Thanks in advance,

Pam

From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> On Behalf Of Pamela Brisky (Fujitsu) via Patentpractice
Sent: Thursday, January 16, 2025 3:15 PM
To: For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com>
Cc: Brisky, Pamela <pbrisky at fujitsu.com>
Subject: Re: [Patentpractice] Inquiry About Changes to IDS Forms

Actually, no.  They provided a response earlier (attached) that simply stated that the forms will be available for use on January 19.

The found my email again today and provided an additional response.

Pam

From: Patentpractice <patentpractice-bounces at oppedahl-lists.com<mailto:patentpractice-bounces at oppedahl-lists.com>> On Behalf Of Randall Svihla via Patentpractice
Sent: Thursday, January 16, 2025 3:08 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: Randall Svihla <rsvihla at nsiplaw.com<mailto:rsvihla at nsiplaw.com>>
Subject: Re: [Patentpractice] Inquiry About Changes to IDS Forms

It took them 36 days to reply???


From: Patentpractice <patentpractice-bounces at oppedahl-lists.com<mailto:patentpractice-bounces at oppedahl-lists.com>> On Behalf Of Pamela Brisky (Fujitsu) via Patentpractice
Sent: Thursday, January 16, 2025 2:36 PM
To: Carl Oppedahl via Patentpractice <patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com>>
Cc: Pamela Brisky (Fujitsu) <pbrisky at fujitsu.com<mailto:pbrisky at fujitsu.com>>
Subject: [Patentpractice] FW: Inquiry About Changes to IDS Forms

Hi everyone,

Just received from the USPTO …

Pam
From: Patent Practice <PatentPractice at USPTO.GOV<mailto:PatentPractice at USPTO.GOV>>
Sent: Thursday, January 16, 2025 2:10 PM
To: Brisky, Pamela <pbrisky at fujitsu.com<mailto:pbrisky at fujitsu.com>>
Subject: RE: Inquiry About Changes to IDS Forms

Thank you for your inquiry. We sincerely apologize for the delay in replying. The SB/08A and SB/08B will not be modified to include the size fee assertion statements. However, another new form will be available to select a size fee assertion. Additionally, the IDS autoload form will be updated to include an option for selecting a size fee assertion.

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!”.]





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