[Patentpractice] Inquiry About Changes to IDS Forms

[Rick Neifeld]

Its the PTO forms that made IDS "hard".  Make your own form that complies
with the rule.  Assign each reference a sequential number. Keep all
oreexisting reference citations in subsequent IDSs and add just add new
citations.

[image: image.png]


Same idea for the P, F, and L references.





On Thu, Jan 16, 2025 at 3:21 PM Pamela Brisky (Fujitsu) via Patentpractice <
patentpractice at oppedahl-lists.com> wrote:

> 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> *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>
> *Cc:* Randall Svihla <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> *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>
> *Cc:* Pamela Brisky (Fujitsu) <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>
> *Sent:* Thursday, January 16, 2025 2:10 PM
> *To:* Brisky, Pamela <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>
> *Sent:* Wednesday, December 11, 2024 2:20 PM
> *To:* Patent Practice <PatentPractice at USPTO.GOV>
> *Cc:* 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
>
>
>
> [image: 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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