[Patentpractice] Inquiry About Changes to IDS Forms

Fri Jan 17 17:22:45 UTC 2025

I again notify everyone that my forms which have always " put the
cumulative number in each IDS" (1) do that, (2) have in the past complied
with the 1.98 rules for IDS format and (3) .... are available for your
download from my firm's website.   BR, Rick

On Fri, Jan 17, 2025 at 12:32 AM Scott Nielson via Patentpractice <
patentpractice at oppedahl-lists.com> wrote:

> I don't trust spreadsheets to be up to date and accurate. My plan is to
> put the cumulative number in each IDS so that when I need to file a new
> IDS, I simply look at the last one for the latest count and update it in
> the new IDS.
>
> *Scott Nielson*
>
> 801-660-4400
>
> ------------------------------
> *From:* Patentpractice <patentpractice-bounces at oppedahl-lists.com> on
> behalf of Pamela Brisky (Fujitsu) via Patentpractice <
> patentpractice at oppedahl-lists.com>
> *Sent:* Thursday, January 16, 2025 1:20 PM
> *To:* For patent practitioners. This is not for laypersons to seek legal
> advice. <patentpractice at oppedahl-lists.com>
> *Cc:* Pamela Brisky (Fujitsu) <pbrisky at fujitsu.com>
> *Subject:* Re: [Patentpractice] Inquiry About Changes to IDS Forms
>
>
> 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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>
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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;
This is NOT a confidential and privileged communication.  If you are not
the intended recipient, please delete this email and notify the sender you
have done so.
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