[Patentpractice] Inquiry About Changes to IDS Forms
Timothy Snowden
tdsnowden at outlook.com
Fri Jan 17 20:37:07 UTC 2025
And again - thanks Rick!
On 1/17/2025 11:22 AM, Rick Neifeld via Patentpractice wrote:
> 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
>
> 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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>
>
> --
> 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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