[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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