[Patentpractice] Examiner did not really consider IDSs -- what to do or say?

[Scott Nielson]

Here is the template response I developed the last time this issue came up. Feel free to use it, suggest revisions, etc.


Information Disclosure Statement—Cursory Review Not Allowed

The Office Action acknowledged the submission of the information disclosure statement dated [date] but stated that the listed items were only given a cursory review due to time constraints. Office Action, pp. __. Applicant is sympathetic to the time constraints involved in examining a patent application. However, the applicable rules do not permit a cursory review of information submitted in an information disclosure statement.

The MPEP explains that an information disclosure statement filed in compliance with 37 CFR 1.97 and 1.98 “will be considered by the examiner assigned to the application.” MPEP 609. The “examiner has an obligation to consider the information,” which means “considering the documents in the same manner as other documents in Office search files are considered by the examiner while conducting a search of the prior art in a proper field of search.” Id. Initialing the item or an equivalent acknowledgement means “that the information has been considered by the examiner to the extent noted above.” Id. There is no provision for performing a cursory review of the items.

Applicant will assume that the Examiner has reviewed these comments and fully considered all the items listed in the information disclosure statement in accordance with MPEP 069 unless the Examiner states otherwise in a future communication.


Scott Nielson

801-660-4400

________________________________
From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> on behalf of Patent Lawyer via Patentpractice <patentpractice at oppedahl-lists.com>
Sent: Tuesday, January 28, 2025 5:06 PM
To: For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com>
Cc: Patent Lawyer <patentlawyer995 at gmail.com>
Subject: [Patentpractice] Examiner did not really consider IDSs -- what to do or say?


We've discussed this before, but I need some good language here.



A first office action includes the following statement:



"The examiner has performed a cursory review of the references provided by the applicant on Information Disclosure Statements (IDSs) but due to time constraints cannot perform a detailed review of every reference. As such, while the examiner has acknowledged that the references were received, this is not to be construed as an admission that the instant application is not anticipated by any of the provided references."



It should not matter, but our IDSs included about 30 US patent documents, 5 foreign patent documents, and about 8 NPL documents, two of which were a search report and written opinion for the PCT application.



I can't make the examiner read anything. But I don't want to leave their statement unanswered.   At the very least, I want to say something like our IDSs were filed according to the rules.



The applicant's Information Disclosure Statements (IDSs) were filed in compliance with 37 C.F.R. §§ 1.97 and 1.98, reflecting the applicant's good faith effort to fulfill the duty of disclosure under 37 C.F.R. § 1.56.



What else can I say?  "Do your effing job?"  Any argument for saying nothing?
-------------- next part --------------
An HTML attachment was scrubbed...
URL: <http://oppedahl-lists.com/pipermail/patentpractice_oppedahl-lists.com/attachments/20250129/d2335bde/attachment.html>