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

[Weitzmanip]

I don’t see how that statement helps in a litigation - you just show that the Examiner didn’t do their job, which may affect the presumption of validity.  All those statements may do is cause Examiners in later similar situations to simply line out the references. 

     Am I missing something?

     Rich Straussman 

On Jan 28, 2025, at 7:50 PM, Timothy Snowden via Patentpractice <patentpractice at oppedahl-lists.com> wrote:


Helpful - thanks!

On 1/28/2025 6:35 PM, Scott Nielson via Patentpractice wrote:
> 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
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