The USPTO today sent out an announcement about its new Information Disclosure Statement (IDS) form SB/08a, the form an applicant uses to inform the USPTO about prior publications that are potentially relevant when considering the patentability of the claims under examination.
One of the banes of patent practice before the USPTO is having to provide the office with such lists of prior publications and, if the publication is not a US patent or published US patent application, a copy of the document (and a translation thereof if the document isn’t in English). Although US examiners are supposed to act on their own to look for the publication lists submitted in parent applications, if you want to those publications to appear on the front page of the patent that issues in the child case, you need to file a new IDS in the child case. And, per Rule 1.98(d), if you want the examiner to look at publications submitted in the parent case, you need to tell the examiner where to look, as recited in the rule:
- (d) A copy of any patent, publication, pending U.S. application or other information, as specified in paragraph (a) of this section, listed in an information disclosure statement is required to be provided, even if the patent, publication, pending U.S. application or other information was previously submitted to, or cited by, the Office in an earlier application, unless:
- (1) The earlier application is properly identified in the information disclosure statement and is relied on for an earlier effective filing date under 35 U.S.C. 120 ; and
- (2) The information disclosure statement submitted in the earlier application complies with paragraphs (a) through (c) of this section.
So what’s the big change in the new USPTO-supplied IDS form? It seems that the only change from the previous form is that now there's a checkbox to indicate that publications were already disclosed (and if not a US patent publication, submitted) in an earlier application, per 37 CFR 1.98(d).
But does the new form include a place to list the prior application? No. It merely includes a checkbox to state the following:
"An identification of an earlier application pursuant to 37 CFR 1.98 (d) (1) is attached."
And today's email announcement says, "When selecting the new checkbox, attach a paper to identify the prior application in which the previously submitted or cited information can be found."
Seriously? We still need to prepare a separate paper to tell the examiner where he can find copies of the non-US patent publications in the parent cases? The PTO couldn't have fixed the form to include a place to list the prior application? And it’s not like the PTO still uses paper files. To look at the publications submitted in the parent case(s), the examiner just has to press a button or two.
It seems that the people who design the PTO’s forms are the separated-at-birth twins of the people who designed and are coding Patent Center Crapper.
It should be noted that one can make up his own IDS form using a word processor, and thus could include in the IDS a reference to the parent case in which copies of publications were previously submitted.