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Information Disclosure Statement Rules Package Where are the Final Rules?

Information Disclosure Statement Rules Package Where are the Final Rules?. April 2008 Mercedes K. Meyer, Esq., Ph.D. Drinker Biddle & Reath LLP. Status. Predicted when final rules would publish – they did not publish. “Secret” final rule set submitted to OMB. Proposed rules published.

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Information Disclosure Statement Rules Package Where are the Final Rules?

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  1. Information Disclosure Statement Rules Package Where are the Final Rules? April 2008 Mercedes K. Meyer, Esq., Ph.D. Drinker Biddle & Reath LLP

  2. Status Predicted when final rules would publish – they did not publish “Secret” final rule set submitted to OMB Proposed rules published GSK files suitOctober 12, 2007 July 10, 2006 July 2007 February 2008 September 8, 2006 August 22, 2007 Tafas files suit Against USTPO December 11, 2007 March 12, 2008 Public comment period ends Alleged OMB approval PTO indicates that due to Tafas/GSK suit, this rule package may die

  3. Summary of Proposed IDS Rules Increasing Burden with Time * Explanation required

  4. Continuing Duty & Amendments • Identification & Correlation • Applicant would have to identify specific teachings of the prior art reference and show correlation of the features to specific claim language • Continuing Duty to Update • Any claim amendments would require updates the prior statements of correlation

  5. The Future • The proposed will not issue because: • The PTO does not want to issue the rules before a decision in the Tafas / GSK suit • The suit will go to the Supreme Court and a final decision is not expected until after the Bush administration leaves office • A new USPTO administration may allow these rules to quietly be tossed in the garbage

  6. Concerns • Accuracy in describing a reference and its correlation to a claim’s limitations • Not submitting art that may have been more relevant than appreciated • How to determine cumulative nature of reference – See Loral Fairchild Corp. v. Victor Co. of Japan Ltd., 61 USPQ2d 1943, 1947 (E.D. NY 2002) • Retroactivity regarding the PTO’s new interpretation of “degree of review” relative to inequitable conduct • An RCE could not be submitted with references after Notice of Allowance is mailed • Not submitting an entire reference (and therefore a relevant part) in order to avoid explaining a reference over 25 pages • Explanations for all foreign language documents, even with machine translations • Increased costs in reviewing and analyzing references for submission • Increased costs and burdens to prosecute an application with duty to update explanations • Consequences remain unclear for applicant’s failure to update explanations • Refusal to enter an IDS – variability of IDS submissions between practitioners and examiners

  7. Questions Mercedes K. Meyer, Ph.D., Esq.Mercedes.Meyer@dbr.com(202) 842-8821 Albany321 Great Oaks BoulevardAlbany, NY 12203-5971(518) 452-8787(518) 452-8767 faxBerwyn1000 Westlakes DriveBerwyn, PA 19312-2409(610) 993-2200(610) 993-8585 faxChicago191 North Wacker Drive, Suite 3700Chicago, IL 60606-1698(312) 569-1000(312) 569-3000 faxFlorham Park500 Campus DriveFlorham Park, NJ 07932-1047(973) 360-1100(973) 360-9831 fax Los AngelesWells Fargo Center333 S. Grand Avenue, Suite 1700Los Angeles, CA 90071-1504(213) 253-2300(213) 253-2301 fax Milwaukee777 East Wisconsin AvenueSuite 2000Milwaukee, WI 53202-5319(414) 221-6040(414) 224-1025 fax New York140 Broadway39th FloorNew York, NY 10005(212) 248-3140(212) 248-3141 fax PhiladelphiaOne Logan Square18th and Cherry StreetsPhiladelphia, PA 19103-6996(215) 988-2700(215) 988-2757 fax www.drinkerbiddle.com Princeton105 College Road EastPost Office Box 627Princeton, NJ 08542-0627(609) 716-6500(609) 799-7000 faxSan Francisco50 Fremont StreetSan Francisco, CA 94105-2235(415) 591-7500(415) 591-7510 fax Washington D.C.1500 K Street, N.W.Washington, DC 20005-1209(202) 842-8800(202) 842-8465 faxWilmington1100 N. Market StreetWilmington, DE 19801-1254(302) 467-4200(302) 467-4201 fax

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