Information disclosure statement and 3 month timeline

[w***@aol.com]

I have a pending US application and also a national phase application
at EPO which has cited a couple of new references. Does the 3 month
IDS timeline for the US application apply in this case?

Thank you in advance ...

[Tim Jackson]

Post by w***@aol.com
I have a pending US application and also a national phase application
at EPO which has cited a couple of new references. Does the 3 month
IDS timeline for the US application apply in this case?
Thank you in advance ...

If the first action on the merits has already been issued in your US
application, then you have three months from when the EPO cited the new
references. You have to include a statement saying that you are within
this three month period.

See Rule 97(e)(1) for exactly what the statement should say.

If you are late, then you have to pay a fee to get the new references
considered.

This assumes that so far in the US application there has been no final
action or notice of allowance or other action which closes prosecution.
It would of course be best to file the IDS sooner rather than later, in
case you get such action in the meantime.

[w***@aol.com]

Post by Tim Jackson
If the first action on the merits has already been issued in your US
....
If you are late, then you have to pay a fee to get the new references
considered.

We are past the first office action if that's what you mean by first
action. Just so that I have a better understanding of the process,
judging from the way you phrased it "to get the new references
considered" it sounds like I will be submitting it because I want them
to be considered, or am I required to submit the new references in any
case?

Many thanks ...

[Tim Jackson]

Post by w***@aol.com

Post by Tim Jackson
If the first action on the merits has already been issued in your US
....
If you are late, then you have to pay a fee to get the new references
considered.

We are past the first office action if that's what you mean by first
action.

Yes.

Post by w***@aol.com
Just so that I have a better understanding of the process,
judging from the way you phrased it "to get the new references
considered" it sounds like I will be submitting it because I want them
to be considered, or am I required to submit the new references in any
case?

You are only *required* to submit *any* reference if it is material.
But the fact that the EPO cited it is a pretty strong indication that it
may be. Don't even stop to think about it. Just submit it.

Otherwise, if ever your patent is litigated, the defendants' lawyers
will try to make out that the reference was indeed material, and that
you withheld it deliberately. They will argue that you are guilty of
inequitable conduct and that as a result your patent is unenforceable.

There has been some recent case law which makes such an allegation less
likely to succeed than in the past. But even so, don't underestimate
the severe pressure that fighting it will put you under. The defendants
will use this as a tactic to persuade you to drop the case and/or to
settle for a pittance. At that stage, believe me, you'll wish you had
submitted the reference.

One reason you want the reference to be considered is because that
strengthens your eventual patent. It shows that the Examiner thought
the reference didn't detract from the patentability of your invention.
On the other hand, if you don't submit the reference in the time and
manner set out in the rules to ensure it is considered (and if you don't
pay the fee if you are late), then that gives the defendants' lawyers
another stick to beat you with.

[w***@aol.com]

You are only *required* to submit *any* reference if it is material.  
But the fact that the EPO cited it is a pretty strong indication that it
may be.  Don't even stop to think about it.  Just submit it.
Otherwise, if ever your patent is litigated, the defendants' lawyers
will try to make out that the reference was indeed material, and that
you withheld it deliberately.  They will argue that you are guilty of
inequitable conduct and that as a result your patent is unenforceable.

Does the other patent offices also have a reciprocal information
disclosure procedure?

[Tim Jackson]

Post by w***@aol.com
Does the other patent offices also have a reciprocal information
disclosure procedure?

Some do and some don't. What you are required to disclose also varies.