IDS missing key ref. known to applicant prior to filing

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26. A registered practitioner filed a utility application on February 11, 2002. On April 4, 2002, the practitioner filed

an information disclosure statement (IDS) in the application. The practitioner received a notice of allowance dated

January 3, 2003 soon after it was mailed. When discussing the application with the practitioner on January 21, 2003,

and before paying the issue fee, the client notices for the first time that a reference, which is one of many patents

obtained by the client’s competitor, was inadvertently omitted from the IDS. The client has been aware of this reference

since before the application was filed. The client is anxious to have this reference appear on the face of the patent as

having been considered by the USPTO. Which of the following actions, if taken by the practitioner, would not be in

accord with the USPTO rules and the procedures set forth in the MPEP?

(A) Before paying the issue fee, timely file an IDS citing the reference, along with the certification

specified in 37 CFR 1.97(e), and any necessary fees.

(B) Within three months of the mail date of the notice of allowance, without paying the issue fee,

timely file a Request for Continued Examination (RCE) under 37 CFR 1.114, accompanied by the fee for

filing an RCE, and an IDS citing the reference.

(C) Within three months of the mail date of the notice of allowance, without paying the issue fee,

timely file a continuing application under 37 CFR 1.53(b), an IDS citing the reference, and any

necessary fees.

(D) After paying the issue fee, timely file a petition to withdraw the application from issue to

permit the express abandonment of the application in favor of a continuing application, a continuation

application under 37 CFR 1.53(b), an IDS citing the reference, and any necessary fees.

(E) After paying the issue fee, timely file a petition to withdraw the application from issue to

permit consideration of a Request for Continued Examination (RCE) under 37 CFR 1.114, the fee for

filing an RCE, and an IDS citing the reference.

26. ANSWER: Answer (A), describing a procedure that is not in accordance with the USPTO rules and the

procedures set forth in the MPEP, is the most correct answer. See MPEP § 609, under the heading

“Minimum Requirements for an Information Disclosure Statement,” and subheading “B(3). Information

Disclosure Statement Filed After B(2), but Prior to Payment of Issue Fee 37 CFR 1.97 (d)”, and

subheading “B(5) Statement Under 37 CFR 1.97(e).” The statement specified in 37 CFR § 1.97(e) requires

that the practitioner certify, after reasonable inquiry, that no item of information contained in the

IDS was known to any individual designated in 37 CFR § 1.56(c) more than three months prior to the

filing of the information disclosure statement. The practitioner cannot certify this because the

reference was known to the client before February 11, 2002, the time of filing of the utility

application, which was more than three months prior to the filing of the information disclosure

statement. Answer (B), stating a procedure that conforms with the USPTO rules and the procedures set

forth in the MPEP, is an incorrect answer. Under 37 CFR § 1.313(a), a petition to withdraw the

application from issue is not required if a proper RCE is filed before payment of the issue fee.

Answer (C), stating a procedure that conforms with the USPTO rules and the procedures set forth in the

MPEP, is an incorrect answer. A practitioner can file a continuing application on or before the date

that the issue fee is due and permit the parent application to become abandoned for failure to pay the

issue fee. Answer (D), stating a procedure that conforms with the USPTO rules and the procedures set

forth in the MPEP, is an incorrect answer. Under 37 CFR § 1.313(c)(3), a petition to withdraw the

application from issue can be filed after payment of the issue fee to permit the express abandonment of

the application in favor of a continuing application. Answer (E), stating a procedure that conforms with

the USPTO rules and the procedures set forth in the MPEP, is an incorrect answer. Under 37 CFR § 1.313(c)(2),

a petition to withdraw the application from issue can be filed after payment of the issue fee to permit

consideration of a Request for Continued Examination (RCE) under 37 CFR § 1.114. See also MPEP § 1308.