Late IDS when client knew about PA all along

34. 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 patent law, rules and procedures as related by 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.

Explanation:

(A), describing a procedure that is not in accordance with the USPTO rules and the procedures set forth in the MPEP ,

the most correct answer. MPEP § 609, under the heading “Minimum Requirements for an Information Disclosure Statement,”

under the 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).” (A) 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. See (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. (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. (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. (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.