How do you manage & organize Information Disclosure Statement submissions to ensure all important prior art is submitted?
The patent prosecution process has many important milestones, but perhaps none more important and critical to the health of your issued patent than Information Disclosure Statement (“IDS”). Submitting relevant prior art materials in a timely and consistent manner will ensure that your patent is as strong as possible when it goes to issue.
Read on for more information about reducing risk, cost, and administrative overhead associated with managing IDS requirements.
- Prepare early and often. Filing an application can be hectic and often last minute. However, with a structured plan in place, getting the IDS prepared and submitted early along with the filing is an easy step in staying organized and up to date with prior art submissions.The specification often includes art citations, giving you everything you need to kick off the process. Taking the time to pull those references into an SB08 and add in any other relevant art discovered in your pre-filing searches puts you ahead of the submission game. By getting the IDS submitted early, ahead of the first issued Office Action, there is more time to find more related references!This next tip is crucial to timing. Getting additional references submitted as soon as they are brought to your attention helps keep the IDS process moving along smoothly. Quick response time means fewer submission fees and reduces the risk of paying those large Request for Continued Examination (RCE) fees. It also means you aren’t looking at an issued patent and seeing a blank where additional art should be listed.
- Get new prior art in front of attorneys quickly. One thing you want to avoid in the prosecution process is persistent procrastination. Procrastination leads to missed deadlines and missed opportunities. And having to pay additional fees! If a newly issued European Office Action arrives in your office and it doesn’t get in front of the attorney immediately, you are missing a critical opportunity to get this reference submitted in related cases without paying fees. Staying on top of newly received references that impact related cases eliminates costly fees and the potential to miss the opportunity for submission.
- Family Matters. While DNA testing kits are extremely helpful in the human world, tracking and maintaining family lineage in the patent world is an entirely different story. Keeping track of family relationships is an imperative piece of the puzzle. Prior art that is relevant in one case may need to be entered for every member in that family. This means there needs to be a family tracking system that allows for review across an entire family and cross-citing in multi-direction capacities.
Subject matter review is just as important but can be even more challenging to manage. Instead of looking only within an immediate family, subject matter review requires further tracking and maintenance. This tracking is trickier due to the absence of immediate relationships. You can’t just hop into PAIR and see subject matter relationships. This requires more input from the attorney and more diligence in the tracking.
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