It’s easy to notice when USPTO doesn’t do something well or correctly. It’s not so easy to notice when USPTO does something right. Here’s an article about a good thing that USPTO does — IDS logging.
When I started my own firm some 22 years ago, one of the first things we did was to set up a procedure for logging of our IDSs. Each time we sent an IDS to the USPTO in a particular patent application, it went into a log. (In those early days the log was on paper!) Later when the Examiner considered the IDS, entering his or her initials and signature on the IDS, we would check it off on the log.
The idea of course was that ten years from now in litigation (TYFNIL) if an adversary were to discover that some IDS got filed in a case, but never got considered by the Examiner, then the adversary would have a field day. Each reference listed in the IDS (each reference that the Examiner never actually considered) would get reviewed by the adversary as a possible line of attack as to the validity of the patent.
And it’s not enough simply to check that the Examiner signed the IDS. It was important to make sure the Examiner had not drawn a line through any reference in the IDS.
Over the years we had run into many situations where the Examiner had failed to consider an IDS. When we ran into this, we would have to pester the Examiner to consider the IDS.
In the old days of paper files, of course, one of the big problems is that maybe an IDS might get lost within the USPTO and might never actually find its way into the file.
What we started noticing, a few years ago, is that we were not the only party checking to see if an IDS had been overlooked. We started noticing that somebody in FDC (final data capture after a Notice of Allowance) at the USPTO seemed to think it was their job to look at each IDS to see if it had gotten considered. Many times in recent years we would receive a Notice of Allowance, and would find that there was a straggler IDS, and we would get all ready to make a big stink about this with the Examiner. We would set a docket and make elaborate plans for repeated pestering if needed.
And then there would be a big surprise. We would track the status of the file in Private PAIR. And we would see that somebody at the USPTO had actually bounced the application back to the Examiner! And next thing you know, the straggler IDS would get considered. All of of this good news, when we were just getting all wound up to start badgering the Examiner. So next thing you know the signed IDS would show up. And we could clear our docket on this point!
Amazing! Someone at the USPTO doing our badgering for us!
Having observed all of this, does it mean the practitioner does not actually have to log IDSs any more? Does it mean the practitioner can stop worrying about this? I suggest the answers are “no”.
First, the Notice-of-Allowance time is not the only time to pay attention to whether an IDS has been considered. There is much to be said for badgering an Examiner about an overlooked IDS even at the time of a first Office Action. The FDC process does not help with that goal.
Second, what if the FDC process were to slip up every now and then? Surely the practitioner will want to catch any and all overlooked IDSs, rather than assuming that FDC will catch each and every overlooked IDS.
Third, what if the Examiner has drawn a line through some reference? The FDC review is not checking for that sort of bad news.
So the practitioner will still want to check each signed-and-initialed IDS to see if there is a dreaded line-through for some cited reference.
Nonetheless it is very nice to see the USPTO doing some of our Examiner badgering for us.