A reader of this blog wrote to me to ask “is a US patent applicant required to file an IDS even if the inventor is not aware of any relevant prior art?” The question inspired the blog article that follows.
The first thing that I wrote in response to the reader was:
There are certain circumstances where, from the USPTO’s point of view, the applicant must file an IDS. This includes getting onto the Patent Prosecution Highway and getting onto the design rocket docket. It is not that the applicant is encouraged to do it, but that if the applicant fails to do it, then the applicant will fail at its goal of getting onto the PPH or the design rocket docket. The procedure calls for a USPTO person to look at the file to see if there is an IDS in the file and if it is not there, then the applicant is not going to be admitted into the desired program.
I then pointed out that the mere fact of the inventor being ignorant of the existence of any relevant prior art does not give the applicant a free pass on needing to file an IDS. I wrote:
The duty to disclose known relevant prior art does pertain to the inventor, true enough. But the duty also pertains to a much longer list of human beings. For example:
- The applicant might be a corporation. And yes maybe it might turn out that the inventor is not aware of relevant prior art. Even so, if the applicant is aware of relevant prior art, the applicant will need to file an IDS if the duty of disclosure is to be fulfilled. In a large corporation this would not necessarily mean that we must interrogate every employee of the corporation but at least the people at the corporation who are involved in the handling of the patent application process will need to disclose the relevant prior art of which they are aware. This might mean the inventor’s supervisor, this might mean the members of the patent department who are working on the file. In a small corporation with only two or three people, it might mean all two or three of the people in the corporation need to be interrogated.
- There may be an outside patent counsel or patent attorney or patent agent involved in the patent application process. If so, then that person or persons are going to need to disclose relevant prior art of which they are aware.
- If the work originated outside the US, there will likely be non-US patent counsel involved. They will need to pass along relevant prior art of which they are aware, so that it may be disclosed.
The main point being that it is by far not enough simply to ask the inventor and to (perhaps) come up empty on prior art for an IDS. Many other persons must be interrogated as to whether they are aware of relevant prior art.
The loyal reader then had a followup question:
What if no one involved in the application process has any knowledge of prior art, will the examiner (or the USPTO) reject the application (at any point) if there is no IDS filed at all?
Here the answer turns out to be easy. If you were to click around and select at random 100 patents that issued yesterday, you would find that in at least 5 of those cases, the applicant did not file an IDS. The absence of an IDS is not a thing that triggers an Examiner to reject a patent application. See two random examples from yesterday’s crop of newly issued patents:
In each case, no IDS was filed. In each case, the Examiner allowed the application on the first Office Action. In each case, the applicant paid the Issue Fee and the case issued as a US patent.