USPTO gets it right sometimes — disclosures from parent case

Every now and then I am astonished to see the USPTO getting something right.  Here is an example of the USPTO getting something right — what it amounts to is that I filed a divisional patent application and the USPTO filed for me the IDS that I was getting ready to file.  Yes, of course normally when one files a continuation or divisional application, one faces the tedious task of preparing an IDS in the child case to disclose all of the references from the parent case.  Here, oversimplifying it slightly, I have a case where the USPTO filed that child-case IDS for me.  I won’t have to prepare and file that IDS.  You might wonder, what’s going on here?  You might wonder, why is the USPTO doing my work for me?  If you wonder these things, then read on.

Let’s start with a bit of background.  When a person files a continuation or divisional patent application, the natural next step is to prepare and file an IDS (Information Disclosure Statement) listing every reference from the parent case.  The goal of course is not only to get the references considered by the Examiner but also to get them listed on the front page of the patent issuing from this application.

I suppose some applicants might choose to rely upon MPEP § 609.02, which says that an Examiner who is examining a continuation or divisional application is presumed to have considered all of the references that were made of record in the parent application.  TYFNIL it is very predictable that the accused infringer would say “yeah right” and would invite the judge and jury to be skeptical as to whether the Examiner really did go to all of this trouble.  

Common sense tells us that if you want to eliminate this line of attack TYFNIL, there is no choice but to do whatever it takes to get the references listed on the front page of the issued patent.  And what we are all used to is that we prepare and file an IDS.

Often when I am preparing such an IDS, I print out the IDSs and Forms 892 from the parent case onto paper, and then I use scissors and tape to cobble together an IDS.  This works just fine although the document always looks a bit informal.

The point of this blog article is that in one of my pending design patent cases that is a divisional application, I received a Notice of Imported Citations.  What, you might ask, is a Notice of Imported Citations?  This is a document that has its origin in the USPTO’s Access to Relevant Prior Art Initiative (USPTO web page).  Under this initiative, the USPTO is exploring several different ways to try to get relevant prior into the hands of a patent examiner.  

This is the sort of thing that computers are supposed to be good at.  Think of the Global Dossier system which among other things gets you within one or two mouse clicks of having a comprehensive list of all prior art for a particular patent application that was found by every patent office around the world that participates in Global Dossier and that is examining an application that is a family member of that particular patent application.  

The particular aspect of the Access to Relevant Prior Art Initiative that I am talking about today is the “imported citations” initiative.  The way this works is that maybe you will get lucky.  The way that you get lucky, basically, is that you file a continuation or divisional patent application and your case gets sent to one of these Art Units:

1616, 1731, 2431, 2675, 2879, 2922, 3635, or 3753.

In my case, what happened is I filed a divisional application and it ended up in Art Unit 2922.  This means I got lucky.

The normal next thing I would have needed to do, of course, is prepare an IDS listing everything from the parent case, and then e-file it in the child case.  But instead, what happened is that somebody at the USPTO basically prepared my IDS for me.  I received a Notice of Imported Citations.  From the Examiner’s point of view this is like an IDS.  The Examiner is expected to click through the Notice, item by item, just as the Examiner would click through an IDS, item by item.  The Examiner is expected to consider the references, and sign the document.  Later, when the time comes for the USPTO to issue the patent, the references will get listed on the front page of the issued patent.

On the front page of the patent, such a reference will get listed with a “double dagger” (“‡”) next to it.

How this initiative affects you.  This initiative affects you in several ways.

A first thing that you may realize is that this might mean you will want to watch closely to see if any continuation or divisional application that you may have filed has ended up in one of the lucky eight Art Units.  Then, if you have gotten lucky in this way, you can decide whether to play a game of “who blinks first”.  Normally you might file your IDS (the one that cites everything from the parent case) on filing day or soon after.  But if you do, and later you find that your case arrived in one of the lucky eight Art Units, then you left money on the table.  You spent time, and the client’s money, preparing and filing that IDS.  It turns out you probably did not need to spend that time and money.

A second thing that you may realize is that this certainly means that you have no choice but to scrutinize the Notice of Imported Citations from the top to the bottom, if you receive one.  The problem of course is that you are not in a position of being able to assume that it is free from error.  Suppose the USPTO person who prepared it somehow accidentally missed a reference or two?  If you were snooze through such an accidental omission by the USPTO person, you would end up with the omitted item or items failing to appear on the front page of the issued patent.

Related to this, a third thing is that from the point of view of a practitioner who wants to make a living, if you simply prepare and file an IDS, you can send a bill to the client.  But can you send a bill to the client for proofreading the Notice of Imported Citations?  

Related to this, a fourth thing is that proofreading the Notice of Imported Citations for omissions or mistakes is probably actually more work than simply doing a scissors-and-paste IDS from the parent case.  At least in my own work, if I prepare and file an IDS myself as a scissors-and-paste from the parent case, I can be pretty sure I did not miss anything.  In contrast, to proofread a Notice of Imported Citations requires reading it at least line by line, and maybe character by character, from the top to the bottom, and cross-checking against all of the 1149s and 892s and SB08s that are in the IFW of the parent case.  This is much more work.  Can I send a bill to the client for this large amount of work?

A fifth thing is that if you do indeed to play this game of “who blinks first”, waiting for the Notice of Imported Citations so that you can duck having to prepare and file your IDS, you have no choice but to set and clear and reset dockets to check over and over again to see whether the Notice of Imported Citations actually does get generated and placed into the file.  In our office I estimate that every time we have to set and clear a docket, we incur an internal cost of maybe $50 to $100.  Not only that, it is not merely the internal cost of the docket, but the professional liability risk if somehow one misses the event (or non-event) that the docket was meant to prevent.  If you make a conscious decision to hold back from preparing and filing the IDS-from-the-parent-case because you think it will become unnecessary because of a Notice of Imported Citations, then you have no choice but to docket aggressively to see that the Notice of Imported Citations actually does arrive, and you have to be sure you will notice it if the Notice of Imported Citations were to fail to arrive so that you would then prepare and file the IDS-from-the-parent-case.

As you will appreciate, for some practitioners the rational choice will be to go ahead and prepare and file the the IDS-from-the-parent-case even if you think that a Notice of Imported Citations is likely to arrive down the line.  This approach saves having to docket over and over again to check to see whether the Notice of Imported Citations actually does arrive, docketing activity which (a) you might feel you cannot bill the client for, and which (b) you might fail to docket correctly.  This approach saves having to proofread the Notice of Imported Citations when it arrives, a task which (a) you might feel that you cannot bill the client for, and (b) you might fail to do correctly.

It seems to me that the chief category of beneficiary from the Notice of Imported Citations program is not the diligent applicant or practitioner but instead the sloppy applicant or practitioner who would otherwise have screwed up by forgetting to file the IDS-from-the-parent-case.  The USPTO’s Notice of Imported Citations is an ideal backstop for such sloppy applicants or practitioners.

To figure out how to react to the existence of the Notice of Imported Citations initiative, I suppose the usual gold-and-bronze analysis makes sense.  As a reminder, by “bronze case” we mean a case where the the applicant has made a conscious decision to proceed at the lowest possible cost, with every judgment call taken in the direction of saving money.  By a “gold case” we mean a case where no cost is to be spared so that the applicant can end up with the best and strongest issued patent.  The assumption with a bronze case is that there is no particular reason to think the patent would ever get litigated.  In contrast, part of the definition of a gold case is to never stop thinking what might happen TYFNIL.

• In a bronze case that is a continuation or divisional and that ends up in a “lucky Art Unit”, maybe the applicant will make a business decision to gamble that probably the Notice of Imported Citations will arrive, and to further gamble that it will be free from error.  The business decision would include (a) not bothering to docket to check for the actual arrival of the Notice of Imported Citations and (b) not bothering to proofread the Notice of Imported Citations assuming it does arrive. This saves the work and cost of preparing the IDS-from-the-parent-case, and saves docketing cost and proofreading cost.  Presumably this business decision takes as its fallback position that MPEP § 609.02 exists, so that there is the presumption of the Examiner having considered all of the references that were made of record in the parent application even they never get listed on the front page of the issued patent.  Such a business decision would be easier to justify if one were able to point to a number of years during which the USPTO were to accumulate a reputation for (a) never failing to prepare and file the Notice of Imported Citations when it is supposed to get prepared and filed, and (b) never making mistakes in the Notice of Imported Citations.  Such a number of years has not yet passed, of course, because the initiative has not been around for very long.
• In a gold case, I have to imagine the applicant would prefer to incur the work and cost of preparing the IDS-from-the-parent-case despite the chance that the work and cost might later turn out not to have been needed.  

I suppose that even before the Notice of Imported Citations initiative began, there surely must have been some applicants that had bronze cases where the business decision was to forgo even bothering to file the IDS-from-the-parent-case, on the theory that (a) MPEP § 609.02 exists, and (b) sometimes the applicant might get lucky and the Examiner might choose to go to the trouble to prepare and file an 892 that lists the important prior art from the parent case.

What is your take on the Notice of Imported Citations initiative?  Will you choose to forgo filing your IDS-from-the-parent-case and simply rely upon the Notice of Imported Citations instead?  Please post a comment below.