IDSs just got more expensive

On January 19, 2025 the USPTO put a new rule into effect that makes IDSs more expensive. Patent practitioners will need to charge clients more money for filing of IDSs. And new government fees will need to be paid with some IDSs.

By way of background, the whole point of an IDS is to permit a patent applicant to disclose things to a patent Examiner that might bear upon the patentability of an invention.  This process benefits absolutely every stakeholder in the patent community:

• • It permits the patent owner to have a granted patent that will better withstand attack TYFNIL.  The references cited in the IDS, after having been considered by the Examiner, will appear on the front page of the issued patent.  It will be clear to anybody at litigation time that the Examiner did have the opportunity to take those references into account when deciding whether or not to grant the patent.
  • It permits the patent Examiner (and indeed the whole USPTO) to be in a position of making decisions about patentability with better and more complete information.  The overall quality of issued patents is improved.
  • Any given patent that ought not to have been granted due to what could have been disclosed in an IDS is a patent that (hopefully) won’t get granted if the IDS does in fact get filed.  This reduces how often the general public would have to figure out what to do about the issuance of some patent that ought not to have been granted if only the Examiner had known about this reference or that reference.

Any patent applicant that is agonizing “should I or should I not file an IDS to disclose this reference or that reference to the USPTO” should cease agonizing.  The correct answer is simple — yes the applicant ought to file the IDS.

But on January 19, 2025 the USPTO turned this upside-down.  You can read about it here on the USPTO web site (archived here).  If you file an IDS that leads to the number of disclosed items being more than 50, you must pay a $200 penalty.  (There is no discount for small or micro entity.)  If you file an IDS that leads to the number of disclosed items being more than 100, you must pay a $500 penalty (less the $200 if previously paid, which might mean $300).  If you file an IDS that leads to the number of disclosed items being more than 200, you must pay an $800 penalty (less the $200 or $500 if previously paid).

This new system of penalties makes patent prosecution more expensive.  The patent applicant that chooses to do the right thing and disclose everything that needs to be disclosed will simply have to get accustomed to paying these penalties whenever they arise.  Other patent applicants (especially, I fear, some pro se applicants) will try to make judgment calls in the direction of not disclosing things so as to minimize or eliminate the need to pay these penalties.  This will lead to patents getting issued that ought never to have gotten issued.  This harms the public.  This leads to the average quality of patents issued by the USPTO being reduced.

If the need to pay the penalties were the only effect of this new policy, it would be bad enough.  But the new rules also require anybody who is getting ready to file an IDS to spend extra time and incur additional paperwork burdens.  The filer is required to provide a “certification statement” with every IDS that is filed, regardless of whether that particular IDS does or does not cross any of the penalty thresholds.  The filer is required to certify that no penalty needs to be paid (if that is the case) or needs to spell out which of the three penalties the filer is paying, along with a certification that this particular penalty is the correct number of dollars.

Failure to provide the certification statement will gravely harm the patent application.  The IDS will be placed in the official patent file (where it will stick out like a sore thumb TYFNIL) but will not be considered.

This means that every time anybody is getting ready to file an IDS, the filer is required to do lots of new work in addition to the regular and familiar work of preparing and filing an IDS.  The new work includes carefully reviewing the entirety of the patent application file to count up every reference that had previously been disclosed.  The new work includes carefully counting the references that are listed in the IDS that will imminently be filed.  The new work includes calculating which of the three penalty thresholds is being crossed by the imminent IDS.  And the new work includes checking to add up all of the IDS penalties already paid, and subtracting them from the amount of the present penalty, to arrive at the “net” penalty that must now be paid.

This work is required of any filer of any IDS, regardless of how few references might be listed in the imminent IDS.  In one application, an IDS disclosing a single reference might trigger the need to pay the $800 penalty.  In another application, an IDS disclosing 50 references might not trigger the need to pay any penalty.  But no matter what, the file-review and calculations must be carried out and the filer must prepare and file a “certification statement” with the IDS.

Every IDS needs a higher professional fee now than it did before January 19, 2025 because every IDS requires this extra work, even if the certification is a simple “no penalty is due” certification.   And some IDSs will incur one or another of these penalty amounts.

In about a month, I will be offering a CLE webinar about this.  If you want to be sure of learning about the date and time of the webinar, just subscribe to this blog if you have not already done so.  Or subscribe to our firm email distribution.

I am also working on a book about IDSs.  Hopefully I will get it published soon.  If you want to be sure of hearing when it gets published, just subscribe to this blog if you have not already done so.  Or subscribe to our firm email distribution.