New IDS rules to limit number of references in an application

On December 11th, 2007, the PTO's proposed changes to the Information Disclosure Statement rules have been approved by the US Office of Management and Budget and thus passed the last regulatory review prior to implementation of the rules.

An Information Disclosure Statement is a document through which an applicant can fulfill (in part) the duty of disclosure under Rule 56 of Patent Office regulations. Using an IDS, an applicant can fulfill the Rule 56 duty of disclosure by submitting copies of prior art references and any other material relevant to patentability. Under the current rules, there is no limit on the number of references that can be filed with an IDS, and, if an IDS is filed after the first action on the merits, the PTO charges a late filing fee.

Under the new rules, the PTO will no longer charge a fee for late filing; however, applicants will now only be allowed to submit no more than 20 references without explanation. Those applicants who submit a greater number of references or "very long" documents will be required to review their submissions and provide information as to their materiality and as to why the application is not preempted by the references.

Effectively, this aspect of the new rules will shift the burden of examination to the applicant, making IDS submission more costly and burdensome. Other changes to the IDS rules will be discussed in a future post.