Q) Late IDS when client knew about PA all along (10.03.34a)

Test takers have noted that Question #36 from October 2003 (AM) patent bar exam is in the Prometric database.

34.  A registered practitioner filed a utility application on February 11, 2002. On April 4, 2002, the practitioner filed an information disclosure statement (IDS) in the application. The practitioner received a notice of allowance dated January 3, 2003 soon after it was mailed. When discussing the application with the practitioner on January 21, 2003, and before paying the issue fee, the client notices for the first time that a reference, which is one of many patents obtained by the client’s competitor, was inadvertently omitted from the IDS. The client has been aware of this reference since before the application was filed. The client is anxious to have this reference appear on the face of the patent as having been considered by the USPTO. Which of the following actions, if taken by the practitioner, would not be in accord with the patent law, rules and procedures as related by the MPEP?

(A) Before paying the issue fee, timely file an IDS citing the reference, along with the certification specified in 37 CFR 1.97(e), and any necessary fees.

(B) Within three months of the mail date of the notice of allowance, without paying the issue fee, timely file a Request for Continued Examination (RCE) under 37 CFR 1.114, accompanied by the fee for filing an RCE, and an IDS citing the reference.

(C) Within three months of the mail date of the notice of allowance, without paying the issue fee, timely file a continuing application under 37 CFR 1.53(b), an IDS citing the reference, and any necessary fees.

(D) After paying the issue fee, timely file a petition to withdraw the application from issue to permit the express abandonment of the application in favor of a continuing application, a continuation application under 37 CFR 1.53(b), an IDS citing the reference, and any necessary fees.

(E) After paying the issue fee, timely file a petition to withdraw the application from issue to permit consideration of a Request for Continued Examination (RCE) under 37 CFR 1.114, the fee for filing an RCE, and an IDS citing the reference.

ANSWER: (A), describing a procedure that is not in accordance with the USPTO rulesand the procedures set forth in the MPEP , the most correct answer. MPEP § 609, under theheading “Minimum Requirements for an Information Disclosure Statement,” under thesubheading “B(3). Information Disclosure Statement Filed After B(2), but Prior to Payment ofIssue Fee 37 CFR 1.97 (d)”, and subheading “B(5) Statement Under 37 CFR 1.97(e).” (A) Thestatement specified in 37 CFR § 1.97(e) requires that the practitioner certify, after reasonableinquiry, that no item of information contained in the IDS was known to any individualdesignated in 37 CFR § 1.56(c) more than three months prior to the filing of the informationdisclosure statement. The practitioner cannot certify this because the reference was known to theclient before February 11, 2002, the time of filing of the utility application, which was more thanthree months prior to the filing of the information disclosure statement. See (B), stating aprocedure that conforms with the USPTO rules and the procedures set forth in the MPEP, is anincorrect answer. Under 37 CFR § 1.313(a), a petition to withdraw the application from issue isnot required if a proper RCE is filed before payment of the issue fee. (C), stating a procedurethat conforms with the USPTO rules and the procedures set forth in the MPEP, is an incorrectanswer. A practitioner can file a continuing application on or before the date that the issue fee due and permit the parent application to become abandoned for failure to pay the issue fee. (D), stating a procedure that conforms with the USPTO rules and the procedures set forth in the MPEP, is an incorrect answer. Under 37 CFR § 1.313(c)(3), a petition to withdraw the application from issue can be filed after payment of the issue fee to permit the express abandonment of the application in favor of a continuing application. (E), stating a procedure that conforms with the USPTO rules and the procedures set forth in the MPEP, is an incorrect answer. Under 37 CFR § 1.313(c)(2), a petition to withdraw the application from issue can be filed after payment of the issue fee to permit consideration of a Request for Continued Examination (RCE) under 37 CFR § 1.114. See also MPEP § 1308.