Q) IDS after Notice of Allowance (4.03.26a)

by admin on April 10, 2010 · 15 comments

in Exam Questions

Question #26 from the April 2003 (AM) patent bar exam is reported by exam takers as a question in the current exam database.

26. 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 USPTO rules and the procedures set forth in 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: Answer (A), describing a procedure that is not in accordance with the USPTO rules and the procedures set forth in the MPEP, is the most correct answer. See MPEP § 609, under the heading “Minimum Requirements for an Information Disclosure Statement,” and subheading “B(3). Information Disclosure Statement Filed After B(2), but Prior to Payment of Issue Fee 37 CFR 1.97 (d)”, and subheading “B(5) Statement Under 37 CFR 1.97(e).” The statement specified in 37 CFR § 1.97(e) requires that the practitioner certify, after reasonable inquiry, that no item of information contained in the IDS was known to any individual designated in 37 CFR § 1.56(c) more than three months prior to the filing of the information disclosure statement. The practitioner cannot certify this because the reference was known to the client before February 11, 2002, the time of filing of the utility application, which was more than three months prior to the filing of the information disclosure statement. Answer (B), 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(a), a petition to withdraw the application from issue is not required if a proper RCE is filed before payment of the issue fee. Answer (C), stating a procedure that conforms with the USPTO rules and the procedures set forth in the MPEP, is an incorrect answer. A practitioner can file a continuing application on or before the date that the issue fee is due and permit the parent application to become abandoned for failure to pay the issue fee. Answer (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. Answer (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.

{ 15 comments… read them below or add one }

1 Chemist62No Gravatar April 11, 2010 at 3:07 pm

The answer to this question does not seem current. MPEP 609.04b
III. INFORMATION DISCLOSURE STATEMENT FILED AFTER II. ABOVE BUT PRIOR TO PAYMENT OF ISSUE FEE (37 CFR 1.97(d)) provides for Answer A.
But if Answer D included the CPA practice, then this would be the wrong procedure, i.e. correct answer. Any thoughts?

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2 VinNo Gravatar June 10, 2010 at 3:49 pm

I agree with Chemist62. CPA practice has been made inapplicable to any utility or original plant applications filed on or after May 29, 2000 (including reissue). This would mean that answer D in relation to “a registered practitioner filed a utility application on February 11, 2002” as per the Q. is as Cheimst62 has said the wrong procedure, i.e., correct answer.

I also need some help with this: so in the scenario of the Q. submitting an RCE in which the submission is an IDS would work, but does this not encounter the same conflict with 37 CFR § 1.97(e) that the practitioner must certify, after reasonable inquiry, that no item of information contained in the IDS was known to any individual designated in 37 CFR § 1.56(c) more than three months prior to the filing of the IDS … And in this case the practitioner cannot certify to this? Any thoughts?

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3 PHOSITANo Gravatar January 30, 2011 at 5:35 pm

I do not agree with Chemist62. The section you reference in MPEP 609.04b still requires a statement per 37 CFR § 1.97(e) that the practitioner must certify, after reasonable inquiry, that no item of information contained in the IDS was known to any individual designated in 37 CFR § 1.56(c) more than three months prior to the filing of the IDS. The scenario in the Q. does not allow for this.

Conversely, to Vin’s question, see MPEP 609.04(b)(I)(B) – RCE and CPA:
“The 3-month window as discussed above does not apply to a RCE filed under 37 CFR 1.114 or a CPA filed under 37 CFR 1.53(d) (effective July 14, 2003, CPAs are only available for design applications).”

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4 dbNo Gravatar April 17, 2011 at 8:12 pm

Agree with PHOSITA. The key is the 3 month window. Moreover, not sure why CPA’s are relevant. It says filed a “continuing application” not a “continued prosecution application”.

As for Vins RCE question, the certification is only relevant after first action and final action. Prior to a first action (e.g. your first action in an RCE), you don’t have to file any certification.

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5 OverworkkedNo Gravatar April 28, 2011 at 3:33 pm

Repeat or close variant on 4/27/2011 MPEP E8R8

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6 fengyuwuzuNo Gravatar October 11, 2011 at 4:30 pm

I am curious how many repeats you saw on your exam. it seems a lot.

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7 AnonNo Gravatar October 12, 2011 at 12:13 am

Identical repeat on 10/11/11

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8 LaurenNo Gravatar January 16, 2012 at 12:17 pm

I saw this question when I took the exam on 1/14/12

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9 RemandedNo Gravatar January 20, 2012 at 8:13 pm

Repeat on 20 January 2012.

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10 KerstinNo Gravatar January 23, 2012 at 10:41 am

I understand why A is the right answer, but have a follow up question. Does the answer turn on the use of the word “certification” in answer A-meaning the cert required under 37 CFR 1.97(e) that requires the statement that the reference was not known about more then 3 months to filing the IDS. I’m asking because all of the other answer questions also include filing an IDS and citing the reference, but they do not expressly state that they are filing an IDS with the certificatino under 37 CFR 1.97. Do you think assuming that the cert is not filed with an IDS is accurate unless the answer choice or questino states so? I know you shouldn’t assume anything really in this exam, but when I see the answers stating that an IDS was filed, I tend to assume it was filed correctly, which would in include the necessary certification under 37 CFR 1.97. Can anyone share their thoughts on this?

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11 Mambo5No Gravatar January 23, 2012 at 12:42 pm

The only time you need to file the 1.97(e) certification with your IDS is when you submit it after the notice of allowance.

If you look at 1.97(b) and (c), it shows you when you would normally submit an IDS. In this problem, the other answer choices fell within these time frames (for example, within three months after filing a new app), where no 1.97(e) certification is needed.

1.97(d) refers to the particular time frame in answer (A), where the IDS is being submitted late in the game (after the notice of allowance, and before payment of issue fee). Only then, 1.97(d) says, will a 1.97(e) certification be required.

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12 KerstinNo Gravatar January 23, 2012 at 3:28 pm

Thank you Mambo 5. I do love a good Lou Bega song…

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13 FredNo Gravatar January 28, 2012 at 1:57 am

Reading 37 CFR 1.313 also helps with this confusing question.

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14 ZNo Gravatar March 31, 2013 at 1:45 pm

Got this 3/30/13.

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15 youngNo Gravatar May 17, 2016 at 9:09 pm

Generally speaking, an IDS can be freely filed within 3 months from a US filing date, and this free period extends until a first Office Action is mailed.
After the free period and before a final Office Action or Notice of Allowance, you can file an IDS only with a payment of fee OR certifying that the information contained has been first discovered within 3 months.
After the second period and before the payment of issue fee, you can file only if the IDS is for “new” information and this time you also pay the fee.
After this last period, you can have the “new” information examined by e.g. filing an RCE.

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