New IDS Requirement In USPTO Fee-Setting Proposal | Foley & Lardner LLP
The U.S. Patent and Trademark Office’s (USPTO’s) proposed rulemaking that focuses on “fee adjustments” for 2025 includes a trap for the unwary related to Information Disclosure Statements (IDSs) that could complicate compliance with the Duty of Disclosure. If adopted, practitioners may want to update their IDS forms but still will have to take care when submitting IDSs to ensure compliance with the new requirements.
New Escalating Cumulative IDS Fees
In my summary of new fees in the proposed rulemaking, I flagged the proposed new escalating IDS fees that would be based on the cumulative number of references cited:
> 50 items: US$200
> 100 items: US$300
> 200 items: US$300
I did not flag the related requirement to include a statement with every IDS to the effect that “the IDS is accompanied by the appropriate IDS fee, or that no IDS size fee is required.”
This new requirement may seem innocuous, but the USPTO’s Federal Register Notice states that any IDS filed without the required statement “will not be considered” unless resubmitted with the required statement. The Federal Register Notice states further that the resubmitted IDS would have to comply with the timing requirements of 37 C.F.R. § 1.97 as of the date of resubmission.
This would mean that by the time the new “defect” in the original IDS is identified, it is likely that at least an IDS fee if not an RCE and RCE fee would be required to obtain consideration of the IDS. Not only would this complicate and delay the examination process for a trivial reason, it would drive up the costs of obtaining consideration of an IDS, especially in view of the proposed RCE fee increases.
1st RCE: US$1,500 (+10% over current fee)
2nd RCE: US$2,500 (+25% over current fee)
3rd RCE: US$3,600 (+80% over current fee)
Although the new IDS fees may seem minimal when considered in isolation, the USPTO’s proposal to also require a new statement in every IDS and deny consideration of IDSs that omit the statement could have the effect of placing a high burden on complying with the Duty of Disclosure.
This burden is particularly troubling in view of the USPTO’s statement that only about 13% of patent applications would be subject to even the first IDS reference fee (because ≥ 50 items are submitted in only about 13% of patent applications). Imposing a new requirement on all IDS submissions when fewer than 15% of patent applications would even be subject to the new fees creates an unjustifiable trap for the unwary trying to comply with the Duty of Disclosure.
If you share these concerns or have others about the USPTO’s proposed fee increases, you still have time to submit written comments through the Federal eRulemaking Portal by June 3, 2024.
