Determining whether a new U.S. application is related to a joint U.S. patent application can be a little more difficult. The telltale signs indicate whether U.S. applications have at least one common inventor and/or the same assignee and reveal similar subject matter (see MPEP 2001.06(b)). The references cited in the PCT international search report of [1] have been taken into account but are not included for patents resulting from this application as they have not been included in a separate list under 37 CFR 1.98(a)(1). In order for the references to be printed on the resulting patent, a separate list, preferably on a form PTO/SB/08A and 08B, must be filed within the time limit set for responding to this action by the Office. Third parties (persons who are not under 37 CFR 1.56(c)) cannot file returns in accordance with 37 CFR 1.97 and 37 CFR 1.98. Third parties may only file patents and publications pursuant to 37 CFR 1,290 in applications filed under 35 U.S.C. 122(b).

See MPEP § 1134.01. For unpublished and pending applications, any member of the public, including individuals, businesses, and government agencies, may file a 37 CFR 1,291 protest before sending a 37 CFR 1,311 allocation notice. See Mpep Chapter 1900. Alternatively, third parties may provide the applicant with information which may transmit the information to the Office in an IDS. See 37 CFR 1.56(d). The Agency reviews each filing in a third-party application to determine whether the filing complies with 37 CFR 1,290 or 1,291. Any third party submission that does not meet the requirements of 37 CFR 1,290 or 37 CFR 1,291 will not be included in the application package and will not be rejected. The staff of the Office (including the Patent Examination Corps) are responsible for: (1) not responding to an application or other filings of third parties in an application, except those corresponding to 37 CFR 1,290 or 37 CFR 1,291; and (2) refuse to accept oral or telephone comments or contributions to third party requests. See MPEP § 1134.01. An Information Disclosure Statement (SDI) describes all prior art or related technologies claimed in a patent application. It imposes the burden of disclosure on the inventor or applicant.

If an application does not contain this statement or does not contain the main prior art, any granted patent may become invalid or be considered fraudulent. (a) In order for an applicant for a patent or a new edition of a patent to have a disclosure statement of information in accordance with section 1.98 which the Office has taken into account in the pending filing of the application, the information return shall comply with any of subparagraphs (b), (c) or (d) of this Section. It is important that you provide proper disclosure of the invention and information when preparing the application. This means the disclosure of all known and relevant prior art to your patent attorney. As a client, you should tell your patent attorney what you know and how you find it. When it comes to patents or patent applications, it`s relatively simple: you list them on the form. If the state of the art is something else — a white paper, journal article, product, or service that exists — you need to provide information about where the USPTO can find it. You must also provide a copy of the material. The brief explanation may indicate that a certain number or paragraph of the patent or publication is relevant to the claimed invention. It could be a simple statement indicating similarities between the subject matter of the information and the claimed invention.

It is permissible, but not necessary, to discuss the differences between the information cited and the claims. See, however, Semiconductor Energy Laboratory Co. v. Samsung Electronics Co., 204 F.3d 1368, 1376, 54 USPQ2d 1001, 1007 (Fed. Cir. 2000) (”[A]lhodem MPEP Article 609A(3) grants the applicant a certain margin of appreciation in the way he formulates his concise statement, it does not allow the applicant anywhere to intentionally omit the main lessons of the reference.”). The information return filed [1] does not comply with 37 CFR 1.98(a)(1), which requires: (1) a list of all patents, publications, applications or other information submitted to the Office for examination; (2) U.S. patents and U.S. publications of patent applications listed in a separate section from citations of other documents; (3) the application number of the application in which the information return is submitted on each page of the list; (4) a column containing a space for the examiner`s initials next to each document to be considered; and (5) a title clearly indicating that the list is a disclosure statement. The information return was included in the application package, but the information it contained was not considered.

Yes, you must complete an online QPIDS. This e-petition removes the Office from the patent forms and files an NCE. . . . . .