Changes have been proposed for the Information Disclosure Statement (IDS). I am reviewing the proposal now. The asserted purpose of the changes is to put more of the burden upon the applicant to file the disclosure of prior art earlier and with greater comment upon the relevancy. The changes appear also to place a greater burden on the practitioner.

All of this seems likely to increase the cost of the applicant to comply with the IDS.

In brief summary, the USPTO is proposing additional disclosure requirements. For example, if the IDS cites 20 or less references, an “explanation” of an English language reference of more than 25 pages will be required before the first office action.

For situations where more than 20 references are cited in an IDS, an explanation is required for each cited document before the first office action.

The required explanation must identify information in each each document that is relevant to the claimed invention. This is intended to supply meaningful information to the examiner. As a practice note, what file history is the prosecuting attorney creating in furnishing the required explanation of prior art?

August 14, 2007

As of September 23, 2008, the changed regulations have not been implemented.