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March 02, 2015


Elsewhere, a comment was made that one possible effective way out of this predicament was for the applicant to merely wait a cycle and submit the IDS along with a next response (or in the case of an allowance, file an RCE and the IDS).

Perhaps here with less clutter, this can be discussed.

I wonder if the seemingly effective tactic (I think the tactic WOULD work) meets the intent of "timely prosecution." To me, waiting and timely - while effective to circumvent the outcome as evidenced here, are jarringly opposite.


@Skeptical - It seems from my reading of 37 CFR 1.97 that waiting to file an IDS may be a risky tactic depending on where you are in prosecution.

If the next action is final or an allowance, a fee AND 1.97(e) statement are required, the statement requiring that the item of information was cited or known less than 3 months ago. This means the final action/allowance must come within the short window of time between becoming aware of the item of information and the final action/allowance, which may not occur. In order to avoid running afoul of the 3 month window, you may end up having to file the IDS at 3 months, and will merely have extended your PTA reduction by waiting to file the IDS.

Alternatively, if the next action will not close prosecution, a fee OR 1.97(e) statement are required, meaning that you could potentially get away with waiting to file the IDS for as long as it takes to receive the next action, and just pay the fee. However, while that may be allowed under 1.97, it may not be so well received when looking at whether it meets the intent of "timely prosecution," as you are withholding information, if just for a short time.

Skeptical, Dan Organ is right. This is one of those situations where the PTO has taken the statutory language and given it a life of its own that has nothing to do with the intent in passing the statute in the first place. "Wait" and "timely" don't go together in normal parlance, but they do here. If the first action after the restriction requirement had been a rejection, then Gilead would have been better off waiting for the rejection and then filing the IDS. Because of the potential difficulties that Dan O mentioned, unless you're a soothsayer the best practice is still to file an IDS within 3 months of filing the application.

Dan and Roosevelt,

Thank you for your comments.

You both seem to reflect the reality that an action in delaying the submission of information in an IDS , while perhaps not always a best strategic move, is nonetheless a perfectly viable move.

A perfectly viable move that directly on the face (in the face?) violates the intent of the rule.

Dan - you missed 1.97(b)(4) that gives you an out on the "AND" v "OR" timing. Merely file an RCE and you have a clear out to filing the IDS even if you do receive a surprise allowance. The "potential difficulties" are extremely easy to handle.

Roosevelt - I am not sure about your comment concerning the PTO taking the "statutory language" and messing with the intent. Which section of 35 USC (the statute) do you trace the sections of 37 CFR to? No, I think instead that this animal is ENTIRELY an Office animal apart from any statutory intent.

Be that as it may, any time I see a flagrant contradiction between intent and practice, I have to pause.

How to settle a seemingly obvious contradiction?

How would I judge this?

How would a federal judge look at this?

I think that the Office itself by creating such a clear out and around its own voiced "intention" has effectively neutered that intention.

Clearly, the CFR (with no actual USC to trace back to) must rest on its own words. Those words are clear in the ability - the rather EASY ability - to step around the aforementioned "intent." If it were not so intended to so easily circumvent the intent for timeliness to be such a powerful driver, the Office itself has an easy manner of making such an intent manifect - simply remove the very easy sidestep.

Since it was the Office itself that provides the very easy work-around, I must judge that the "driver" for timeliness must indeed be lax.

Of course, when one considers the lack of authority of the Office to make substantive rules affecting patent rights (See Tafas), this laxity is only reinforced. A rule, a heavy handed rule with a strict penalty of loss of rights, would be eminently challengable as beyond the authority of the Office to write in the first place. But a rule of convenience, a rule that merely appears to be "forceful" (with a very real drawback of being a trap for the unwary), is a rule that does not become a "Tafas-like" breach of authority.

To me then, the take-away is that an IDS filing is best done timely, but NEED NOT be done timely. Yes, it is best - BUT (and this is a very big but, apologies to Sir Mix-A-Lot), circumstances that raise the possibility for applicants to NOT be timely and still be able to "follow the rules" and submit an "untimely" IDS are not circumscribed. The Office does not have the authority to stop the game, but they can make it easier to choose the more "noble" path in the game.

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