"Going Global" Enterprises Must See: Three Pictures Take You to Read the Key Points of US Patent IDS



Source: China Intellectual Property News

Release time:2016-07-29

The "Four Basic Principles" of the U.S. Patent IDS Practice"

The conventional practice of applying for a patent in the United States is to entrust a domestic patent agency to implement it through a foreign patent agency, during which it will inevitably encounter a U.S. patent IDS matter. IDS is a special obligation imposed by U.S. patent law on patent applicants, which requires patent applicants to submit public information known to themselves (including inventors, assignees, and U.S. agents) as IDS within a specified period of time to assist U.S. patent examiners in examining the patent. It should be noted that "patentability-related" here includes public information that may affect the scope of the right, as well as public information that may help the examiner understand and review the scope of the right.


  The most important feature of IDS is that the more patents of the same family involve countries and cover, the more difficult it is to predict the timing of IDS submission, which leads to a sudden increase in the difficulty of controlling patent applicants. Once the patent applicant ignores the IDS obligation, the most serious consequence is that it will lead to the invalidation of the patent right.

Risks, benefits and costs always seem to be one and the other, making it extremely difficult to reconcile. To this end, we sort out the "four basic principles", and strive to achieve the United States patent IDS risk, benefit, cost balance.

1. "Required" IDS, must be submitted;

2. IDS that is not a "must-hand" type may not be submitted, and IDS that can be a ride may be submitted;

3. Merge submission of IDS;

4. Submit within 30 days from the date of "the patent applicant himself receives the relevant documents by email.


  Missed opportunity to submit IDS results in 1.7-20 times excess cost

The submission of U.S. patent IDS is directly related to the U.S. patent application process and can be summarized into four time nodes, namely, before the U.S. non-final OA is issued, before the final OA or authorization notice is issued, before the payment and license is issued, and after the authorization announcement. As shown in Figure 1, the later the IDS is submitted, the higher the official fee incurred by IDS. If IDS is submitted at the latest fourth node, the official fee will climb to $3000. At the same time, the corresponding patent agency fees will also increase. U.S. patent agency fees are calculated on the basis of the number of hours of labor paid, while the timing fee depends on the professional level of the agent, and the market is commonly quoted between $200-600 per hour.


 Schematic diagram of the US patent IDS submission phase (Figure 1)

  Note: Official fees may be adjusted. If relevant fees are involved, please check the latest official fees.

To make a simple example, each IDS generates an agency fee of about 250-800 US dollars. If the IDS submission time node is delayed, other procedural work will be started, thus generating more agency fees. For example, once the RCE program is initiated, it will incur an additional agency fee of about $600. In this way, if the patent applicant fails to cope and misses the opportunity, the overall cost of IDS will increase by 1.7-20 times or even more.


  One of the key points of US patent IDS: 12 public materials and their theoretical best submission time.

In practice, how many types of IDS materials are required to be submitted by patent applicants? And when is the most appropriate time to submit them? U.S. patent laws and regulations do not give a clear answer. We grouped the IDS "patentability-related" public information into two broad categories and 12 sub-categories, and used a chart to indicate the best timing for submission.


12 public materials and their theoretical best time to submit (Figure 2)

The above 12 public materials should be submitted or not at different stages. Among them, IDS, which must be submitted, must be submitted. IDS in the "for insurance" category, on the other hand, need to be empirically judged and then choose to submit or not to submit.


 U.S. Patent IDS Key Point 2: Use IDS System Control Model to Guide Every Execution

According to the laws and regulations of the United States and practical experience, we have designed the "U.S. Patent IDS System Control Model" from four dimensions: material category, patent examination progress of the same country, submission timing and cost, and globally guide IDS to submit all matters.

Figure 3 takes the patent application path of "Chinese patent application-PCT application-foreign patent application" as an example, and the foreign patent application is the United States, the European Union, Japan, South Korea and other major countries and regions as an example.

Considering each scenario in the IDS practice, each "●" "in Figure 3”“"represents a potential IDS submission point in time, and each IDS submission means a fee, agency fee and/or official fee.

When the same rampage appears""and""When, will only choose one occurrence, based on the consideration of reducing costs, should let""Occurrence and avoidance""happened.

Same Vertical Mark""When, the coping strategy is to merge the submission IDS, should merge the submission. The reason is that they are likely to occur together at similar times, based on the cycle of patent examination procedures in each country. Similarly, each vertical column is marked with""The materials that can be submitted together should also be submitted together.

In addition, the vertical IDS on the far right does not usually occur. In practice, the filing of IDS is mainly involved only when the patentee plans to file a patent infringement lawsuit.


  U.S. Patent IDS System Control Model (Figure 3)

  Key Points of U.S. Patent IDS: The patent applicant shall submit it within 30 days from the date of knowledge.

Patent Term Adjustment (PTA), a unique patent matter in the United States, allows patent applicants to obtain patent protection beyond 20 years, so what is its relationship with IDS? The answer given is that "submitting IDS within 30 days from the date the patent applicant receives the email of the relevant documents" will help to obtain a more favorable PTA. The reasons are analyzed as follows:

1. As the non-final OA, final OA or authorization notification time in the United States, especially the occurrence time of non-final OA is not controlled by the patent applicant. Therefore, it often happens that patent applicants receive OA or authorization notices from the United States soon after receiving OA patents of the same family in other countries. In this case, according to Figures 1 and 3, it can be seen that if the patent applicant does not respond to IDS in a timely manner, it will cause IDS to upshift and bring higher costs;

2. The U.S. patent IDS system stipulates that IDS shall be submitted within 3 months from the "knowledge date", while the PTA system stipulates that if IDS is submitted later than non-final OA and 30 days after the "knowledge date", the part exceeding 30 days from the "knowledge date" will be deducted from PTA by the U.S. Patent and Trademark Office as the delay of the patent applicant. This is equivalent to an extension of the duration of patent protection that could have been obtained, but is shortened by the delay of the patent applicant.

Because the detailed calculation of PTA has not become a law, when a patent applicant initiates a complaint based on the PTA calculated by the U.S. Patent and Trademark Office to fight for the benefit of his or her protection period, it will trigger a new round of fees. If there is a further expectation of appealing through litigation, the high cost of litigation in the United States will be unbearable for Chinese patent applicants.

3. The so-called "knowledge day" refers to the "knowledge day" of the patent applicant, inventor or U.S. patent agency, whichever is the earliest. For example, if the European patent OA triggers IDS, the most easily provided evidence of "knowledge date" by Chinese patent applicants is the mailing date recorded on the e-mail they received from European OA.