As of May of 2002, IDSs may be submitted to the Office via the Office’s electronic filing system. Applicants can file an e-IDS using EFS-Web by (A) entering the references’ citation information in an electronic data entry form, equivalent to the paper PTO/SB/08A form, and (B) transmitting the electronic data entry form to the Office. As of January 2007, an e-IDS filed via EFS-Web may include citations of U.S. patents, U.S. patent application publications, foreign patent documents, and non-patent literature (NPLs). Copies of U.S. patents and U.S. patent application publications cited in the IDS are not required to be submitted by the applicants with the e-IDS. If any references to foreign patent documents or NPLs or unpublished U.S. patent applications (that are not stored in the Office’s Image File Wrapper (IFW) system)are to be cited, applicants must submit copies of these documents in PDF using EFS-Web.
The electronic IDS form may be included with a new EFS-Web electronic application filing, or it may be submitted for previously filed patent applications. An e-IDS contains an electronic list of U.S. patent numbers, U.S. patent application publication numbers, foreign patent documents and non-patent literature (NPLs). An individual e-IDS may contain a listing of (1) a combined total of 50 U.S. patents and U.S. patent application publications, (2) 50 foreign patent documents, and (3) 50 NPLs. Applicants are permitted to file more than one e-IDS if these numbers are exceeded.
- (A) the fee required by 37 CFR 1.17(p) is included with the first e-IDS submission (since it will normally be processed first);
- (B) all subsequent submissions making up the IDS should explicitly state that the fee was included in the earlier submission and request that the one fee be accepted for the second and any subsequent submission; and
- (C) all subsequent submissions (electronic or paper) must be received by the Office on the same date as the first e-IDS submission with which the fee was included.
A subsequent non-electronic submission is considered received by the Office on the same date as the first e-IDS submission with which the fee was included for purposes of the fee due under 37 CFR 1.17(p) if it is deposited in Priority Mail Express® under 37 CFR 1.10, deposited in the first class U.S. mail with a certificate of mailing in accordance with 37 CFR 1.8, or transmitted by facsimile with a certificate of transmission in accordance with 37 CFR 1.8, on the same date as the first e-IDS submission with which the fee was included. If a subsequent e-IDS submission is received by the Office on a date later than the date the fee was paid, the later submission will require an additional fee.
A copy of the e-IDS form will be scanned to become part of the Image File Wrapper (IFW). In all applications, the e-IDS will be added to the application file contents listing, and to the PALM EXPO database record for the application.
If the e-IDS complies with the requirements of 37 CFR 1.97, examiners must consider the e-IDS and complete the e-IDS form by initialing, signing, and dating the e-IDS form entries. See MPEP § 609.05(b). Examiners may notice numbering gaps in the “Citation No.” column on the printed e-IDS form due to an applicant data entry error. This data entry error will not affect the e-IDS and is not a sufficient reason not to consider the e-IDS. A copy of the initialed e-IDS form must be sent to the applicant. The completed copy of the e-IDS form sent to an applicant should be made of record in the official file when the copy is sent to the applicant.
An electronic list of all U.S. patents and U.S. patent application publications on an e-IDS form is available and accessible from the examiner’s workstation by clicking on the e-IDS icon, on the workstation desktop. Consideration of the e-IDS may not be deferred and an examiner should not require an applicant to submit paper copies of e-IDS references. It is most important that the U.S. patent and U.S. patent application publication numbers listed on the e-IDS be accurate and devoid of transcription error since no copies of the documents listed on the e-IDS are provided in the file wrapper for the examiner to review. Instead the examiner will electronically retrieve the U.S. patents and U.S. patent application publications identified by the cited document numbers. The only mechanism for having the correct document reviewed and considered when an erroneous U.S. patent or U.S. patent application publication is cited in an e-IDS will be by citing the correct citation number in a subsequent IDS that conforms to the requirements of 37 CFR 1.97 and 1.98.
Examiners can copy and paste U.S. patent and U.S. patent application publication numbers from the e-IDS to EAST and/or WEST for searching. Examiners should copy and paste U.S. patent and U.S. patent application publication numbers from the e-IDS to EAST and/or WEST to review the references that are listed in the e-IDS.
Applicants and registered practitioners are permitted to sign portions of an EFS-Web submission, including an IDS, with an electronic signature. See 37 CFR 1.4(d)(3).
If the e-IDS transmittal letter and list of references is missing from an application file, an examiner may request that the technical support staff obtain an additional printed copy of the letter and reference list from the Office of Patent Application Processing (OPAP).