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3 votes
Accepted

Do I have to disclose the infringement in the Information Disclosure Statement form?

If you file the non-provisional within the 1 year time after the provisional, then anything well described in the provisonal gets the date of the provisional. If the "infringing" product is based ...
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3 votes

Burying prior art/achieving broad presumption of validity via IDS

The examiners that I know would see through this and be at least slightly annoyed. This would not help you. I look at the IDS as a list of references that I am aware of and that I have had time to ...
2 votes

Does a CIP IDS require a copy of the parent US application?

The IDS does not need to list any U.S. applications that are claimed as priority applications. It should list everything listed on the IDSs on all previous applications or cited against them. You do ...
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2 votes
Accepted

Information Disclosure Statement for counterpart foreign application

Since it is before the first actions on the merit there are no fees due of any certificate needed. You already may know that it is best practice to error on the side of disclosure.
  • 26.1k
2 votes
Accepted

Does an IDS filed after a non-final election requirement require payment of a fee

No fee is required An action on the merits means an action related to patentablity. It excludes formalities like errors in payments or requests to have drawings improved. From a very quick search of ...
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2 votes
Accepted

Non-analogous art on the IDS

It is not recommended to do anything other than list the reference. The time to argue about its relevance is if and when the examiner cites it in an office action. A notation on the IDS that might be ...
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1 vote

Which IDS form works on the PTO website?

The one labeled Approved for use through 07/31/2012 is wrong. That was pre- AIA. Yes, they are both on the same site - but in different places on the site. You want the version of the form here NOT ...
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1 vote

Can inequitable conduct lead to patent invalidation before litigation?

No The way some of or all claims can be invalidated outside of a patent infringement case in a real (Article 3) court is via an IPR before the USPTO. The grounds in an IPR are limited to the issues ...
  • 26.1k
1 vote

Can I cite Wikipedia as a reference in an IDS?

You can list a Wikipedia entry in an IDS. While there is not a requirement to do any searching for references, we are required to list the relevant things we find. The issue with citing Wikipedia is ...
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