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Newsletters

Information Disclosure Statement (IDS)
Winter, 1998 

    Effective from January 1, 1999, the ROC patent applicant shall disclose to the Intellectual Property Office (IPO) the relevant prior art upon filing the application.@@If the prior art is a domestic or foreign material available in the IPO, the applicant shall describe the country, the serial number and the publication date of the material.@@If not available in the IPO, the applicant shall provide a copy of the prior art.@@If the prior art is a copyright work, the author, the title, the publisher and the publishing date of the work shall be reported to the IPO.@@If the applicant does not disclose in the specification the prior art, the Examiner may require the applicant to so supplement if deemed appropriate.@@We have the following comments for such measure:
  1. The IPO improperly imposes on the applicant the obligation to check whether or not the material is available in the IPO;
  2. If the copyright work is a foreign literature and not readily available in the IPO, we doubt the IPO or the relevant examiner will review the literature first before the relevant application is examined;
  3. If the applicant does not act as instructed, the only punishment thereto is "the examiner may require the applicant to so supplement if deemed appropriate;"
  4. We can hardly ascertain when the examiner will deem it appropriate to require the applicant to supplement the prior art.

@@The IDS requirement is compulsory in the USPTO.@@Applicants always receive "warning" or reminding letters from the US patent attorneys that it is critical for the applicant to comply therewith.@@If the IPO does not encumber the applicant with some disadvantage, it deserves to be observed how this requirement will be complied with by the applicant in this country.@@It is understood that what an applicant who is determined to be fraudulent before the USPTO has eventually obtained is an unenforceable patent.@@Without such a pressure, it is believed to be doubtful for the applicant to act as "optionally" requested.

@@We also have hereby some words for the USPTO.@@Normally, the extent of efficiency, transparency and/or rationality of government will explain the degree of the national strength of the country.@@Generally speaking, the USPTO behaves not bad in these factors.@@Nevertheless, so far as IDS requirement is concerned, we have the following opinions:

  1. When the applicant admitted prior art (AAPA) is a prior US issued patent or a notorious publication and the applicant has described the main feature of AAPA in the background of the invention, it is questionable to stick to the view that the applicant must submit a copy of AAPA since it is readily available for the USPTO to obtain AAPA.@@This is especially true when we stand before the fact that a fraudulent behavior before USPTO might cause the resulting patent unenforceable or invalid;
  2. For a continuation application or a continuation-in-part application (C-Application), the applicant is still required to submit the IDS which is identical to that of the parent application.@@We are curious to know how USPTO treats, collects or handles the great number of pages of the identical IDS in such C-Application which is so much related to the parent application.

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