By Donald Zuhn —

Over the past week, Patent Docs has reported on two challenges to new IDS rules proposed by the U.S. Patent and Trademark Office ("Changes to Information Disclosure Statement Requirements and Other Related Matters," 71 Fed. Reg. 38,808).  The USPTO’s new IDS rules would require applicants to, inter alia, provide detailed explanations of all references when more than 20 references are cited and explain cited references that are at least 25 pages long or in foreign languages.

Interestingly, while the USPTO attempts to force U.S. applicants to jump through even more hoops in complying with their duty to disclose "all information known . . . to be material to patentability" under 37 C.F.R. § 1.56, IP Australia announced on October 18, 2007 that it was "substantially remov[ing] the requirement for applicants and patentees to inform the Commissioner of Patents of the results of documentary searches by, or on behalf of, foreign patent offices" (see "Changes to regulations made under sections 27(1), 45(3) and 101D of the Patents Act 1990).  Thus, as of October 22, 2007, Australian patent applicants will no longer have to inform IP Australia of documentary search results — with one exception:

if the final date by which an applicant or patentee was required to inform the Commissioner of the results of a search under the regulations was before 22 October 2007, and the Commissioner was not informed of the results of the search by that final date, the results of that search remains outstanding.  The amending legislation does not excuse any past failure to comply with the disclosure obligations.

In a corresponding position paper, IP Australia provided an overview of the feedback it received in response to its May 16, 2007 consultation paper regarding the elimination of the obligation to lodge search results.  In the position paper, IP Australia noted that it received comments indicating:

a general level of consensus that the existing search result disclosure provisions were onerous and costly for applicants and other users of the patent system.  There was also a level of doubt expressed as to the value or the benefits arising from the present provisions.

One can only hope that the USPTO will look to the changes in Australian disclosure requirements, and the reasons offered for such changes by IP Australia, as it continues in its efforts to reshape the U.S. disclosure requirements.

Related reading:

• "More on Second Letter to OMB Criticizing the IDS Rule," October 24, 2007
• "OMB Receives Second Letter Criticizing Proposed IDS Rule," October 23, 2007
• "Cantor Fitzgerald VP Criticizes IDS Rule in Letter to OMB," October 18, 2007