The USPTO’s Statement on Required Practitioner Review of Information on an IDS
Patent – Patently-O 2025-06-04
Summary:
by David Hricik, Mercer Law School
Dennis pointed out that the Director has in Ecto World, LLC v. RAI Strategic Holdings, Inc, IPR2024-01280_paper_13_20250519 made it very difficult to obtain institution if a petition is based on art that was listed on an IDS even if it was not actually applied by an examiner, unless the art was listed on a “voluminous” IDS. That is a step back from the more real-world approach that had included examining whether the reference had actually been applied.
Dennis points out that avoiding “voluminous” (whatever that means) IDSs should help insulate patents from institution. Also reducing length is a statement by the Office that signing an IDS certifies that the practitioner has reviewed every reference listed. Specifically, In its Guidance on Use of Artificial Intelligence-Based Tools, the Office the Office expressed a concern that, while AI can be used to populate IDSs, doing so posed “the danger of increasing the number and size of IDS submissions to the USPTO, which could burden the Office with large numbers of cumulative and irrelevant submissions.” 89 Fed. Reg. at 25615-16. As a result, it noted the duty of reasonable inquiry included “reviewing each piece of prior art listed on the form” to determine if it was compliant with 37 CFR 11.18(b).