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Joltin' Joe
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Leopold, No, I can't say that any come to mind. So having said that there would always be a risk that one of the references submitted in a large IDS might not be viewed as relevant during a text search perhaps because the terminology might be somewhat different than what is typically employed in the art or for whatever reason and then later turn out to be a relevant reference. Unless you happen to read each reference in toto it would likely never be discovered except through serendipity. I should add that I did have something like this happen recently where I was examining a continuation application and it turned out that one of the references cited in a 100 reference IDS did read on both the continuation and the allowed parent. The terminology in the reference was sufficiently different that it would not have been obvious to search for that expression. But it was very clear that it was describing the same thing as the application that I was examining. Frankly I think there will always be some outliers in a handful of applications that may read on the application.
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AAA JJ, Sorry about that - that came across like a hanging curve ball. Of course it would be an invalid claim. I was thinking of some of the articles I have seen with regard to submitting a large number of references and perhaps triggering inequitable conduct. Is there any diligence required on the part of the applicant and their representative to screen the references and provide guidance as to which might be the most pertinent or is throwing a large number of references without any regard to pertinence an acceptable practice? I'm just asking here, not slinging arrows. And as an aside, why wait until allowance to submit 100+ references in an IDS? Again, just asking...
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I should add that the Reference Manager tool allows you to get search strings that can be copied into our search engine with all the cited publication numbers from 892 and 1449 submissions. So once you have the whole collection in a string you can then combine that with text expressions to filter the collection. Now the question I have is this - what are the implications of for example having an application allowed, filing an IDS with 100 references via an RCE, getting a signoff on the IDS and later having it come to light that one of the citations actually read on the claim?
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Actually it can be done with Patents and PG Pubs through the use of our Reference Manager tool that is part of our Docket Manager. As far as NPL I think you have to get past the point of having paper submissions - otherwise the only option is to print the document to a PDF, open the document and OCR it, then search. Now you could do that for a whole collection of documents - Acrobat allows you to search a collection of dcouments in a file directory for example and I have done that for a limited amount of submissions. Many times this would be overkill though - if you have 20 documents that are submitted as NPL 3-5 might be published papers of length 6-20 pages while the rest may simply be screenshots of a browser page.
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There is a much easier way to do that. Go into eDAN, and go to any item in the file wrapper (the claims for example). Then go to the top, under tools go to "Reference Manager' and a browser window will open with all the 1449 and 892 references that have been filed for an application. That way you can get the Patents and PG Pubs that have been cited as a BRS string that can be copied into EAST or WEST. Sadly, no such tool for foreign references
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Jan 11, 2013