“When in doubt, cite it” is the wisdom handed down regarding prior art on the edges of relevance. After all, it didn’t cost much to cite such art by filing an IDS, but there was a big potential risk if the art wasn’t cited. That wisdom, however, may cost you now with the new USPTO fees for filing large IDS’s.
The USPTO is contending that in many instances, these large IDS submissions contain clearly irrelevant, marginally irrelevant, or cumulative information. To cover the extra time examiners must put in to check so many references, and incentivize practitioners to think harder about what information needs to be included, the PTO has upped the fees:
$200 for 51-100 items
$500 for 101-200 items
$800 for 201+ items
The PTO says about 5% of applications contain 51-100 items; 4% of applications have 101-200 items; and 4% have over 200 items. This should translate to only about 1 in 8 applications being affected.
It will be interesting to see how this affects filing. Historically, the choice has been clear. Patent filers have been able to avoid both the extra effort and inherent liability in identifying the most relevant references, by simply citing everything that is even marginally relevant. Are the new fees high enough to discourage that strategy? And seen from a more cynical viewpoint, are the new fees high enough to offset the fees that would otherwise be charged to clients from filing large IDSs. Are they high enough to discourage filers from trying to hide the most relevant references within a mountain of less relevant references?