NEWS
Updated IDS fees
The USPTO has changed how fees for Information Disclosure Statements (IDS) work, this change was implemented 2025-01-19.
A brief overview of the changes are as follows:
There are now fees for when the cumulative number of references that the applicant supplies exceed the following thresholds: 50, 100, 200. These fees are not insignificant and do not scale by entity size.
Between 51 and 100 references = $200
Between 101 and 200 references = $500
Over 200 references = $800
However, do note you reduce the larger fee by the smaller, so if you had cited over 50 citations and then cited over 100, but you already paid the $200 fee earlier, you would pay $300 for the second fee instead of $500. This applies to the over $200 fee as well.
These fees apply to applications filed before these changes.
These new fees do not replace the standard IDS filing fee, this is now called the “IDS timing fee” and these new fees are “IDS size fees”.
These numbers do not include references that were filed by the examiner or a “third party”.
Duplicate items are counted.
Divided Infringement
System claims describe the overall arrangement and interaction of different components within a system, protecting the “what” and “how they work together” of an invention.
Method claims focus on the specific steps to achieve a result, essentially protecting the “how” of an invention.
System claims define the components and their interactions within a system, while method claims detail the steps or actions taken to perform a function.
Using an example drawn from a simple google search and its generative AI, a method claim might be: “A method for cleaning a surface, comprising the steps of applying a cleaning solution, scrubbing with a brush, and rinsing with water.” A system claim might be: “A cleaning system including a spray nozzle, a brush attachment, and a water reservoir, wherein the nozzle is designed to deliver cleaning solution to the brush.”
Typically, method claims are considered easier to get, but more difficult to enforce, since all the steps of a method must be performed by a single entity in order to prove infringement, whereas system claims can be infringed by simply creating a system with the described components. But as usual, things are a bit trickier than that. Who is responsible for infringement when a system’s components are controlled by different agents?
The courts have decided that to “use” a system, a party had to “control the system as a whole and obtain benefit from it.” So in a case (Centillion Data Systems, LLC v. Qwest Communications International, Inc.) involving backend components operated by the service provider (Qwest), and front end components operated by customers, the courts decided it was the customers that used the system, therefore Qwest wasn’t liable for infringement.
A recent case, CloudofChange LLC v. NCR Corporation, involved a Point-of-Sale (PoS) system called NCR Silver. The claimed system in CloudofChange’s patents required both vendor-operated webservers and subscriber-operated PoS terminals. NCR operated the backend, while merchants controlled the frontend PoS terminals. NCR’s merchant users put the system into service because they initiate a demand for service at the POS terminal and benefit from the backend providing the service.
CloudofChange alleged direct infringement arguing NCR controlled and benefitted from each component of the claimed system, and the district court agreed with CloudofChange on the grounds that NCR’s merchant agreement required merchants to obtain and maintain internet access. This point, the court held, was fundamental in determining that NCR was directing its customers, and was therefore using the CloudofChange’s patented system. This differed from the previous Centillion case, where Qwest was determined to have in no way directed its customers to act as agents.
The Federal Circuit court, however, reversed that decision based on the same Centillion framework. The Circuit court noted that CloudofChange acknowledged NCR’s merchants used the system, not NCR, and simply requiring merchants get and keep internet access doesn’t rise to directing or controlling their use of the system as a whole. NCR doesn’t direct or control its merchants to subscribe to the NCR Silver system etc., the merchants take these actions of their own accord.
The Federal Circuit court said the District court had erred by focusing the liability analysis on control of a single element, internet access, rather than control over the use of the entire system. The court also distinguished between liability analysis for method claims versus system claims. For method claims, the defendant must control each step of the method. System claims describe a collection of components working together as a unified whole at a single point in time.
This fundamental difference between method and system claims directs how the Federal Circuit court thinks about liability. For a method claim, each step represents a distinct action performed by someone. If the steps are divided among multiple parties, it needs to be shown that one party is controlling or directing the performance of each step, otherwise no single party can be said to be ‘performing’ the complete method.
For system claims, the analysis focuses on control over the system as a whole, rather than individual components. The question there is does someone put the complete system into service and benefit from its collective operation. But in both cases, dividing the action among parties may result in no infringement.
New FishFAQ Trademark video: What is a Trademark?
We have started uploading a new series of FishFAQ videos directed towards Trademarks. This first video starts with the most basic question: What is a Trademark?
It covers the purpose of trademarks, who they are meant to protect, and why the government is interested in doing so; the basic things that can be protected under trademark rights, and the historical beginning of the modern trademark system.
The USPTO’s New Fee Structure for Large Information Disclosure Statement Filings.
“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?
New FishFAQs video: The Patent Process Overview
We have recently added another video to our FishFAQ video series on patents. This one covers a basic overview of the U.S. patent process.
You can find the entire FishFAQ video playlist at our Youtube channel: https://www.youtube.com/@fishiplaw
New FishFAQs video: The History of Patents
We have recently added another video to our FishFAQ video series on patents. This one covers a brief history and development of patents.
You can find the entire FishFAQ video playlist at our Youtube channel: https://www.youtube.com/@fishiplaw