Citation by IDS: So What if I Didn’t?

Introduction

Though neither desirable nor recommended, a patent may issue from an application that in its specification mentions a reference that was not, during prosecution, separately cited in an Information Disclosure Statement (IDS).1 Upon realizing that this has happened, what is the patentee2 to think? To do? Should they do anything?3 Should they immediately seek reissue? How comfortable should they feel doing nothing?

In our view, the crucial question around which these scattered worries are dancing is this: what, if anything, does a patentee “get” for that mention of the reference4 in the specification, with respect to (1) any statutory (i.e., § 2825) presumption of validity over that reference and (2) any increased or decreased likelihood of becoming the next victim of the “plague”6 of inequitable conduct?

For at least the reason that we do not believe that a complete, definitive answer to this question currently exists, we do not write today to offer one. Instead, and hopefully still usefully, we seek to provide an analytical structure to patentees finding themselves in this situation, to help them determine their level of comfort with the option of leaving well enough alone, and in the event that it becomes necessary, to arm them with the best arguments and authority we have been able to craft and identify to aid in their attempt to establish that the mention of the reference in the specification does in fact get them something.