United States: Information Disclosure Statements: When And How To File?

Under U.S. patent law, while there is no duty to perform a search of relevant art, inventors and those associated with filing or prosecuting patent applications as defined in 37 C.F.R. § 1.56 have a duty to disclose to the U.S. Patent and Trademark Office (USPTO) all known prior art or other information that may be "material" in determining patentability.  In U.S. patent practice, this duty is deemed satisfied when "material" information is submitted to the USPTO in an information disclosure statement (IDS).  The duty continues until a patent has issued, and importantly, if one fails to live up to this duty, the resulting patent may be deemed unenforceable.

While there is no hard and fast rule as to what information is "material," a good rule of thumb is to disclose all information that is relevant to the claimed subject matter.  Such information can include other related U.S. patent applications and patents of the applicant or references cited in a PCT or foreign counterpart application.  This article explores when and how to file IDSs in satisfying the duty to disclose "material" information, as well as common mistakes to avoid in IDS filings.

When to File an IDS

In order for the information in an IDS to be officially considered during the pendency of an application, the IDS must be timely filed.  While an IDS can be submitted at different stages of prosecution, as outlined below, it is recommended to file an IDS (and supplemental IDSs) as early as possible to ensure that it will be considered by the Examiner and to avoid incurring additional costs.  For example, in certain instances, one may be required to file a request for continued examination for the sole purpose of filing an IDS.  Further discussion of the effects of an untimely filed IDS can be found at Global IP Matters in our previous article here.

37 C.F.R. § 1.97 generally governs when and how IDSs may be submitted at different stages of prosecution.  Depending on the stage of prosecution, there may be additional requirements in filing the IDS, as explained below.

"First Stage"—37 C.F.R. § 1.97(b)

An applicant may file an IDS within 3 months of the U.S. filing date, or before the mailing of a first office on the merits or after the filing of a Request for Continued Examination (RCE).  If an IDS is filed during this stage of prosecution, there is no need to file a 37 C.F.R. §1.97(e) statement or a government fee therewith.

"Second Stage"—37 C.F.R. § 1.97(c)

If the First Stage has expired, an applicant may file an IDS before the mailing of a final Office action, a Notice of Allowance, or an Ex parte Quayle action.  However, if an IDS is filed in this stage of prosecution, the IDS must be accompanied by either a 37 C.F.R. §1.97(e) statement, which is provided below, or the government fee set forth in 37 C.F.R. § 1.17(p).

35 C.F.R. § 1.97(e) states

"A statement under this section must state either:

(1) That each item of information contained in the information disclosure statement was first cited in any communication from a foreign patent office in a counterpart foreign application not more than three months prior to the filing of the information disclosure statement; or

(2) That no item of information contained in the information disclosure statement was cited in a communication from a foreign patent office in a counterpart foreign application, and, to the knowledge of the person signing the certification after making reasonable inquiry, no item of information contained in the information disclosure statement was known to any individual designated in § 1.56(c) more than three months prior to the filing of the information disclosure statement."

"Third Stage"—37 C.F.R. § 1.97(d)

If the Second Stage has expired, an applicant may file an IDS before or with payment of the issue fee.  However, if an IDS is filed in this stage of prosecution, the IDS must be accompanied by both a 37 C.F.R. § 1.97(e) statement and the government fee set forth in 37 C.F.R. § 1.17(p).  If a 37 C.F.R. § 1.97(e) statement cannot be made, then an applicant must file an RCE to have the IDS considered by the Examiner.

How to File an IDS

An IDS can be filled with the USPTO using the USPTO form PTO/SB/08a.  Further instructions on how to prepare the USPTO form PTO/SB/08a can be found at the USPTO site here.

In addition to the IDS itself, "a transmittal letter may be filed with the IDS.  This transmittal letter can be useful to briefly explain to the USPTO why the submission of the IDS is in compliance with current USPTO rules and regulations.  Further, an applicant can include additional statements regarding the IDS, such as a statement under 37 C.F.R. § 1.704(d).

Common Mistakes

Below is a list of some common mistakes to avoid in preparing and filing of IDSs:

  • Failing to submit copies of foreign references and non-patent literature with an IDS.
  • Failing to resubmit a corrected IDS: If an initial submission of an IDS is deemed non-compliant, it will typically not be considered by the Examiner and will simply be placed in the file.
  • Failing to submit an IDS with references that are mentioned in the body of the application itself: Only references cited in an IDS are required to be considered by the Examiner.
  • Citing immaterial or cumulative references in an IDS, which increases costs in time and also possibly in government fees.
  • Not staying up-to-date on IDS requirements.
  • Failing to submit supplemental IDSs after the discovery of previously unknown prior art.

Additionally, it is important that an applicant verify that each reference submitted in an IDS has been considered by the Examiner before payment of the issue fee.  Since the Examiner is required to sign each IDS that he/she considered during prosecution, an applicant can simply look to the applicant's file wrapper that is provided on the USPTO's Patent Application Information Retrieval (PAIR) system and confirm the Examiner's signature on each submitted IDS indicating that all cited references have been considered.

Conclusion

While the above discussion provides a general overview of information disclosure statements and how to file them, applicants are encouraged to consider when and whether to file various papers under every application's particular circumstances and to verify disclosure requirements according to the current rules and regulations of the USPTO.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
 
In association with
Related Topics
 
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions