Information Disclosure Statement Cover Letter

An information disclosure statement (IDS) describes all prior art or related technology claimed in a patent application.5 min read

What Is an Information Disclosure Statement?

An information disclosure statement (IDS) describes all prior art or related technology claimed in a patent application. It places the burden of disclosure on the inventor or applicant. If an application doesn't have this statement or fails to include key prior art, any issued patent may become invalid or considered fraudulent.

Information Disclosure Statement: What Is It?

Patent applicants have a responsibility to complete an IDS, which references:

  • all prior art, or patents
  • patent applications, and
  • publications related to an invention.

Because inventors are more likely to be aware of existing patents or related technology than a patent examiner would be, the United States Patent and Trademark Office (USPTO) requires applicants to disclose all prior art in an IDS.

Why Are Information Disclosure Statements Important?

The IDS is part of an applicant's duty to work in good faith and with complete candor when applying for a patent. Applicants should include any information that may affect an invention's patentability. In addition, patent attorneys or agents who help with the application must disclose prior art.

Failing to file an IDS will never benefit you. If your patent is issued, it may be unenforceable. In addition, the USPTO may believe you intended to deceive the office.

Reasons to Consider Filing an Information Disclosure Statement

You should file an IDS if the prior art meets any of these criteria:

  • It's used, known, or sold in the U.S.;
  • It's patented in another country;
  • It's featured in a publication in the U.S. or anywhere in the world;
  • It's described in a USPTO or foreign patent application; or
  • It's described in an issued USPTO patent.

Reasons to Consider Not Filing an Information Disclosure Statement

An IDS is only necessary when you or any co-applicants are aware of prior art. You don't have to do additional research to discover prior art if you don't already know about it.

Common Mistakes

  • Not understanding what to disclose in an IDS. Include anything that questions the novelty or the obviousness of the invention. If you have applied for similar or related patents before, include that prior art in the IDS. Always be candid and include more than you think is necessary.
  • Neglecting to reference foreign patents in an IDS. The IDS should reference both patents issued by the USPTO and those issued by international patent offices.
  • Failing to update an IDS after discovering previously unknown prior art. Applicants must continue to be open throughout the patent application process. If you discover prior art through a foreign patent application or an International Patent Search, issue a supplemental IDS with this information. Always translate any foreign prior art into English.
  • Not staying up-to-date on IDS requirements. The USPTO constantly updates its processes and fees. The office has proposed eliminating the Quick Path Information Disclosure Statement (QPIDS) process and the need to file a Request for Continued Examination (RCE). Check the USPTO site to know if you need to certify your IDS and pay a fee or if you can submit it throughout the prosecution process. Though staying up to date on changes can be challenging, legal experts believe any attempts to streamline IDS forms will have a positive effect. This will likely reduce delays and quicken the patent application process.

Deadline

An applicant must file an IDS within one of these periods:

  • With the original patent application;
  • Within three months of the original USPTO filing date;
  • Within three months of beginning the national stage of an international patent application (PCT);
  • Before the mailing date of the first USPTO Office Action on the application's merits;
  • Before the mailing date of the first USPTO Office Action after filing an RCE;
  • Within three months of the publication date of an international design patent application; or
  • Before the mailing date of a final Office Action, a Notice of Allowance, or an Office Action that closes prosecution, also known as an ex part Quayle action, as long as it includes the right fee. This IDS must also include a statement describing that the information was cited in a foreign patent application less than three months prior, or that the applicants didn't know any of the information prior to three months earlier.

If you don't meet the deadline, you don't receive an extension. However, if you make a sincere attempt to comply but accidentally leave out some of the content, you may get additional time to meet the IDS requirements.

Frequently Asked Questions

  • Do Applicants Have to Search for Prior Art Before Completing an IDS?

No, an IDS should only include known prior art. It doesn't require applicants to do additional research.

  • How Many IDS Forms Can You File?

Most applicants file at least one IDS, and many file more than one.

  • Can You File an IDS After Receiving a Notice of Allowance?

Yes. If you discover prior art after getting a Notice of Allowance or a Final Office Action, send a supplemental IDS and pay the fee. If more than three months have passed since you received these notices, file an RCE and a supplemental IDS.

  • Can You File an IDS After Paying the Patent Issue Fee?

Yes, you should complete a QPIDS online. This electronic petition withdraws the patent form issue and files an RCE. If there is no need to reopen prosecution, you'll receive a refund for the RCE fee.

  • Does a Supplemental IDS Affect the Patent Term?

Filing a supplemental IDS more than 30 days after discovery may reduce the patent term adjustment. You may need to include an additional explanation to prevent any term adjustment.

  • How Much Does It Cost to File an IDS?

There is no fee to file an IDS within three months of the original filing date, before the first Office Action, or if you discover the prior art in a foreign search report. In other cases, the fee may be up to $180.

  • Can You Streamline the IDS Filing Process?

If you file a group of patent applications that include related materials, it may be in your best interest to file consolidated IDS forms at periodic intervals. Doing this allows you to cross-cite all information without spending more than necessary to file IDS forms.

Steps to File an Information Disclosure Statement

  • Complete the IDS header. Include your original application number and filing date. List the first named inventor, the art unit location, and the attorney docket number. Include the patent examiner name if known.
  • Fill in relevant USPTO patent references. List the patent number you're citing, along with the kind code from the World Intellectual Property Organization (WIPO) standard code list. Include the issue date, name of patentee, and relevant page numbers from the cited patent.
  • Fill in relevant USPTO patent application publication references. List the publication number and the kind code from the publication cited. Include the publication date, name of patentee, and relevant pages.
  • Fill in relevant foreign patent references. List the foreign document number you're citing, along with WIPO country and kind codes. Include the publication date, name of patentee, and relevant pages. Check the "T" box if you've included a translation.
  • Fill in relevant, non-patent literature documents. List the name of the author, article title, publication title, and publisher information. Check the "T" box if you've included a translation.
  • Complete the certification statement. Certify that the information was cited in a foreign publication less than three months ago or that you weren't aware of the information cited more than three months prior.
  • Submit the IDS. After signing and printing your name, date the IDS and send the form.

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609.04(a) Content Requirements for an Information Disclosure Statement [R-07.2015]

An information disclosure statement (IDS) must comply with the provisions of 37 CFR 1.98 as to content for the information listed in the IDS to be considered by the Office. Each information disclosure statement must comply with the applicable provisions of subsection I., II., and III. below.

I.LIST OF ALL PATENTS, PUBLICATIONS, U.S. APPLICATIONS, OR OTHER INFORMATION

Each information disclosure statement must include a list of all patents, publications, U.S. applications, or other information submitted for consideration by the Office.

37 CFR 1.98(a)(1) requires the following format for an IDS listing: (A) a specified format/identification for each page of an IDS, and that U.S. patents and U.S. patent application publications be listed in a section separately from citations of other documents; (B) a column that provides a space next to each document listed to permit the examiner’s initials; and (C) a heading that identifies the list as an IDS.

37 CFR 1.98(a)(1) specifically requires that U.S. patents and U.S. patent application publications be listed separately from the citations of other documents. The separation of citations will permit the Office to obtain the U.S. patent numbers and the U.S. patent application publication numbers by optical character recognition (OCR) from the scanned documents such that the documents can be made available electronically to the examiner to facilitate searching and retrieval of the cited U.S. patents and U.S. patent application publications from the Office’s search databases. Applicants will comply with this requirement if they use forms PTO/SB/08A and 08B, which provide a separate section for listing U.S. patents and U.S. patent application publications. Applicants who do not use these forms for submitting an IDS must make sure that the U.S. patents and U.S. patent application publications are listed in a separate section from citations of other documents.

37 CFR 1.98(a)(1) also requires that each page of the list must clearly identify the application number of the application in which the IDS is being submitted, if known. In the past, the Office has experienced problems associated with lists that do not properly identify the application in which the IDS is being submitted (e.g., when applicants submit a list that includes copies of PTO/SB/08 or PTO-892 forms from other applications). Even though the IDS transmittal letter had the proper application number, each page of the list did not include the proper application number, but instead had the application numbers of the other applications. If the pages of the list became separated, the Office could not associate the pages with the proper application.

In addition, 37 CFR 1.98(a)(1) requires that the list must include a column that provides a space next to each document listed in order to permit the examiner to enter his or her initials next to the citations of the documents that have been considered by the examiner. This provides a notification to the applicant and a clear record in the application to indicate which documents have been considered by the examiner in the application. Applicants are strongly discouraged from submitting a list that includes copies of PTO/SB/08 or PTO-892 forms from other applications. A completed PTO/SB/08 form from another application may already have initials of an examiner and the application number of another application. This information will likely confuse the record. Furthermore, when the spaces provided on the form have initials of an examiner, there are no spaces available next to the documents listed for the examiner of the subsequent application to provide his or her initials, and the previously relevant initials may be erroneously construed as being applied for the current application.

37 CFR 1.98(a)(1) also requires that each page of the list include a heading that clearly indicates that the list is an IDS. Since the Office treats an IDS submitted by the applicant differently than information submitted by a third-party (e.g., the Office may discard any non-compliant third-party submission under 37 CFR 1.99), a heading on each page of the list to indicate that the list is an IDS would promote proper treatment of the IDS submitted by the applicant and reduce handling errors.

37 CFR 1.98(b) requires that each item of information in an IDS be identified properly. U.S. patents must be identified by the inventor, patent number, and issue date. U.S. patent application publications must be identified by the applicant, patent application publication number, and publication date. U.S. applications must be identified by the inventor, the eight digit application number (the two digit series code and the six digit serial number), and the filing date. If a U.S. application being listed in an IDS has been issued as a patent or has been published, the applicant should list the patent or application publication in the IDS instead of the application. Each foreign patent or published foreign patent application must be identified by the country or patent office which issued the patent or published the application, an appropriate document number, and the publication date indicated on the patent or published application. Each publication must be identified by publisher, author (if any), title, relevant pages of the publication, and date and place of publication. The date of publication supplied must include at least the month and year of publication, except that the year of publication (without the month) will be accepted if the applicant points out in the information disclosure statement that the year of publication is sufficiently earlier than the effective U.S. filing date and any foreign priority date so that the particular month of publication is not in issue. The place of publication refers to the name of the journal, magazine, or other publication in which the information being submitted was published. See MPEP § 707.05(e), for more information on data that should be used when citing publications and electronic documents. Pending U.S. applications that are being cited can be listed under the non-patent literature section or in a new section appropriately labeled.

The list of information complying with the format requirements of 37 CFR 1.98(a)(1) and the identification requirements of 37 CFR 1.98(b) may not be incorporated into the specification of the application in which it is being supplied, but must be submitted in a separate paper. A separate list is required so that it is easy to confirm that applicant intends to submit an information disclosure statement and because it provides a readily available checklist for the examiner to indicate which identified documents have been considered. A separate list will also provide a simple means of communication to applicant to indicate the listed documents that have been considered and those listed documents that have not been considered. Use of form PTO/SB/08A and 08B, Information Disclosure Statement, to list the documents is encouraged.

II.LEGIBLE COPIES

In addition to the list of information, each information disclosure statement must also include a legible copy of:

  • (A) Each foreign patent ;
  • (B) Each publication or that portion which caused it to be listed , other than U.S. patents and U.S. patent application publications unless required by the Office;
  • (C) For each cited pending unpublished U.S. application, the application specification including the claims, and any drawings of the application, or that portion of the application which caused it to be listed including any claims directed to that portion, unless the cited pending U.S. application is stored in the Image File Wrapper (IFW) system. The requirement in 37 CFR 1.98(a)(2)(iii) for a legible copy of the specification, including the claims, and drawings of each cited pending U.S. patent application (or portion of the application which caused it to be listed) is sua sponte waived where the cited pending application is stored in the USPTO’s IFW system. See Waiver of the Copy Requirement in 37 CFR 1.98 for Cited Pending U.S. Patent Applications, 1287 OG 163 (October 19, 2004); and
  • (D) All other information or that portion which caused it to be listed.

The requirement for a copy of each U.S. patent or U.S. patent application publication listed in an IDS, has been eliminated, unless required by the Office. 37 CFR 1.98(a)(2).

37 CFR 1.98(a)(2)(iii) requires a copy of a pending U.S. application that is being cited in an IDS if (A) the cited information is not part of the specification, including the claims, and the drawings (e.g., an Office Action, remarks in an amendment paper, etc.), or (B) the cited application is not stored in the USPTO’s IFW system. The requirement in 37 CFR 1.98(a)(2)(iii) for a legible copy of the specification, including the claims, and drawings of each cited pending U.S. patent application (or portion of the application which caused it to be listed) is sua sponte waived where the cited pending application is stored in the USPTO’s IFW system. This waiver is limited to the specification, including the claims, and drawings in the U.S. application (or portion of the application). If material other than the specification, including the claims, and drawings in the file of a U.S. patent application is being cited in an IDS, the IDS must contain a legible copy of such material.

A pending U.S. application only identified in the specification’s background information rather than being cited separately on an IDS listing is not part of an IDS submission. Therefore, the requirements of 37 CFR 1.98(a)(2)(iii) of supplying a copy of the pending application is not applicable. Pursuant to 37 CFR 1.98(a)(2)(iii), applicant may choose to cite only a portion of a pending application including any claims directed to that portion rather than the entire application. There are exceptions to this requirement that a copy of the information must be provided. First, 37 CFR 1.98(d) states that a copy of any patent, publication, pending U.S. application, or other information listed in an information disclosure statement is not required to be provided if: (A) the information was previously cited by or submitted to, the Office in a prior application, provided that the prior application is properly identified in the IDS and is relied on for an earlier filing date under 35 U.S.C. 120; and (B) the IDS submitted in the earlier application complies with 37 CFR 1.98(a)-(c). If both of these conditions are met, the examiner will consider the information previously cited or submitted to the Office and considered by the Office in a prior application relied on under 35 U.S.C. 120. This exception to the requirement for copies of information does not apply to information which was cited in an international application under the Patent Cooperation Treaty. If the information cited or submitted in the prior application was not in English, a concise explanation of the relevance of the information to the new application is not required unless the relevance of the information differs from its relevance as explained in the prior application. See subsection III. below.

Second, 37 CFR 1.98(c) states that when the disclosures of two or more patents or publications listed in an information disclosure statement are substantively cumulative, a copy of one of the patents or publications may be submitted without copies of the other patents or publications provided that a statement is made that these other patents or publications are cumulative. The examiner will then consider only the patent or publication of which a copy is submitted and will so indicate on the list, form PTO/SB/08A and 08B, submitted, e.g., by crossing out the listing of the cumulative information. But see Semiconductor Energy Laboratory Co. v. Samsung Electronics Co., 204 F.3d 1368, 1374, 54 USPQ2d 1001, 1005 (Fed. Cir. 2000) (Reference was not cumulative since it contained a more complete combination of the claimed elements than any other reference before the examiner. “A withheld reference may be highly material when it discloses a more complete combination of relevant features, even if those features are before the patent examiner in other references.” (citations omitted).).

37 CFR 1.98(a)(3)(ii) states that if a written English language translation of a non-English language document, or portion thereof, is within the possession, custody or control of, or is readily available to any individual designated in 37 CFR 1.56(c), a copy of the translation shall accompany the statement. Translations are not required to be filed unless they have been reduced to writing and are actually translations of what is contained in the non-English language information. If no translation is submitted, the examiner will consider the information in view of the concise explanation and insofar as it is understood on its face, e.g., drawings, chemical formulas, English language abstracts, in the same manner that non-English language information in Office search files is considered by examiners in conducting searches.

Electronic means or medium for filing IDSs are not permitted except for: (A) citations to U.S. patents, U.S. patent application publications, foreign patent documents, and non-patent literature (NPLs) in an IDS filed via the Office’s Electronic Filing System (EFS) (see MPEP § 609.07); or (B) a compact disc (CD) that has tables, sequence listings, or program listings included in a paper IDS in compliance with 37 CFR 1.52(e). A CD cannot be used to submit an IDS listing or copies of the documents cited in the IDS.

III.CONCISE EXPLANATION OF RELEVANCE FOR NON-ENGLISH LANGUAGE INFORMATION

Each information disclosure statement must further include a concise explanation of the relevance, as it is presently understood by the individual designated in 37 CFR 1.56(c) most knowledgeable about the content of the information listed that is not in the English language. The concise explanation may be either separate from the specification or part of the specification. If the concise explanation is part of the specification, the IDS listing should include the page(s) or line(s) numbers where the concise explanation is located in the specification.

The requirement for a concise explanation of relevance is limited to information that is not in the English language. The explanation required is limited to the relevance as understood by the individual designated in 37 CFR 1.56(c)

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