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
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).
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.
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.