Patent Information Disclosure Statement (IDS)

Introduction

While prosecuting patent applications in the US under the US Patent law, it is the duty of the inventor(s), applicant(s), or attorney(s)/agent(s) representing the applicant to divulge, in good faith, all the known prior art references that are known or discovered during the course of prosecution up to the date of patent issuance (37 C.F.R §1.97), before the United States Patent and Trademark Office (USPTO) in a specified format, known as the Information Disclosure Statement (IDS). The said prior-art references include patent (published applications, issued patents, etc.) and/or non-patent references (all the scientific articles that have appeared in journals, presentations, paper submissions, poster presentations, advertisements, product brochures, doctoral thesis, standards as prescribed, publications, magazines, books, or any other information that there might be) that are material to patentability of the invention (37 C.F.R. §1.56) claimed through the respective application.

Documents to be Submitted:

  • Usually, the documents that come to the knowledge of the inventor/applicant, or attorney/agent representing the applicant, e.g. published applications or issued patents that are identified after filing the application.
  • The references cited by the examiner/controller during office actions of PCT or foreign prosecution of the same (or closely related) application.
  • The references identified during the International Search Report (ISR) are valid references for IDS submission.
  • The references from a related PCT application or a foreign patent office examining a foreign counterpart application at later dates can also be filed as supplemental IDS submissions.
  • Regarding the submission of NPL documents, full-text of the NPL reference based on availability or the level of information publicly available needs to be submitted.

Document Formats:

USPTO has specified the formats for filing the IDS, which include two parts i.e.

  • IDS form comprising the required bibliographical information cited in a specific manner of all the references that are to be submitted; and
  • PDF copies of the references that are listed in the IDS form.

The PDF copies submitted should meet the criteria such as specific size and clarity for uploading the same on the USPTO website. If the list includes the non-Latin patent reference, then a translation of the same without deviating from the original meaning of the original reference (to the best of the knowledge), needs to be submitted. In this case, the original document and the translated version should be combined and submitted as a single reference.

The Disadvantage of not Filing IDS:

The US Patent law necessitates the disclosure of the material prior-art references, failure of which can result in the unenforceability of the patent for “inequitable conduct” i.e. deliberate withholding or concealing of the known information, rendering the entire patent useless.

Best Practices Related to IDS Filings:

  • It is always advisable to file IDS at the time of filing the application itself, followed by subsequent IDS filings.
  • Costs associated with IDS filings can be avoided if the same is filed before the issuance of first office action, else stipulated charges are levied for each of the IDS filed.
  • When the application concerns multiple counterpart foreign applications and/or related applications, it is advisable to provide all the references cited from a foreign patent office(s).

Our Approach

In IIPRD, IDS Management is done by providing complete support in advising, preparing, and/or managing the Information Disclosure Statement (IDS) by meeting the latest guidelines and deadlines as established by the USPTO.