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.
USPTO has specified the formats for filing the IDS, which include two parts i.e.
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 procedures and requirements under 37 CFR 1.97 for submitting an information disclosure statement are linked to four stages in the processing of a patent application:
(1) (a) for national applications (not including CPAs), within three months of filing, or before the mailing of a first Office action on the merits, whichever is later;
(b) for international applications, within three months of the date of entry of the national stage as set forth in 37 CFR 1.491 or before the mailing of a first Office action on the merits in the national stage application, whichever is later;
(d) for international design applications, within three months of the date of publication of the international registration under Hague Agreement Article 10(3) or before first Office action on the merits, whichever is later;
(2) after the period in (1), but prior to the prosecution of the application closes, i.e., before the mailing of a final Office action, a Notice of Allowance, or an Ex parte Quayle action, whichever is earlier;
(3) after the period in (2) but on or before the date the issue fee is paid; and
(4) after the period in (3) and up to the time the patent application can be effectively withdrawn from issue under 37 CFR 1.313(c).
The requirements based on the time when the information disclosure statement is filed are summarized in MPEP § 609.01.
No extensions of time for filing an information disclosure statement are permitted under 37 CFR 1.136(a) or (b). If a bona fide attempt is made to comply with the content requirements of 37 CFR 1.98, but part of the required content is inadvertently omitted, additional time may be given to enable full compliance.
Sometimes, an applicant may find out about new prior art after receiving a Notice of Allowance (e.g., new prior art cited in related PCT application or foreign application). If the prior art references were first discovered less than 3 months ago, the applicant may file the IDS and pay a USPTO IDS fee. If more than three months have passed since the new prior art references were first uncovered, the applicant must file a Request for Continued Examination (RCE) and pay the USPTO fees for an RCE in order to file a supplemental IDS.
The USPTO has initiated a streamlined process to request consideration of an IDS after payment of the issue fee. The program is called Quick Path Information Disclosure Statement or QPIDS. The QPIDS form provided by the USPTO includes the requisite certification, a petition to withdraw from issue after payment of the issue fee and the Request for Continued Examination which is treated as a conditional RCE, meaning that the RCE fee will be refunded if no item of information in the IDS necessitates reopening prosecution. The QPIDS certification and request is filed as a Web-based ePetition.
Third parties (individuals not covered by 37 CFR 1.56(c)) cannot file information disclosure statements under 37 CFR 1.97 and 37 CFR 1.98. Third parties may only submit patents and publications in compliance with 37 CFR 1.290 in applications published under 35 U.S.C. 122(b). See MPEP § 1134.01. For unpublished, pending applications, any member of the public, including private persons, corporate entities, and government agencies, may file a protest under 37 CFR 1.291 prior to the mailing of a notice of allowance under 37 CFR 1.311. See MPEP Chapter 1900. Alternatively, third parties may provide information to the applicant who may submit the information to the Office in an IDS. See 37 CFR 1.56(d). The Office will review any submission in an application filed by a third party to determine whether the submission is in compliance with 37 CFR 1.290 or 1.291. Any third-party submission that does not comply with the requirements of 37 CFR 1.290 or 37 CFR 1.291 will not be entered into the application file and will be discarded. Office personnel (including the Patent Examining Corps) are instructed to: (1) not reply to or act upon any third-party inquiry or other submission in an application, except those in compliance with 37 CFR 1.290 or 37 CFR 1.291; and (2) decline to accept oral or telephone comments or submissions about applications from third parties. See MPEP § 1134.01.
The duty to disclose the relevant prior art is applicable to every person who goes for preparation of a substantive patent application. And duty is broad to file the statement with respect to any material information that connotes to the novelty of the invention. 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:
At IIPRD, IDS Management is done by providing complete support in advising, preparing, and/or managing the Information Disclosure Statement (IDS). All the deadlines as fixed by the USPTO will be met well in advance before they hit. We assist in early filing of the IDS statements along with the filing of applications and follows the best practices for IDS filings. Our diligent team of professionals are well informed with the rules and procedures of USPTO and can assist our clients in the best manner. We are equipped with strong communication channels that facilitate exchange of information with the foreign counsels, foreign offices, PTO and pave way for seamless transactions.