Information Disclosure Statement

Introduction

An Information Disclosure Statement (IDS) is an important part of U.S. patent prosecution. An IDS allows an applicant to bring patents, patent publications, applications, and other information to the attention of the U.S. Patent and Trademark Office (USPTO) for consideration during examination.

The IDS process is governed primarily by 37 C.F.R. §§ 1.97 and 1.98 and MPEP § 609. The USPTO provides an IDS form, PTO/SB/08, for submitting the information. The USPTO’s current Patent Center version of the form is the recommended version.

What Is an Information Disclosure Statement?

An Information Disclosure Statement is a submission identifying information that the applicant wants the USPTO to consider during examination.

The information may include:

U.S. patents;
U.S. patent application publications;
foreign patents;
foreign patent application publications;
non-patent literature;
U.S. patent applications; and
other information that may be relevant to patentability.

The purpose of an IDS is to provide the examiner with information that may be relevant to determining whether the claimed invention satisfies the requirements for patentability.

An IDS is not itself an argument that the cited reference anticipates or renders the claims obvious. It is primarily a mechanism for submitting information for the examiner’s consideration.

Duty of Disclosure and the IDS

Individuals associated with the preparation or prosecution of a patent application may have a duty to disclose information that is material to patentability under 37 C.F.R. § 1.56.

The USPTO explains that §§ 1.97 and 1.98 provide a mechanism for submitting information to the Office in connection with this duty.

The IDS procedure can therefore be important when an applicant, inventor, or practitioner becomes aware of potentially relevant information during prosecution.

However, submitting an IDS does not mean that the applicant admits that every cited document is material to patentability.

Under 37 C.F.R. § 1.97(h), filing an IDS is not construed as an admission that the information cited is material to patentability.

What Information Can Be Submitted?

An IDS can contain many different types of information.

For example, an applicant may submit:

Patent documents

A U.S. patent or published U.S. patent application may be relevant because it describes technology similar to the claimed invention.

Foreign patent documents

A foreign patent office may have identified references during examination of a corresponding foreign application.

Non-patent literature

Scientific articles, technical publications, books, conference papers, and other technical documents may be relevant.

Related application information

Information from a related U.S. or foreign application may also be submitted when appropriate.

The applicant should identify the information sufficiently for the USPTO to locate and evaluate it.

Timing of an IDS

Timing is one of the most important issues in IDS practice.

Under 37 C.F.R. § 1.97(b), an IDS is generally considered without the additional fee or statement required for later submissions if it is filed within certain specified periods, including:

within three months of filing a national application, or
before the mailing of a first Office action on the merits.

There are corresponding rules for national-stage applications and for certain applications following an RCE.

Therefore, an applicant should generally submit relevant information as soon as reasonably appropriate rather than waiting until late in prosecution.

IDS Filed After the Initial Period

An IDS can also be submitted after the initial period.

However, additional requirements may apply.

Under 37 C.F.R. § 1.97(c), an IDS filed after the period specified in § 1.97(b), but before certain later prosecution events, generally requires either:

the statement specified in 37 C.F.R. § 1.97(e); or
payment of the fee specified in 37 C.F.R. § 1.17(p).

The exact requirements depend on when the IDS is filed. MPEP § 609.04 provides detailed guidance on these timing requirements.

IDS Filed After Final Action or Notice of Allowance

Special rules apply when an IDS is filed after a final action, Notice of Allowance, or other action closing prosecution.

Under 37 C.F.R. § 1.97(d), an IDS filed after such an event but before or at the time of payment of the issue fee can be considered if the applicable requirements are satisfied, including the required statement and fee.

An applicant should therefore pay particular attention to the timing of an IDS near the end of prosecution.

IDS Filed After Payment of the Issue Fee

An IDS filed after payment of the issue fee is subject to different procedures.

The ordinary IDS procedure under §§ 1.97 and 1.98 does not simply continue indefinitely after payment of the issue fee.

The USPTO explains that an IDS filed after payment of the issue fee will not be considered under the ordinary procedure of § 1.97.

Special procedures, including the Quick Path Information Disclosure Statement (QPIDS) process when applicable, may be available in certain circumstances.

Applicants should consult the current USPTO rules and guidance before attempting to submit information after payment of the issue fee.

Contents of an IDS

Under 37 C.F.R. § 1.98, an IDS must satisfy specific content requirements.

The IDS must include a list of the information submitted for consideration.

U.S. patents and U.S. patent application publications are listed separately from other documents.

The IDS listing must also contain identifying information for the cited documents and provide space for the examiner to indicate consideration.

The USPTO encourages use of PTO/SB/08 for submitting an IDS.

Copies of References

An IDS may also require copies of certain cited documents.

Under 37 C.F.R. § 1.98, a legible copy of each foreign patent and certain publications must be provided, subject to the rule’s specific exceptions.

For example, U.S. patents and U.S. patent application publications generally do not need to be supplied in the same manner because they are available to the USPTO.

An applicant should carefully check the current requirements before submitting a large IDS.

Foreign-Language Documents

If a cited document is in a foreign language, additional requirements may apply.

MPEP § 609 discusses submission of foreign-language information and the circumstances in which a translation or concise explanation of relevance may be required.

The applicant should identify the relevant portion of a foreign-language document and provide the information required by the applicable rules.

Concise Explanation of Relevance

In certain circumstances, 37 C.F.R. § 1.98 requires a concise explanation of the relevance of the information.

The explanation should help the examiner understand why the cited material is being submitted.

For example, an applicant might identify a particular reference as disclosing:

a claimed structural element;
a particular control technique;
a material composition;
a manufacturing step; or
a particular technical relationship between components.

A concise explanation can be especially useful when the cited document is not in English.

IDS Does Not Require a Patentability Admission

One important point is that an IDS does not automatically constitute an admission that the cited reference is prior art against the claims.

Under 37 C.F.R. § 1.97(h), submission of an IDS is not construed as an admission that the cited information is material to patentability.

Likewise, 37 C.F.R. § 1.97(g) provides that filing an IDS is not a representation that the applicant has conducted a patentability search.

These provisions are important because an applicant may submit information for the examiner’s consideration without necessarily agreeing with the examiner about the ultimate significance of that information.

IDS and the Examiner’s Consideration

When an IDS complies with the applicable requirements of 37 C.F.R. §§ 1.97 and 1.98, the examiner considers the submitted information.

The USPTO explains that consideration means that the examiner considers the information in substantially the same manner as other documents in the Office’s search files when conducting a search of the appropriate field of prior art.

An examiner’s indication that a reference has been considered does not necessarily mean that the examiner agrees with the applicant about the relevance or patentability effect of the reference.

It indicates that the information has been considered during examination.

What Happens When an IDS Does Not Comply?

If an IDS does not comply with the requirements of §§ 1.97 and 1.98, the information may be placed in the application file without being considered by the examiner.

For example, an IDS may have a problem involving:

timing;
a required fee;
the required statement;
identification of a reference;
required copies; or
other content requirements.

MPEP § 609.05 explains the USPTO’s handling of noncomplying IDS submissions.

Importantly, if one citation does not comply, other citations that independently satisfy the requirements may still be considered.

IDS During an RCE

An IDS may also be filed during continued prosecution after an RCE.

The timing requirements are important because 37 C.F.R. § 1.97(b) specifically addresses an IDS filed before the first Office action on the merits following an RCE.

Therefore, when preparing an RCE filing, a practitioner should consider whether newly discovered information should be submitted at the same time.

IDS in a Continuing Application

Continuing applications can create special IDS issues.

For example, information considered in a parent application may be relevant to a continuation, but the specific requirements for submitting information in the continuation depend on the circumstances.

MPEP § 609.02 addresses IDS practice in continuing applications and discusses special considerations involving prior art cited in parent applications and international applications.

A practitioner should not assume that every reference from a parent or related application automatically requires identical treatment in every continuing application.

IDS and Third Parties

An IDS under §§ 1.97 and 1.98 is generally submitted by the applicant or individuals associated with the application as specified by the rules.

A third party cannot simply submit an IDS under §§ 1.97 and 1.98.

The USPTO explains that third parties have separate mechanisms, including 37 C.F.R. § 1.290 for certain preissuance submissions and 37 C.F.R. § 1.291 for protests.

This distinction is important when determining the appropriate mechanism for submitting information to the USPTO.

Example of an IDS

Assume an applicant has filed a nonprovisional patent application.

After filing, the applicant learns of a U.S. patent that discusses technology similar to the claimed invention.

The applicant may submit an IDS identifying the U.S. patent.

If the IDS satisfies the applicable requirements and is timely filed, the examiner can consider the reference during examination.

The examiner may then:

determine that the reference is not relevant;
use the reference in a rejection;
use the reference in combination with another reference; or
consider the reference but determine that the claims remain patentable.

The filing of the IDS does not predetermine the examiner’s conclusion.

Example of a Late IDS

Suppose an applicant receives a Notice of Allowance and then discovers a potentially relevant patent publication.

The applicant wants the USPTO to consider the publication before the patent issues.

Because prosecution is at a late stage, the applicant must examine the requirements of 37 C.F.R. § 1.97(d) and determine whether the required statement and fee apply.

The timing of the submission is therefore critical.

IDS and the Duty of Candor

IDS practice should also be understood together with the duty of candor and disclosure under 37 C.F.R. § 1.56.

The purpose of submitting information is not simply to create a large list of references.

The applicant and those subject to § 1.56 should evaluate information appropriately and comply with the applicable disclosure obligations.

Submitting every document without consideration of its relevance is not a substitute for understanding the duty imposed by the patent rules.

Practical IDS Checklist

Before filing an IDS, a practitioner should consider the following:

Is the cited information potentially relevant to patentability?
What type of document is being submitted?
Is the document properly identified?
Is the IDS being filed within the applicable time period?
Is a fee required?
Is a statement under 37 C.F.R. § 1.97(e) required?
Are copies of foreign patents or publications required?
Is a translation or concise explanation required?
Does the IDS satisfy 37 C.F.R. § 1.98?
Is the IDS properly signed or submitted through an appropriate electronic process?
Has the applicant considered whether additional disclosure obligations apply?

Patent Bar Examination Tips

For Patent Bar preparation, several IDS rules are particularly important.

Tip 1: Remember the Two Main Rules

Think:

37 C.F.R. § 1.97 = timing and filing requirements

37 C.F.R. § 1.98 = content requirements

MPEP § 609 provides detailed guidance on both.

Tip 2: Early Filing Is Important

An IDS filed within the applicable period under § 1.97(b) generally avoids the later-stage fee or statement requirements.

Tip 3: Late Filing May Require Additional Requirements

After the initial period, determine whether the required statement, fee, or both apply.

Tip 4: IDS Is Not an Admission

Submitting an IDS does not by itself constitute an admission that the cited information is material to patentability.

Tip 5: IDS Is Not a Patentability Search

Filing an IDS does not represent that the applicant conducted a patentability search.

Conclusion

An Information Disclosure Statement is an important tool in U.S. patent prosecution. It provides a mechanism for bringing potentially relevant patents, publications, applications, and other information to the USPTO’s attention.

The two most important rules to remember are 37 C.F.R. § 1.97, which primarily addresses the timing and procedural requirements, and 37 C.F.R. § 1.98, which addresses the content of the IDS.

Proper IDS practice requires attention to timing, document identification, required copies, statements, fees, and other procedural requirements. Filing relevant information promptly and correctly can help ensure that the examiner has an opportunity to consider the information during prosecution.

References

35 U.S.C. § 102 — Conditions for patentability; novelty.
35 U.S.C. § 103 — Conditions for patentability; non-obvious subject matter.
37 C.F.R. § 1.56 — Duty to disclose information material to patentability.
37 C.F.R. § 1.97 — Filing of information disclosure statement.
37 C.F.R. § 1.98 — Content of information disclosure statement.
37 C.F.R. § 1.290 — Third-party preissuance submissions.
MPEP § 609 — Information Disclosure Statement.
MPEP § 609.02 — Information Disclosure Statements in Continued Examinations or Continuing Applications.
MPEP § 609.04 — Content and Timing Requirements for an Information Disclosure Statement.
MPEP § 609.05 — Examiner Handling of Information Disclosure Statements.
USPTO Form PTO/SB/08 — Information Disclosure Statement by Applicant.

Educational disclaimer: This article provides general educational information about U.S. patent prosecution. It is not legal advice and does not create an attorney-client relationship.