Information disclosure statement (IDS)

Each individual associated with the filing and prosecution of a patent application has a duty of candor and good faith in dealing with the Office, which includes a duty to disclose all information known to that individual to be material to patentability (37 CFR 1.56(a))¹. The duty exists for each pending claim until the claim is cancelled or withdrawn from consideration or the application is abandoned. Information material only to a cancelled or withdrawn claim need not be submitted, and there is no duty to submit information that is not material to the patentability of any existing claim¹.

Information is material when it is not cumulative to information already of record and either establishes, by itself or in combination with other information, a prima facie case of unpatentability of a claim, or refutes or is inconsistent with a position the applicant takes in opposing an argument of unpatentability relied on by the Office or in asserting an argument of patentability (37 CFR 1.56(b))¹. The individuals covered are each named inventor, each attorney or agent who prepares or prosecutes the application, and every other person who is substantively involved in its preparation or prosecution and is associated with the inventor, the applicant, an assignee, or anyone to whom there is an obligation to assign (37 CFR 1.56(c))¹.

The Office encourages applicants to examine prior art cited in search reports of a foreign patent office in a counterpart application, and the closest information over which any pending claim is believed to patentably define¹. The MPEP adds that the duty covers material information whatever its source, and that material prior art or other information cited in a related foreign application must be brought to the Office's attention². No patent will be granted on an application in connection with which fraud on the Office was practiced or attempted or the duty of disclosure was violated through bad faith or intentional misconduct (37 CFR 1.56(a))¹.

The 1.97(e) statement must say either that each item was first cited in a communication from a foreign patent office in a counterpart foreign application not more than three months before the IDS was filed, or that no item was so cited and, to the knowledge of the person signing after reasonable inquiry, no item was known to any individual designated in 37 CFR 1.56(c) more than three months before the IDS was filed (37 CFR 1.97(e))³. No extensions of time under 37 CFR 1.136 are permitted, though if a bona fide attempt is made to comply with 1.98 and part of the required content is inadvertently omitted, additional time may be given (37 CFR 1.97(f))³. An IDS that does not comply with 1.97 or 1.98 is placed in the file but is not considered (37 CFR 1.97(i))³.

An IDS must also be accompanied by any applicable IDS size fee under 37 CFR 1.17(v) (37 CFR 1.97(a))³. That fee depends on the cumulative number of applicant-provided items listed during pendency, with steps once the number exceeds 50, 100 and 200⁵. Check the current USPTO fee schedule for amounts.

• A list (1.98(a)(1)). A list of all patents, publications, applications or other information submitted for consideration, with US patents and US patent application publications in a separate section. Each page carries the application number, a column for the examiner's initials, and a heading that clearly indicates it is an information disclosure statement⁴.
• Copies (1.98(a)(2)). A legible copy of each foreign patent, of each publication or the portion that caused it to be listed (other than US patents and US patent application publications unless required by the Office), of each cited pending unpublished US application, and of all other information or the portion that caused it to be listed⁴.
• Non-English items (1.98(a)(3)). A concise explanation of the relevance, as presently understood by the individual most knowledgeable about the content, of each item not in English, and a copy of any written English translation within the possession, custody or control of, or readily available to, an individual designated in 37 CFR 1.56(c)⁴.
• Size fee assertion (1.98(a)(4)). A clear written assertion that the IDS is accompanied by the applicable size fee under 37 CFR 1.17(v), or that no such fee is required⁴.
• Identification and cumulative items (1.98(b) and (c)). Each item must be identified as the rule specifies, for example US patents by inventor, number and issue date. Where several items are substantively cumulative, a copy of one may be submitted if the IDS states that the others are cumulative⁴.

A copy of an item must be provided even if it was submitted to or cited by the Office in an earlier application, unless the earlier application is identified in the IDS and relied on for an earlier effective filing date under 35 U.S.C. 120, and the IDS in the earlier application complies with 1.98(a) to (c) (37 CFR 1.98(d))⁴. The MPEP says the examiner of a continuation, divisional or continuation-in-part application filed under 37 CFR 1.53(b) will consider information considered in the parent (other than an international application), and that a listing need not be resubmitted unless the applicant wants the information printed on the patent⁶. See Continuation application.

Information in an IDS that complies with 1.97 and 1.98 is considered by the examiner. The MPEP says that means the examiner will consider the documents in the same manner as other documents in the Office's search files, and that the examiner's initials next to a citation mean the information has been considered to that extent⁶. Filing an IDS is not an admission that the information is material to patentability under 37 CFR 1.56(b) (37 CFR 1.97(h))³.

An IDS can also be filed as the submission for a request for continued examination. The MPEP says an applicant may file a submission under 37 CFR 1.114 containing only an IDS in an application subject to a notice of allowance, but not where the last Office action is a final rejection or an Ex parte Quayle action, or the application is under appeal⁷. If an applicant cannot meet 1.97(d), the MPEP notes that a request for continued examination or a continuing application can be used to have the information considered⁶. See Request for continued examination.