What is an Information Disclosure Statement (IDS)?
An information disclosure statement (IDS) refers to submission of relevant background art or information to the United States Patent and Trademark Office (USPTO) by an applicant for a patent application during the patent prosecution process.
Who Has Duty to Disclose?
The duty to disclose known and relevant prior art applies to all persons involved in the substantive preparation of the patent application. That means not only the applicant/client, but the patent attorneys and patent agents who are handling the patent application. The duty also applies to each inventor named in the patent application.
When to File an IDS?
To be officially considered during the pendency of an application, the information in an IDS must be filed on time. While an IDS can be submitted at different stages of prosecution, 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 (RCE) for the sole purpose of filing an IDS.
Depending on the stage of prosecution, there may be additional requirements in filing the IDS, as explained below:
- An applicant may file an IDS within 3 months of the U.S. patent 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.
- If the First Stage has expired, an applicant may file an IDS before mailing 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 or the government fee set forth in 37 C.F.R. § 1.17(p).
- 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.
What to do if new prior art is discovered after a Final Office Action or Notice of Allowance?
Sometimes, an applicant may find out about new prior art after receiving a Notice of Allowance (e.g., new prior art cited in a closely 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
What happens if new prior art is discovered after issue fee payment?
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.
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
The Disadvantage of not Filing IDS:
The duty to submit such relevant information to the USPTO lies not only on the applicant or inventor, but also on any patent attorney or other legal staff employed by the applicant. If a patent applicant, with deceptive intent for art known to the applicant, fails to submit the prior art to the USPTO, then any patent that later issues from the patent application may be declared unenforceable because of “inequitable conduct”.
MCRPL IDS Management:
At MCRPL, we prepare accurate and easy to follow citation matrix allowing easy tracking of all family members and references cited across all the family members from all possible sources. We also prepare ready to file IDS which complies with the format prescribed by the USPTO, saving your precious time.
