When & How to File IDS?

At every stage of patent prosecution, the applicant needs to disclose the relevant information found in the patent application/invention. Here comes the need to understand and learn about the time periods and procedure to file IDS. According to the U.S. patent law, 37 C.F.R. 1.56, it is not a compulsion to perform a search of relevant art, inventors and prosecuting patent applications associated with it. While at the same time, 37 C.F.R. 1.56 USPTO (Duty to disclose information material to patentability) states that all known prior art or ‘material information’ must be to the USPTO in the form of an Information Disclosure Statement (IDS).  A citizen (patent aspirant/ patent applicant) is bound to pay respect to this duty until a patent has issued to earn full respect for his/her patent. If not, the resulting patent may be considered impossible to be enforced.

Under USPTO 37 C.F.R. 1.56(c), the people responsible to pay this and understand the critical aspects of an IDS by  submitting all material information to USPTO, includes inventors, employee of the assignee, U.S./foreign patent attorneys and assignees. By material the USPTO clearly states, all that information which is found and considered relevant to the claimed subject matter. Material information includes related and valid U.S. patent applications or patent references cited in a PCT or foreign equivalent applications. In case,

  • If the information is found to contradict or is inconsistent with applicant’s position, or
  • If it contributes towards non-patentability in together or alone in all information

then, the information will be considered strictly as ‘material’.

When to File IDS

For an IDS to be considered officially by the examiner, it must be filed on time. An IDS can be submitted at different prosecution stages of any patent application, for which the applicant may require to file different documents and pay fee (if required), depending on the stage of prosecution. Although it is allowed to submit IDS during different phases of prosecution, it is still recommended to submit IDS (and supplemental IDSs) as early as possible to avoid extra costs.

According to the USPTO 37 C.F.R. 1.97, an IDS can be filed at different stages of prosecution in accordance with this section. This section states different parts that includes procedure and filing fee according to three prosecution stages with their respective 37 C.F.R. Section policies.  The table 1.a represents all the details and pre-requisites required for filing IDS.

 

Prosecution Stage 37 C.F.R Section Filing Period Requirements
1st Stage § 1.97(b)
  • Within 3 months of the U.S. filing date,
  • Before receiving first office action, or
  • After filing the RCE.
  • Filing 37 C.F.R. 1.97(e) statement is not required.
  • Fee payment is also not required at this stage.
2nd Stage § 1.97(c)
  • After the first stage of filing is passed,
  • Before mailing Final Office Action,
  • After mailing Notice of Allowance, or
  • After mailing an Ex parte Quayle action.
  • IDS must be filed with either a 37 C.F.R. 1.97(e) statement, or
  • A government fee in accordance with 37 C.F.R. 1.17(p).
3rd Stage § 1.97(d)
  • After the second stage of filing is passed, or
  • Before or with payment of the issue fee.
  • IDS must be filed with both 37 C.F.R. 1.97(e) statement and government fee in accordance with 37 C.F.R.  1.17(p).
  • If a 37 C.F.R. 1.97(e) statement cannot be made, then an RCE has to file to have the IDS considered by the Examiner.

Table 1.a USPTO Policies and details for filing IDS w.r.t 37 C.F.R. 1.97

 37 C.F.R. 1.97 Section Details

37 C.F.R. 1.97(e)

Statements made under this section must state either of the following two statements:

  • All information present inside IDS must not be first mentioned or communicated more than three months before filing IDS in a foreign patent office in a counterpart foreign application.
  • None of the information present inside was first mentioned or communicated in a foreign patent office in a counterpart foreign application, to any person signing for certification, and to any individual that matches with individuals mentioned in 1.56(c) more  than three months prior to the filing IDS.

37 C.F.R.  1.17(p)

Statements under this section include details about the USPTO fee structure for all the prosecution stages for filing an IDS.

Patent Term Adjustment

PTA period (if any) can be decreased according to C.F.R. 1.704(c), if its IDS is not filed within 30 days of receiving the filing information. To avoid so, an applicant (with respect to § 1.56(c)) needs to include that:

  • All information was first mentioned in communication from foreign patent office.
  • None of the people (with respect to § 1.56(c)), receive filing information within 30 days before filing IDS.

How to File IDS

Form PTO/SB/08 needs to be filled for filing IDS. Complete instructions on how to prepare and when to prepare, can be viewed on the USPTO official website. Also, a Transmittal letter may be filed with IDS, which briefly explains that IDS is in passivity with the current USPTO laws for filing IDS.

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