When it comes to the preparation and filing of a patent application, you might come across the term “ IDS Filing ”. Amongst 100 different things that you must oversee, this is a simple, yet very crucial part of your application. But, what is IDS? How do you file it?
“IDS” stands for Information Disclosure Statement. Also, the name itself is quite descriptive. But, we will still provide you with a detailed description of what IDS filing means and when you should do it.
Related Article: When & How to File IDS?
What is the significance of IDS filing?
As we just told you, IDS is the Information Disclosure Statement. Now, you need to understand what its significance is and what to include in this statement.
Every patent applicant has the duty to disclose every Material of Patentability that he/she is aware of to the USPTO. This includes prior art, non-patent text, and anything else that is similar to the invention.
You can see the stipulation in MPEP 2001 and 37 CFR 1.56. Every patent applicant must satisfy this candor in order to proceed with the patent prosecution process.
Is Searching for Prior Art Necessary for IDS Filing?
You might ask yourself, “So should I search for prior art?” This can be a tricky question. But, the answer, in context with the IDS, is no. The USPTO requires you to disclose only the prior art that you’re aware of. So you need not conduct a search for the sole purpose of putting the results in the IDS.
However, you should always conduct a Patent search before proceeding with the filing process. You should be aware of your application is worth filing or not in the first place. You must include the results of this search in your IDS.
In conclusion, you should conduct a patent search, but not for the purpose of IDS filing.
What Information Should You Disclose?
Information that classifies as “material to patentability” is any information that might question the novelty of your invention. Also, if any information potentially deems your invention as “obvious”, even then it classifies as material to patentability.
There might be a situation where you are not sure if the information is relevant to your invention or not. In this case, it is better to be safe by including it in the IDS.
These might involve existing patents, patent applications, scientific journals, blogs, etc. Further, it can also be in the form of Office Actions, whether it’s dealing with the US or foreign patent applications.
Related Article: What are the Prior Art Documents required while filing an IDS?
When is the Best Time for IDS Filing?
Ideally, you should file the IDS as soon as you discover relevant information. Now, the main question is when should you prepare the initial IDS filing?
You can file the IDS (or make additions to it) at the following stages:
Within 3 months of the Filing the Initial Application
This is the best time to file the IDS. You should file it within the first 3 months from the date of filing the non-provisional application. [37 CFR 1.97(b)(1) & (2)]. The USPTO will not charge you any fee for it either.
Before the First Office Action
If you don’t submit the IDS within the first 3 months, then you can still avoid any fees for IDS filing. [37 CFR 1.97(b)(3)]. However, you must submit it before the USPTO issues the first Office Action on your application.
After First Office Action but Before Final Office Action
You will have to pay a fee in order to file the IDS after the USPTO issues the first office action. The fee will depend on when you file the IDS relative to the earliest date that the applicant found out about prior art.
If it is known for less than 3 months, you can file the IDS without incurring any fee. You must include a statement confirming that each reference is not more than 3 months old.
If it is known for more than 3 months, then you must pay a fee to the USPTO along with the reference.
USPTO fee (large/small): $240/$120
After Final Office Action or Notice of Allowance, but Before Payment of Issue Fee
Just like above, you will have to pay a fee to the USPTO to ensure proper IDS filing. [37 CFR 1.97(b)(4)]
If it is known for less than 3 months, then you must submit a 3-month statement and pay the necessary fee.
USPTO fee (large/small): $240/$120
If it is known for more than 3 months, then you must file a Request for Continued Examination (RCE). You can check MPEP 609.04(b) section III. If any applicant is unable to comply with the requirements of 37 CFR 1.97(d) then the applicant may file a RCE. This has a relatively larger fee. This is because if you exceed the 3 month period, your application must undergo another examination to ensure novelty.
USPTO fee (large/small entity): $1,300/$650 for 1st RCE; $1,900/$950 for 2nd and subsequent RCE.
After Payment of Issue Fee
If you have already paid the Issue Fee, then you can file a Quick Path Information Disclosure Statement (QPIDS). This process exists for such a situation where you have paid the issue fee already and discover a prior art.
For this, you must submit the following documents.
- 3-month certification
- A petition to withdraw from issue after payment of issue fee
- A conditional Request for Continued Examination and RCE fee
The USPTO takes the matter of IDS filing extremely seriously. Any late IDS filing can prove to be very risky. This can lead to a reduction in patent term adjustment, or worse, a rejection in the grant of patent.
Related Article: Effect of Late IDS Filing – Reduces Patent Term Adjustment
Why Choose SmartIDS Solutions?
It is very crucial that you ensure timely IDS filing. We, at SmartIDS Solutions, are here to help you out. Timely delivery of information disclosure statements and opportune patent grant for your invention is our top priority. We provide ready to file IDS forms in USPTO prescribed format. Our team remains up-to-date with the current regulations and always comply with the rules of the USPTO.
To make an inquiry, visit the Smart IDS Solutions Services.
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