An invention disclosure statement (IDS) is the form used to submit relevant information to your invention’s patentability to the USPTO in order to fulfil your duty of disclosure.
An IDS, usually, includes reference to already known patents (relevant), patent applications and other published information.
Why to file IDS?
Every patent applicant should disclose every material of patentability that he/she is aware of to the USPTO. This includes prior art, non-patent text, and everything that is similar to your invention. Every patent applicant must conduct this duty in order to proceed with the patent prosecution process.
When to File an Information Disclosure Statement (IDS)?
One should timely file IDS. That is to officially consider the information during the pendency of an application. You can submit it at various levels of prosecution. But, ideally, you should file IDS as early as possible. This, in turn, ensures that the examiner considers it and also helps in avoiding additional costs.
37 C.F.R. § 1.97 assists when and how IDSs may be submitted at different levels of prosecution. Depending on the stage of prosecution, there are additional requirements which are mentioned below:
Stage I (37 C.F.R. § 1.97(b))
Applicant can file IDS within 3 months of the U.S. filing date. He/ She can even file prior to the mailing of a first office on the merits or after filing ‘Request for Continued Examination (RCE)’.
Stage II (37 C.F.R. § 1.97(c))
Applicant may file an IDS before the mailing of a final Office action or a Notice of Allowance if, in case, the first stage has expired.
Stage III (37 C.F.R. § 1.97(d))
You can also file IDS before or with payment of the issue fee if the second stage has expired. 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.
Read here in detail on When and How to file IDS?
How to File?
IDS can be filled with the USPTO. In addition to the IDS itself, a transmittal letter is filed. This transmittal letter is beneficial in briefly explaining to the USPTO that the submission is in accordance with the current rules and regulations. In addition to that, you can include additional statements related to the IDS, such as a statement under 37 C.F.R. § 1.704(d).
What Information Should You Disclose?
The information that classifies as “material to patentability” is one that has the potential to question the uniqueness of your invention. Also, if any information considers your invention as “obvious”, then also it is considered 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.
Common Point of Errors
Following is a list of few common errors which you should avoid in preparing and filing of disclosure statements:
- Applicant should refrain from failing to submit copies of foreign references and non-patent literature along with disclosure statement.
- You should resubmit a corrected statement if your first submission is non-compliant. That is because it will typically not be considered by the examiner.
- You should not fail to submit statement with references that are mentioned in the body of the application itself.
- One should not cite immaterial or cumulative references which increase costs in time and also possibly in government fees.
- Applicant should be up-to-date on necessary requirements.
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