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 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 the issuance of a patent to earn full respect for his/her patent. If not, you will lose the chance of getting a patent grant.
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 found to contradict or is inconsistent with the 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 official consideration of IDS by the examiner, it must be filed on time.
According to the USPTO 37 C.F.R. 1.97, you can file IDS at different stages of prosecution. For which the applicant may require to file different documents and pay a fee (if required), depending on the stage of prosecution. Prefer submitting IDS (and supplemental IDSs) as early as possible to avoid extra costs. This section states different parts that include 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)||
|2nd Stage||§ 1.97(c)||
|3rd Stage||§ 1.97(d)||
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
- According to 37 C.F.R., 1.97(e) – That each item of information contained in the information disclosure statement was first cited in any communication from a foreign patent office in a counterpart foreign application not more than three months prior to the filing of the information disclosure statement.
- None of the information present insides 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 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 a foreign patent office.
- None of the people (with respect to § 1.56(c)) receive filing information within 30 days before filing IDS.
File IDS: Procedure or Method
Fill Form PTO/SB/08 for filing IDS with a written explanation included in the IDS doc code.
It may include IDS fees when you submit the IDS form:
Before the first action: at this stage IDS form is considered to be at the part of the first stage of filing.
After Non-final Action: either pay a fee or sign an IDS certification saying that you got to know about it in the last 3 months.
After final action: pay the fee and sign the certification.
Attach the following three documents with IDS form:
- Transmittal Letter: indicates the contents of submission, including fee if applicable.
- Foreign Reference: cited by the examiner or by the applicant originally and is viewable in IFW.
- Non-Patent Literature: Document code indicating Non-Patent Literature (NPL). Either the applicant submits it or the examiner.
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