USPTO Fees for Filing IDS Depend upon Timing

Whether any USPTO fees are required for submitting an Information Disclosure Statement (IDS) depends upon the timing of the submission relative to two key dates:

  1. the status of the US application; and
  2. when the applicant first found out about the new prior art references.

Here are key IDS dates to keep in mind.

Within Three Months of Initial Filing

An IDS will be considered by the USPTO if filed within three months of the filing date of a non-provisional application, which may include a US national stage application [37 CFR 1.97(b)(1) & (2)].

USPTO fee: none

Before First Office Action

After the first three months of the initial filing date, an IDS submission may still avoid incurring any USPTO fees if filed before a first Office Action is issued [37 CFR 1.97(b)3)].

If an RCE has been filed, there would no official fee if the IDS is filed before a first (post-RCE) Office Action issues [see 37 CFR 1.97(b)(4)].

If an applicant knows of certain prior art references but requires more time to obtain copies (e.g., NPL documents), the applicant can wait to file the IDS without having to pay any USPTO fees so long as the IDS is filed before the first Office Action issues.

USPTO fee: none

After First Office Action and Before Final Office Action

If a first Office Action has issued, then the USPTO fee for filing an IDS depends upon when the IDS is filed relative to the earliest date that the applicant (including its patent attorney/agent) found out about the new prior art.

If known for less than 3 months

If the prior art was first revealed in a counterpart foreign application less than three months ago, the applicant may file an IDS within three months of the foreign Office Action and include a statement confirming that each reference in the IDS was first cited in a foreign Office Action not more than three months prior to filing the IDS (the “3-month statement”).

USPTO fee: none

If known for more than 3 months

If more than three months have passed since the prior art references were cited in a foreign Office Action, the applicant must pay the USPTO fee. [37 CFR 1.97(c)]

USPTO fee (large/small entity): $240/$120

After Final Office Action or Notice of Allowance, but Before Payment of Issue Fee

If known for less than 3 months

The applicant must submit the 3-month statement and pay the USPTO fee. [See 37 CFR 1.97(d)]

USPTO fee (large/small entity): $240/$120

If known for more than 3 months

The applicant must file a Request for Continued Examination (RCE) in order to have the prior art references considered by the examiner and pay the RCE fee. See MPEP 609.04(b) section III which states:

If an applicant chose not to comply, or could not comply, with the requirements of 37 CFR 1.97(d), the applicant may file a RCE under 37 CFR 1.114, or a continuing application under 37 CFR 1.53(b) (or 37 CFR 1.53(d) if the application is a design application) to have the information considered by the examiner. 

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 prior art is newly discovered after payment of the issue fee, an applicant may file a Quick Path Information Disclosure Statement (QPIDS).

QPIDS

QPIDS is a streamlined process to request consideration of an IDS after payment of the issue fee. The requirements include the requisite 3-month certification which is recited in the USPTO QPIDS form, a petition to withdraw from issue after payment of the issue fee, a conditional Request for Continued Examination and the RCE fee. A conditional RCE means 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.

Cross-citing Prior Art in Related Applications

See this post on whether copending patent applications are related for cross-citing prior art.

During Appeal

A patent application on appeal goes under the jurisdiction of the Patent Trial and Appeal Board (PTAB) upon the filing of a reply brief or the deadline for filing a reply brief, whichever is earlier [see 37 CFR 41.35]. An IDS filed while the Board possesses jurisdiction over the appeal proceeding will be held in abeyance until the Board’s jurisdiction ends [see MPEP 1210].

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Vic Lin

Vic Lin

Startup Patent Attorney | IP Chair at Innovation Capital Law Group
We love working with startups and small businesses. I help entrepreneurs protect their intellectual property so they can reach their business goals.