USPTO IDS Fees Depend upon Timing

Applicants have an obligation to tell the USPTO about known prior art that is relevant to their patent applications. This duty of disclosure is met by submitting an Information Disclosure Statement (IDS) which might carry a USPTO in certain circumstances. Whether any USPTO fees are required for filing an IDS will depend 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.

No IDS Fee 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 nonprovisional 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 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

IDS Fees 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.

After first Office Action and 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

After first Office Action and 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): $260/$130

Before payment of Issue Fee but after Final OA, Notice of Allowance or Ex parte Quayle

USPTO fees will typically apply in a situation where the applicant has already received a Final Office Action, Notice of Allowance or Ex parte Quayle (Quayle Action).

After FOA/NOA/QA and 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): $260/$130

After FOA/NOA/QA and 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): $1,360/$680 for 1st RCE; $2,000/$1,000 for 2nd and subsequent RCE.

After Payment of Issue Fee: QPIDS

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

If an applicant has multiple co-pending patent applications that are related to each other, then the applicant will most likely need to file cross-citing IDS’s so that prior art in one case is made of record in the other related cases. See this post on whether copending patent applications are related for cross-citing prior art.

During Appeal

A patent application on appeal is 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

Startup Patent Attorney | IP Lead Partner at Innovation Capital Law Group
We align ourselves with Davids fighting Goliaths. Our registered patent attorneys work as a team to equip startups and founders with solid IP rights that facilitate funding, growth and sales. Email or call us so we can get to work on your IP: (949) 223-9623 | vlin@icaplaw.com