Why One IDS Might Not Be Enough
Unlike most foreign patent offices, the USPTO is unique in one particular aspect. US law requires each patent filer to disclose known prior art that may be material to the patentability of the claimed invention. In other words, US patent filers and their patent practitioners are obligated to tell the USPTO about prior art they know. Since this duty of disclosure is ongoing, applicants may find themselves having to make multiple IDS prior art submissions throughout the course of their US patent applications.
Need help getting your US patent application approved? Contact US patent attorney Vic Lin at vlin@icaplaw.com to explore how we can help you get your US patent granted.
Multiple IDS Submissions When You Have Related Patent Apps
Your probability of making multiple IDS will increase when you have related pending patent applications. For example, prior art references that surface in one patent application will need to be cited in one of your related patent applications. We call this cross-citing prior art.
Here are some common scenarios where you may need to cross-cite prior art references.
US Patent Application and International PCT Application
The routine examination of an international PCT patent application will inevitably lead to a prior art search report. Known as the International Search Report (ISR), this document will identify prior art references that might be relevant to your copending US application.
Any such references that are not already of record in your US application should be disclosed to the USPTO in an IDS.
US Patent Application and Counterpart Foreign Applications
Any prior art that may be uncovered by foreign patent offices in your related foreign applications may need to be disclosed to the USPTO in your US application.
US Parent and Child Applications
Continuing applications are child patent applications that stem from the parent application. A child application may be either a continuation which does not add new matter or a continuation-in-part (CIP) which does add new matter.
When you have parent and child applications that are copending, it is not uncommon for prior art to be uncovered by the examiner in one case that will need to disclosed in the other case.
PCT and US National Stage Applications
A US national stage application will normally be filed with an IDS disclosing prior art references uncovered in the corresponding PCT application.
Ongoing Duty of Disclosure May Lead to Ongoing IDS Submissions
The duty of disclosure will end when a patent application matures into an issued patent. For example, suppose you filed a parent application and a continuation application. The parent application has matured into a granted patent. At that point, there will no longer be any need to file an IDS in the parent patent.
The duty of disclosure generally applies when a patent application is pending and prosecution has not closed.
Why Not Wait to File A Single IDS Containing All Prior Art?
Filing multiple IDS statements will likely lead to additional costs. So why not wait to gather all prior art references, and then file a single IDS?
First, the USPTO wants to know about the prior art references promptly. Patent examination is more efficient if the examiners have all relevant prior art references before them when they review the claims. So the USPTO has set forth certain timing for the filing of IDS statements.
Second, USPTO government fees can get expensive in certain situations where the delay has led to a particular stage of prosecution. For example, higher government fees will apply if the prior art was known by the applicant for more than three months, and the USPTO has already issued a Final Office Action, Notice of Allowance or Quayle Action.
Third, delaying the disclosure prior art can prolong the examination of your patent application. Suppose the examiner has already examined your initial claims and sent a non-final Office Action. You then file an IDS disclosing additional prior art. In this situation, chances are strong that you will receive a further Office Action. If your IDS had been filed before the examiner began reviewing your claims, the first non-final Office Action would reflect the fact that the prior art references identified in your IDS had been considered.
What Can Go Wrong If You Don’t File IDS Submissions
The failure to satisfy the duty of disclosure can make your patent vulnerable to an inequitable conduct attack. Third parties may challenge your patent on the grounds that you failed to disclose certain prior art references.
They might argue, for example, that the USPTO would not have granted your claims in the condition as issued had the examiner known about the undisclosed prior art references. Therefore, your patent should be unenforceable according to this argument.
Our firm prefers to err on the side of caution. By filing IDS submissions promptly and sufficiently, we seek to minimize the risk of inequitable conduct challenges that might be raised in the future.
