What prior art documents should be included in an Information Disclosure Statement (IDS)?

Why is an IDS required?

The USPTO places an obligation on each patent applicant to disclose any known prior art references that are relevant to their patent application. A patent filer satisfies this duty to disclose prior art by filing an Information Disclosure Statement, or IDS.

Every patent applicant has a duty under U.S. patent law to disclose to the US Patent and Trademark Office any known prior art documents that are material to the invention claimed in the patent application. Since the duty applies only to known prior art references, the applicant does not have an obligation to search for prior art. However, any prior art references uncovered in a patent search must then be disclosed.

This duty falls on each inventor, the assignee (i.e., company or employer) if any, and the patent attorney/agent/firm assisting in the patent application.

What prior art documents should be identified in the IDS?

The types of prior art information that should be cited in an IDS include not only patent literature – such as U.S. and foreign patents and published patent applications – but also non-patent literature (NPL) such as printed publications including websites and online media, and all types of literature including sales and marketing materials. The duty to disclose extends not only to documents in the U.S., but also to any known foreign references.

What if more prior art is uncovered later?

The duty to disclose prior art is ongoing while the patent application is pending. Therefore, it is common for an applicant to file multiple Information Disclosure Statements through the course of prosecuting the application as new prior art references are uncovered. This is often the case when prior art is cited in a counterpart international (PCT) or foreign application. Of course, the obligation to file a further IDS would end when the patent application is abandoned or granted.

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