Does a continuing application require an IDS disclosing prior art references already considered in the parent application?

No.  According to MPEP Section 609.02, it is not necessary to file an IDS in continuing applications that claim priority under 35 USC 120 to a parent application where such prior art references were already considered by the USPTO. However, an IDS may be filed if the applicant desires such references to be listed in the References Cited on the face of the issued patent.

You need to be sure that all prior art references were considered in the parent application. It is possible that certain references may not yet have been considered, which would then require an IDS in the child application to disclose those unconsidered references.

IDS Required in Bypass Applications

The one exception where an IDS would be required is if a continuation-in-part (CIP) is being filed directly off an international application designating the U.S. (i.e., a CIP filed directly off a PCT application and not a US national stage application; see MPEP 1895). In this situation where the U.S. national stage application is bypassed, the “bypass” continuing application claiming priority directly to the PCT application must include an IDS disclosing prior art references cited in the PCT application. Of course, if the parent of a CIP is a U.S. national stage application, then an IDS would not be required in the continuing application.

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Vic Lin

Startup Patent Attorney, Cofounder at Innovation Capital Law Group
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