What is an Information Disclosure Statement (IDS)?
A patent applicant has a duty to disclose to the USPTO all known prior art or other information that may be material to the patentability of the invention in a pending application. To satisfy this duty of candor, the prior art information must be submitted to the USPTO in the form of an Information Disclosure Statement (“IDS”). [see MPEP 2001 and 37 CFR 1.56].
Who has the obligation to disclose prior art?
This duty to disclose known and relevant prior art applies to all persons involved with the substantive preparation of the patent application. That means not only the applicant/client, but the patent attorneys and patent agents who are handling the patent application. The duty also applies to each inventor named in a patent application.
Are inventors required to search prior art?
No, the duty of candor requires patent applicants and their attorneys and agents to disclose only known prior art. There is no duty to search for prior art. Therefore, applicants should carefully weigh the pros and cons of searching the prior art before actually doing so. A patentability search may still be prudent for certain types of inventions, but you will need to disclose the prior art references uncovered in the search if you decide to apply for a patent.
What kind of prior art information must be submitted in an IDS?
The duty of candor applies only to relevant information that is defined as “material to the patentability” of the invention claimed in your patent application. Think of “material” information as something that calls into question the novelty of your claimed invention. Information can also be material if it might render your invention obvious.
Our firm would rather err on the side of caution and disclose more prior art information rather than less. Prior art information might also include Office Actions, particularly Office Actions in related US and foreign patent applications, as well as published patent applications and issued patents. Any foreign Office Actions or foreign patent references should be accompanied by an English summary of the pertinent information.
What if copies of NPL Documents cannot be obtained?
A minimum level of public accessibility is required in order for non-patent literature (NPL) documents or information to qualify as prior art [see MPEP § 2128.01]. If copies are unavailable, then the information might not be publicly accessible. If copies are available, there would appear to be no excuse for failing to procure a copy of the NPL information to be included in an IDS.
What to do if new prior art is discovered after a Final Office Action or Notice of Allowance
Sometimes, an applicant may find out about new prior art after receiving a Notice of Allowance (e.g., new prior art cited in related PCT application or foreign application). If the prior art references were first discovered less than 3 months ago, the applicant may file the IDS and pay a USPTO IDS fee. If more than three months have passed since the new prior art references were first uncovered, the applicant must file a Request for Continued Examination (RCE) and pay the USPTO fees for an RCE in order to file a supplemental IDS.
What happens if new prior art is discovered after issue fee payment?
The USPTO has initiated a streamlined process to request consideration of an IDS after payment of the issue fee. The program is called Quick Path Information Disclosure Statement or QPIDS. The QPIDS form provided by the USPTO includes the requisite certification, a petition to withdraw from issue after payment of the issue fee and the Request for Continued Examination which is treated as a conditional RCE, meaning 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.
What if the date of a prior art reference is unknown?
Undated prior art references in an IDS will generally not be considered by the examiner. A few potential solutions exist:
- If the prior art reference is a website or webpage, check archive.org to see if an earliest publication date has been archived; and/or
- If the applicant is certain that the reference was dated earlier than the priority date of your patent filing, then a statement can be submitted with the IDS to indicate that the reference was known to the Applicant prior to the priority date of the application. This will enable to examiner to consider the reference even without a date.
How to determine if patent applications are related for cross-citing prior art
At the outset of filing a new US patent application, a determination should be made as to whether the new US application is related to any previously filed foreign or US applications. If so, the new application should be cross-referenced with the related cases for purposes of filing Information Disclosure Statements in this group of related cases, a practice known as cross-citing prior art. This is due to the likelihood that prior art in one application, which is not already of record in another application, may be material to the patentability of that other application [see 37 CFR 1.57(b) and MPEP 2001.05].
To determine whether the new US patent application is related to a foreign application is relatively simple. In most cases, a priority claim to the same foreign priority application would clearly render the cases related. If the new US application does not include any priority claims, but the applicant knows the subject matter of the new US application is covered in a prior foreign filing (e.g., applicant missed the foreign filing deadline, but is taking advantage of the 1-year grace period for US patent filings), then such cases are also related.
Determining whether a new US application is related to any copending US patent filings may be a bit trickier. Some telltale signs include whether the US applications have at least one common inventor and/or the same assignee, and disclose similar subject matter [see MPEP 2001.06(b)].
Why file a cross-citing IDS?
Suppose you have two pending US patent applications that are related to each other (e.g., two design patent applications by the same inventors/applicants showing similar designs). If an Office Action citing new prior art is issued in a first application, then you will likely need to file a cross-citing IDS in the related second application. The point is to take the prior art references uncovered in one case, and have them considered in all other related cases.
When should an IDS be filed?
It’s best to file the IDS as soon as the relevant prior art information is known. For new applications, the IDS should be filed with the initial submission or shortly thereafter, and preferably before the issuance of a first Office Action in order to avoid USPTO fees. If new prior art was discovered through a corresponding foreign or PCT application, then the IDS should be filed within three months of foreign Office Action or international search report that cited the new prior art to avoid paying a USPTO fee. See this post for the timing requirements and any USPTO fees for filing an IDS.
The duty of candor is an ongoing obligation, so the applicant and its patent practitioners have an ongoing duty to file supplemental IDS’s so long as new prior art is discovered. If you have multiple related patent applications pending, then there is a high likelihood that you may have to make multiple IDS filings in each application. Whenever prior art crops up in one application, you will likely need to submit an IDS in each related application.
What are the consequences of not filing an IDS?
Failure to disclose material information to the USPTO during prosecution may lead to a finding of inequitable conduct which may render a patent unenforceable. Practically speaking, we would prefer to err on the side of caution by disclosing more than less. Why leave yourself open to an attack on a patent in which you have invested substantial time and money to obtain?
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