What we need from you for an IDS

US patent law imposes a duty upon the patent applicant to disclose all known prior art references that would be material to the patent Examiner in determining patentability. We fulfill that duty by disclosing the references in an Information Disclosure Statement ("IDS").

Whose duty is this? This duty of disclosure falls upon the inventors, the applicant or assignee, and each patent firm that has a connection with the patent application.

Am I required to do patent searching? US patent law does not require that the applicant do any patent searching. If you do any searching, you will need to disclose to the USPTO the relevant references found in the search.

What kinds of things must I disclose? You must disclose each reference that either anticipates or puts into question the inventive step (unobviousness) of the claimed invention. This duty, then, is defined by the claims as filed or as later amended.

One source of references is any search report on a counterpart patent application (for example a PCT International Search Report or PCT International Preliminary Report on Patentability or a search report from a country outside of the US). Another source of references is the previous patent activity by the same applicant (for example previous patents in the same general area or previous patents by the same inventors).

At what time must the disclosure be performed? The duty of disclosure obligates the disclosure of references known at the time of filing, but also obligates the disclosure of references that come to be known at a later time. Even if we learn of a reference only days before the issuance of the patent, we must disclose the reference.

As one example, if the claims are amended during the pendency of the US application, and if the amended claims cause some reference to become relevant that was not previously relevant, then the newly-relevant reference must be disclosed.

As a second example, if a search report is received during the pendency of the US application, then the references in the newly received search report must be disclosed.

How old must the reference be for me to be required to disclose it?

Please note that we prefer not to receive these documents from you on paper. It is very much our preference to receive them as PDF and word processor files sent via email.

Is it possible to file more than one IDS? It is not only possible to file more than one IDS, it is commonplace to file more than one IDS.

Is there a government fee for filing an IDS? Yes, there is a $180 government fee for filing some IDSs. There are, however, some circumstances under which no fee is required to be paid. These include: