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?

• Printed publications anywhere in the world. If the reference is a printed publication by anyone, anywhere in the world, prior to the filing date of the patent application, then we must disclose it in an IDS. What happens next depends on whether the date of publication is more than a year before the filing date or is not more than a year before. If the publication date is more than a year before the filing date of the patent application, then it is prior art and the Examiner must consider it. If the publication date is less than a year before the filing date of the patent application, then the question is whether our date of invention precedes the publication date.
• Known or used by others in the US. If the reference is something known or used by others in the US, prior to the filing date of the patent application, then we must disclose it in an IDS. If the date of known-or-used-by-others is less than a year before the filing date of the patent application, then the question is whether our date of invention precedes the known-or-used-by-others date.
• Patented outside the US. If the reference is a patent outside the US prior to the filing date in the US, based upon a non-US patent application filed more than a year before the filing date in the US, then we must disclose it in an IDS.
• Described in a published US patent application. If the reference is a published US patent application having a filing date prior to our date of invention, then we must disclose it in an IDS. This is so, even if the publication date is after our filing date.
• Described in a granted US patent. If the reference is a granted US patent having a filing date prior to our date of invention, then we must disclose it in an IDS. This is so, even if the patent grant date is after our filing date.
• Described in a published PCT patent application designating the US. If the reference is a published PCT patent application (designating the US) having a filing date prior to our date of invention, then we must disclose it in an IDS. This is so, even if the publication date is after our filing date.
• In public use in the US. If the reference is public use in the US, more than a year prior to the filing date of the patent application, then we must disclose it in an IDS. If the public use date is more than a year before the filing date of the patent application, then it is prior art and the Examiner must consider it.
• Sold or offered for sale in the US. If the reference is a sale or offer for sale by anyone in the US, more than a year prior to the filing date of the patent application, then we must disclose it in an IDS. If the sale or offer for sale date is more than a year before the filing date of the patent application, then it is prior art and the Examiner must consider 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:

• Within three months of the filing date. If we file the IDS within three months of the filing date of the US application, then the IDS does not require a government fee. This is why OPLF urges you to provide your references for the IDS as soon as possible in the filing process.
• Prior to the first Office Action. If we file the IDS prior to the first Office Action in the US application, then the IDS does not require a government fee. Thus, even if we do not disclose a reference within the first three months, it is very desirable to disclose it as soon as possible thereafter, so that the IDS will hopefully be filed prior to the first Office Action.
• Disclosed in a non-US search report. If all of the references to be disclosed in the IDS are cited in a non-US search report (a search report from outside of the US or a PCT International Search Report) in a counterpart patent application, and if the search report was mailed within the past three months, and if the USPTO has not mailed a final rejection or a notice of allowance, then we can certify this to the USPTO and file the IDS within three months of the date of mailing of the non-US search report, and thus avoid having to pay the government fee.