I. IDS Requirement for U.S. Patent Application
Patent Office Rule 56 requires you to disclose to the U.S. Patent and Trademark Office (USPTO) any information of which you are aware that is “material to patentability.” The rule is properly satisfied by submitting this information by an Information Disclosure Statement (IDS). The Applicant must file the IDS timely to avoid incurring government fees.
A. Information "Material to Patentability" Must Be Disclosed to USPTO
Any information known to Applicants or those involved in the prosecution of the patent application that is “material to patentability” can include, for example, prior art references; prior publications of the invention; prior public uses, sales, or offers for sale of the invention; pending or published applications directed to closely related subject matter; Search Reports and Office Actions issued in counterpart foreign patent applications or in related U.S. patent applications; and arguments submitted in counterpart foreign patent applications or in related U.S. patent applications.
For any non-English-language document, an English-language statement of relevance must be submitted. An acceptable English-language statement of relevance can include a complete human or machine-generated translation, a corresponding English-language publication (such as an English-language counterpart of a non-English-language patent publication), a partial human or machine-generated translation of the relevant portions of the document, an English-language version of a foreign or PCT search report or Office Action discussing the document, or an English-language summary or abstract of the document. If a complete translation has already been prepared or if a machine-generated translation can be readily obtained such as from the EPO or JPO websites, then it must be submitted.
B. Information We Require
When we receive information for a patent application under our care, we promptly prepare and file an IDS to submit that information to the USPTO. If any known material information has not yet been provided to the Patent Office, we ask our client to:
(1) identify information and provide copies;
(2) identify when the information was first cited or known to the client; and
(3) provide English language translation of each non-English language document.
In some cases we are not already handling corresponding foreign applications. Accordingly, we ask our client to:
(4) provide us with an English language version of any relevant foreign search report and/or Office Actions; and
(5) provide us with a brief summary of the relevance of each untranslated non-English language reference not included in the search report and/or Office Actions.
II. DUE DATES AND FEE REQUIREMENTS FOR FILING AN IDS
The duty to disclose information “material to patentability” continues throughout prosecution of a patent application until issuance of the patent. The status of a patent application when an IDS is submitted determines whether the information will be considered by the Examiner, and whether a petition and government fee must be submitted.
A. Filing IDS Before First Office Action
A Patent Office Examiner must consider an IDS filed within three months of the U.S. filing date of an application--even if a first Office Action on the merits has already issued. No petition fee is required.
A Patent Office Examiner must consider an IDS filed after three months from the U.S. filing date, but before issuance of a first Office Action on the merits. No petition fee is required.
B. Filing IDS After First Office Action, Before Close of Prosecution
Prosecution closes on the mailing date of a Final Office Action, Notice of Allowance, or e.g., a Quayle Action. An IDS filed 1) more than three months after the U.S. filing date, and 2) after the mailing date of the first Office Action on the merits, and 3) before prosecution closes must be considered by the Examiner.
A petition fee may be required. No petition fee is required if each item of information contained in the IDS was first cited in a communication from a foreign patent office in a counterpart foreign application not more than three months prior to the filing of the IDS, or if no item of information in the IDS was known to any individual associated with the filing or prosecution of the patent application more than three months prior to the filing of the IDS.
C. After Close of Prosecution, Before Issue Fee Payment
An IDS filed more than three months after the U.S. filing date and after the mailing date of a Final Rejection, Notice of Allowance, or other action that closes prosecution (e.g., Quayle Action), but before payment of the Issue Fee, will only be considered by the Examiner if a petition fee is paid and if the IDS is timely filed. The petition fee is currently $240. An IDS is timely filed only if each item of information contained in the IDS was first cited in a communication from a foreign patent office in a counterpart foreign application not more than three months prior to the filing of the IDS, or if no item of information in the IDS was known to any individual associated with the filing or prosecution of the patent application more than three months prior to the filing of the IDS. If the IDS cannot be timely filed, then a Request for Continued Examination will be required in order to have the IDS considered.
D. With or After a Request for Continued Examination
An IDS filed with a proper Request for Continued Examination, or after the filing of a RCE but before issuance of a first Office Action on the merits thereafter, must be considered by the Examiner. Thereafter, the above criteria for filing an IDS after issuance of an Office Action continue to apply.
E. After Payment of the Issue Fee
Once the Issue Fee has been paid, an IDS will not be considered by the Examiner. In order to have an IDS considered by the Examiner at this stage, a Petition to Withdraw the Application From Issue and a Request for Continued Examination (or Continued Prosecution Application in the case of a design application) must be filed along with the IDS.
III. AFFECT OF IDS ON PATENT TERM ADJUSTMENT
The filing of an IDS can sometimes cause a reduction of patent term adjustment. In particular, an IDS filed (1) within one month of issuance of an Office Action or Notice of Allowance and requiring remailing of a new Office Action or Notice of Allowance, (2) after filing a reply to an Office Action, or (3) after issuance of a Notice of Allowance, can be considered Applicant Delay and impact Patent Term Adjustment accordingly. In some circumstances, filing an IDS will not be considered Applicant delay if the IDS includes a statement that each item of information contained in the IDS was cited in a communication from a foreign patent office in a counterpart application and that this communication was not received by any individual associated with the filing or prosecution of the patent application more than thirty days prior to the filing of the IDS. Applicant Delay can also be avoided by waiting for a new Office Action and filing the IDS with additional fees, and RCE if the next Office Action is (1) made final, (2) a Quayle Action, or (3) a Notice of Allowance.