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Information Disclosure Statements

© 2017 BIRCH, STEWART, KOLASCH & BIRCH, LLP

THE BASICS


What is an IDS?

An IDS is a paper submitted to the U.S. Patent and Trademark Office by an Applicant providing a list of

documents having potential relevance to a given pending application.


Why File an IDS?

The “duty of disclosure” requires that all Applicants advise the USPTO of any prior art

of which they, or any individual designated in 37 CFR 1.56(c), are aware.


Who Is Designated in 37 CFR 1.56(c)?

(1) Each inventor named in the application;

(2) Each attorney or agent who prepares or prosecutes the application; and

(3) Every other person who is substantively involved in the preparation or prosecution of the application and who is associated with the inventor, with the assignee or with anyone to whom there is an obligation to assign the application.


What Is Prior Art?

“Prior art” is a general term for any form of information that might be relevant to a claim.

• Prior art can include many types of documents:

– Published patents and patent applications;

– Non-patent literature:

• Journal articles,

• Newspaper articles,

• Internet articles,

• Research papers, etc.

• Foreign Office Actions


Where Do We Get Prior Art?

• Common sources include:

– Patentability Searches,

– Search Reports in related foreign applications, and

– Third party submissions.

• References are commonly cited in the specification.

• Clients routinely send references with their new case order letter.


Does Prior Art Have to Be in English?

The documents can be in any language, but a “concise English language explanation”

must be provided for each non-English language document.

Alternatively, if there is a foreign Office Action (in English) that explains the relevance of the non-English document,

that will also suffice.


What is a “concise English explanation?”

• A copy of an English language equivalent (i.e., an English language family member of a patent document);

• An English translation of any relevant parts thereof, such as the Abstract or Claims – so long as they are descriptive of the relevant portion of the reference;

• A statement explaining the relevance of the document; OR

• An English-language search report or office action citing the document (or an English translation of a foreign-language search report/office action).


PCT Documents (cont.)

• National Stage (371) Applications

– Usually new 371 applications are filed with the International Search Report (ISR), and any references cited in the ISR are submitted in an IDS at the time of filing.

– When filing subsequent IDSs, check to ensure that all ISR references were cited at the time of filing.

– If not, you may need to file a full IDS in order to have the references considered by the Examiner during prosecution.



• The ISR uses “category” symbols to identify citation types and possible relevance:

X = Particularly relevant if taken alone

Y = Particularly relevant if taken with another Y-document

A = Technological background

O = Non-written (e.g. oral) disclosure

P =Intermediate document, published after priority date but before filing date of application; used in combination with X, Y, A (e.g. XP)

T = Theory or principle underlying the invention

E = Earlier patent document, but published on, or after the filing date

D = Cited in the application

L = Cited for other reasons



• References cited in the ISR under Category “A” may not be considered relevant by the Applicant(s).

• Thus, Applicant(s) may not want these references cited in an IDS.


New Cases

• For new cases with an ISR (International Search Report):

– If the client sends a copy of the ISR without enclosing the references, we will try and acquire the documents on our end UNLESS the document is an NPL (non-patent literature) document.

– To reduce costs, try to avoid filing an IDS without all the necessary references from the ISR.

– Try to avoid filing an incomplete IDS which includes some of the references cited in the ISR but which does not include ALLof the references cited in the ISR (possible exception, Category “A” references)


STATUS OF APPLICATION


Application Status Matters

• The status of an application (i.e., “where we are in prosecution”) affects how IDSs are processed and what needs to be included with the filing.

– Depending on the stage of prosecution, the USPTO requires different IDS documentation.

• Certain prosecution steps are major turning points affecting IDS rules and procedures:

– First Action on the Merits

– Final Action, Ex Parte Quayle or Notice of Allowance

– Payment of the Issue Fee


Application Status

• If uncertain as to the status, check the application “Status” in PAIR to ascertain where in prosecution the application stands.

• If there is a “First Action Prediction” tab, note the estimated First Action date on the “Bibliographic Data” printout.


Application Status (cont.)


Action on the Merits

The USPTO holds us to a higher standard after they have sent a first Office Action “on the merits”; so it is important to

understand what this is.


Action on the Merits (cont.)

• An action on the merits is an Office Action issued by the Examiner which substantively addresses the application.

– Non-final Office Action;

– Ex Parte Quayle; OR

– Notice of Allowance.


Restriction/Election

• A “Restriction/Election of Species Requirement” does NOT count as an action on the merits.

– No changes in procedures, since there are no specific requirements.

– Process the IDS in the usual manner and then return the file to the File Room as promptly as possible. This will ensure the file is available to others when needed.


Before First Action on the Merits

CERTIFICATION & PTO IDS Filing FeeNOT REQUIRED!!

IDS Filing

First Action on the Merits

Final OA, Ex Parte, or NOA

Payment of Issue

FeeIssuance


After First Action on the Merits

EITHER CERTIFICATION OR PTO Filing FeeREQUIRED

(Applicants who cannot certify must pay the filing fee)


IDS Filing


Payment of Issue

FeeIssuance


After Final OA, Ex Parte or NOA

BOTH CERTIFICATION AND PTO Filing FeeREQUIRED



IDS Filing

Payment of Issue

FeeIssuance


After Final OA, Ex Parte or NOA (cont.)

• If the Applicant cannot certify (i.e., the documents have been known for more than three (3) months), the procedures vary based on “relevance”:

– If the references are RELEVANT to patentability, Applicant must file a Request for Continued Examination (RCE) with the IDS:

• prior to paying the Issue Fee; or

• with the response to the Final Office Action to ensure that the references are considered by the Examiner and made “of record”.

– If the client indicates that the references are NOT RELEVANT to patentability, then no IDS is technically required (it is possible to simply place the references in the USPTO file without the Examiner’s consideration).


After Payment of Issue Fee

PROCEDURES VARY BASED ON “RELEVANCE”

– Confirm Relevance!

• The client is the one who determines if documents are relevant (i.e. “material to patentability”).

• Sometimes the attorney or client may decide that references cited in a Foreign Search Report or Office Communication are NOT relevant to patentability.



Payment of Issue

Fee

IDS Filing

Issuance


After Payment of Issue Fee (cont.)

• If the client indicates that the documents are relevant(i.e., “material to patentability”):

BOTH CERTIFICATION AND PTO Filing Fee ARE REQUIRED

– You must file a Quick Path IDS (QPIDS), which is:

• A Petition to Withdraw From Issue, together with

• A conditional RCE.

– File as quickly as possible to give the USPTO time to process the Petition before the patent issues.


After Payment of Issue Fee (cont.)

• If the documents are deemed “not relevant” to patentability:

– After payment of the Issue Fee, you can still place the references in the USPTO file without consideration (under 37 CFR § 1.97(i)). Such documents will NOT be considered by the Examiner since prosecution has ended. Such documents will simply be placed in the file.

– Even though such documents are not “of record”, placing them in the file can be useful in the event of any future law suit challenging the patent.


After Issuance

IDS MUST BE FILED UNDER37 CFR § 1.97(i) OR § 1.501(a)

– Filing of an IDS is per attorney/client discretion.

• 37 CFR § 1.97(i) – Documents will not be considered by Examiner or made “of record”, but placed in file.

• 37 CFR § 1.501(a) – Documents may be examined, but this type of filing requires attorney approval.



Payment of Issue

FeeIssuance

IDS Filing


After Issuance (cont.)

• What if the patent has issued and references are discovered that are considered to be relevant to patentability?

• You can file an IDS under 37 CFR § 1.501(a)

– WARNING! Have the attorney review the client’s instructions since this may cause litigation ramifications later.

– 37 CFR 1.501(a) permits any person at any time during the period of enforceability of a patent to cite to the USPTO, in writing, prior art consisting of patents and printed publications which that person states to be pertinent and applicable to the patent and believes to have a bearing on the patentability of any claim(s) of the patent.

• Otherwise, you must consider some post-grant procedure.


Summary of IDS Requirements


IDS FilingEITHER CERT

OR FEE

Final OA, Ex Parte, or

NOA

Payment of Issue Fee

Issuance



IDS FilingBOTH CERT

AND FEE


Issuance


Final OA, Ex Parte, or

NOA


IDS FilingQPIDS OR

IDS (CFR 1.97)

Issuance

First Action on the

Merits



IssuanceIDS Filing

IDS (CFR 1.97) ORIDS (CFR 1.501(a))

IDS FilingNO CERT NO FEE




Issuance


QUESTIONS
