Navigating IDS in U.S. Patent Applications

An Information Disclosure Statement (IDS) is a document submitted to the U.S. Patent and Trademark Office, which provides prior art and relevant information for the examination of a patent application. Individuals involved in preparing and prosecuting a U.S. patent application are required to continuously maintain candor and good faith by informing the U.S. Patent and Trademark Office (USPTO) of any prior art or information potentially “material” to the application’s examination. This duty continues until the patent is granted. Under 37 C.F.R. §1.56(c), this obligation extends to inventors, the assignee’s employees, and both foreign and U.S. attorneys and agents.

What to Include in an IDS?

When submitting an IDS to the USPTO, it’s important to include:

IDS Requirements and Fees

Effective October 3, 2022, the USPTO increased IDS fees from $180 to $260 post-first Office Action. This significant fee hike highlights the need for strategic timing in IDS submissions to manage costs effectively during patent prosecution. Awareness of fee triggers, particularly after notice of allowance, is key to avoiding potential RCE filings.

Guidelines for IDS Submission

• IDS Before First Office Action:

  • No USPTO fee is required within the first three months of initial filing. This rule is rarely applied as the USPTO seldom issues a first office action within this period.
  • After the first three months, an IDS can still avoid USPTO fees if filed before a first Office Action [See 37 CFR 1.97(b)(3)].
  • If a Request for Continued Examination (RCE) has been filed, no official fee is required if the IDS is submitted before a first (post-RCE) Office Action [see 37 CFR 1.97(b)(4)].

• IDS After First Office Action but Before Final Office Action or Notice of Allowance:

  • An IDS filed after the first Office Action requires either:
    • A statement under 37 C.F.R. §1.97(e) for an IDS must either confirm that each item of information was first cited in a communication from a foreign patent office not more than three months prior to filing the IDS or assert that no item was cited in such a communication and was not known to any individual designated in 37 CFR 1.56(c) more than three months before filing the IDS
    • A $260 fee with a fee transmittal form if such a statement cannot be made.

• IDS After Final Office Action or Notice of Allowance:

  • An IDS filed after a Final Office Action or Notice of Allowance but before the payment of the Issue Fee must include a §1.97(e) statement and a $260 fee.
  • If a §1.97(e) statement is not provided, the USPTO will not consider the information, and an RCE or other continuation procedure will be necessary.

• IDS After Payment of the Issue Fee:

  • An IDS filed after the payment of the Issue Fee will not be considered by the USPTO.
  • To have the IDS considered, a Petition to withdraw the application from issuance and an RCE or other continuation procedure is required.

• Impact on Patent Term Adjustment:

  • The patent term adjustment may be reduced if an IDS is not filed within 30 days of the date any individual designated in §1.56(c) received the information.
  • To avoid a potential reduction in patent term adjustment, a statement confirming that each item was cited in a communication from a foreign patent office and that the communication was received no more than 30 days before filing the IDS should be included.

Options for Submitting IDS After issue fee payment or After Final OA or NOA without a §1.97(e) Statement

If you need to submit an IDS after the issue fee payment or after the Final Office or Notice of Allowance but cannot provide a §1.97(e) statement, consider the following options:

1. File a Request for Continued Examination (RCE):

   • This allows the submission of the IDS and response to any outstanding rejections.
   • Incurs the RCE fee in addition to the $260 IDS fee.
   • May lead to a delay in the issuance of your patent.

2. File a Quick Path Information Disclosure Statement (QPIDS):

   • A streamlined process for IDS submissions after the issue fee payment.
   • Requires a §1.97(e) statement, a petition to withdraw from issue after payment of the issue fee, and a conditional RCE.
   • Involves additional fees and procedures.

3. Petition to Withdraw the Application from Issuance:

   • Enables the submission of the IDS by withdrawing the application before it issues.
   • May involve re-filing and additional costs.

Each option may be considered based on the urgency of obtaining the patent, complexity of the application, budget, and the likelihood of overcoming outstanding rejections.

References

• MPEP 609: Information Disclosure Statement
• IDS Form
• USPTO Fee Schedule