Preface
This brief note is not legal advice and is for educational purposes only.
Quick Discussion
During the patent prosecution process there is a duty to disclose to the USPTO (US Patent and Trademark Office) any prior art you come across. Prior art is defined as any information related to your invention that is before your priority date, which is the earliest date you are claiming priority to for your claims. This duty to disclose is imposed on anybody associated with the patent prosecution which generally means the inventor and the patent attorney (or agent). This is a continuing duty until the patent issues.
See 37 CFR 1.56 Duty to disclose information material to patentability.
NOTE however you are not under any duty to search for or find any prior art. If you as an inventor come across art or information that you believe relates to your invention, best practice is to have your attorney make a determination and if necessary file an IDS (Information Disclosure Statement) with the USPTO.
The IDS can be filed at multiple times, but must be filed within certain timeframes to avoid paying fees.
The IDS form PTO/SB/08A and 08B are used to list and transmit copies of cited documents as required. Note that copies of US patents/applications are no longer required to be filed (the USPTO finally figured out they had access to those 🙂 . NPL (Non Patent Literature) can also be listed and supplied to the USPTO as well as foreign patents. For any document (patent and literature) not in English, supply the foreign document and at least a translation of the first page so the examiner can determine the relevancy.
When submitting the IDS you must indicate per 37 C.F.R. § 1.97, what it is being submitted under. Here are the categories (choose only one):
37 C.F.R. §1.97(b)
- i.e. within 3 mo of filing date of national ap (other than under 1.53(d))
- i.e. within 3 mo of date of entry in national stage (international ap 1.491)
- i.e. before mailing of first Office Action on the merits
- i.e. before mailing of first Office Action after filing RCE under 1.114
37 C.F.R. §1.97(c) – i.e. after time period of 1.97(b) and before an action closing prosecution (mailing date of final action 1.113, NOA 1.311, etc.) and is accompanied by:
- one of the statements of 1.97(e) below; OR
- the fee set forth in 1.17(p) and enclosed
37 C.F.R. §1.97(e) statement:
- That each item of information contained in the information disclosure statement was first cited in any communication from a foreign patent office in a counterpart foreign application not more than three months prior to the filing of the information disclosure statement; OR
- That no item of information contained in the information disclosure statement was cited in a communication from a foreign patent office in a counterpart foreign application, and, to the knowledge of the person signing the certification after making reasonable inquiry, no item of information contained in the information disclosure statement was known to any individual designated in § 1.56(c) more than three months prior to the filing of the information disclosure statement.
Conclusion
An IDS is very important to file because if the USPTO finds out you withheld information, it’s called fraud on the patent office and is grounds to kill your patent. Your attorney will also include in the IDS a perfunctory statement like: This IDS is not to be construed as a representation that a search has been made and is not to be construed as an admission that the information cited in this IDS is material to patentability. Use your attorney, they have the knowledge on what to do.
