Understanding Information Disclosure Statements (IDS) and How to File Them

Common Questions about Filling Out the IDS Form

What should you do if you’re uncertain about the data?

Submit the form within the timeframe specified in 37 CFR 1.97, even if you don’t have all the information. If you’re unsure, include what you do know and submit the IDS. It’s crucial to file on time. If additional information is necessary, the examiner will address it in an office action. It’s better to file the IDS on time, even with incomplete data, than to submit it late.

Which date should you use as the publication date?

If you don’t indicate a publication date for any documents, the examiner will disregard them. However, if you know that a document was publicly available before your patent application’s filing date, you can enter “at least as early as [insert your application’s filing date].” When stating a month and year, assume the last day of that month and the specified year.

What Prior Art Documents Should You Include in the IDS?

You must submit any document that could be used by the examiner to reject your patent application. The legal requirement is to disclose material information or any information that could aid the examiner in reviewing your application. Documents dated after the filing of your patent application are not considered prior art and need not be submitted.

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Sometimes, you may have forgotten about prior art that you came across a long time ago, inadvertently omitting them from your submission. Here’s a checklist of potentially relevant prior art information that you should search for and include in the Information Disclosure Statement:

  1. Any prior art document you or your patent attorney discovered during a prior art search.
  2. Any prior art document in a related U.S. or foreign patent application that shares a claim of priority or deals with a similar subject matter.
  3. Any offers for sale (even to a single person) made more than a year before the patent application’s filing date.
  4. Any web pages you published that disclose the invention, provided they were made public more than a year before the filing date.
  5. Any public disclosures or demonstrations made during trade shows or other events more than a year prior to the patent application’s filing date.

If you’re uncertain about whether a document is relevant to your invention’s patentability, it’s best to include it in the IDS. There’s no harm in sharing too much information with the patent office, and it ensures transparency in your application. Remember, it’s always better to err on the side of caution.

What Information Should You List in Your Information Disclosure Statement?

Inventors often mistakenly assume that their own products are not considered prior art. However, any offer for sale, public demonstration, or published material made more than a year before the patent application’s filing date is indeed prior art. If you attended a trade show more than a year prior to filing your patent application, any products or services discussed at that trade show are considered prior art and must be included in the IDS.

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Even a webpage on your own website or a product listing on Amazon qualifies as prior art if it occurred more than a year before the patent application’s filing date.

Do You Need to Conduct a Prior Art Search for the IDS?

No, you are not obligated to conduct a prior art search to find information for the IDS. The duty of candor and good faith does not require you to search for prior art. It is the examiner’s responsibility to conduct a patent search to determine the novelty and non-obviousness of your invention.

When Should You File the Information Disclosure Statement?

Typically, one IDS is filed within three months after submitting the patent application. You should file the results of your patent search, any relevant documents you found before hiring your patent attorney, and the results of any formal patent search you conducted.

During the application process, you may need to file one or more IDSs as you uncover additional prior art references. As you find new information, you must file additional IDSs to disclose these discoveries.

According to 37 CFR 1.97, the timing of filing the IDS affects whether the examiner will consider the prior art you submit:

  • If you file the IDS within three months of the patent application’s filing date, the examiner must consider the information you provide.
  • Even if you file the IDS after three months but before receiving the first office action, the examiner must still consider the information.
  • If you file the IDS after receiving an office action, you can still satisfy your duty of candor and good faith. However, you must file the IDS within three months from the date you become aware of the prior art and pay the necessary fees.
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In general, the Patent Office prefers prompt disclosure of any prior art information, preferably within three months. Filing within this period allows for better consideration of the information. Be aware that some cases may require a fee.

What Should You Do If You Discover Prior Art after the Final Office Action or Notice of Allowance?

Immediately inform your patent attorney. The discovered prior art must be submitted to the Patent Office within three months of its discovery if you want it to be considered. You will need to state that you were unaware of this prior art for more than three months and pay the corresponding fee.

In some cases, inventors hesitate to submit newly found prior art because it may lead to the examiner withdrawing the notice of allowance. While this is a possible outcome, it’s crucial to fulfill your duty of candor and good faith by disclosing any newly uncovered prior art to the patent office. Failure to do so may jeopardize the validity of the patent and any related patents.

What Should You Do If You Discover Prior Art after Paying the Issue Fee?

Once again, promptly notify your patent attorney. The patent is usually granted within four to six weeks after paying the issue fee, leaving little time to file the IDS. In such cases, you can utilize the Quick Path Information Disclosure Statement (QPIDS). Alongside the required documents, you must also submit Form PTO/SB/09.

Remember, open communication with your patent attorney is essential to ensure timely and accurate disclosure of any newly discovered prior art.