What information must be disclosed to the USPTO (Information Disclosure Statement (IDS))?
An Information Disclosure Statement (IDS) is a document used to disclose various prior art items (e.g., patents, patent application publications, publications, etc.) which are “material to the patentability” of a patent application filed with the United States Patent and Trademark Office (USPTO) (see § 1.56 – Duty to disclose information material to patentability).
Individuals who have a Duty to Disclose Information Material to Patentability
Further to Patent Rule 56:
“Each individual associated with the filing and prosecution of a patent application has a duty of candor and good faith in dealing with the Office, which includes a duty to disclose to the Office all information known to that individual to be material to patentability as defined in this section. The duty to disclose information exists with respect to each pending claim until the claim is cancelled or withdrawn from consideration, or the application becomes abandoned. Information material to the patentability of a claim that is cancelled or withdrawn from consideration need not be submitted if the information is not material to the patentability of any claim remaining under consideration in the application. There is no duty to submit information which is not material to the patentability of any existing claim.”
In view of the foregoing, all individuals associated with the filing and prosecution of a patent application (e.g., inventor(s), assignee(s), patent practitioner(s), etc.) must satisfy the disclosure requirements of Patent Rule 56.
Information which is Material to Patentability
As indicated above, any prior art item which is “material to patentability” and which is “not cumulative to information already of record or being made of record in the application” must be disclosed to the USPTO if:
“(1) It establishes, by itself or in combination with other information, a prima facie case of unpatentability of a claim; or
(2) It refutes, or is inconsistent with, a position the applicant takes in:
(i) Opposing an argument of unpatentability relied on by the Office, or
(ii) Asserting an argument of patentability.
A prima facie case of unpatentability is established when the information compels a conclusion that a claim is unpatentable under the preponderance of evidence, burden-of-proof standard, giving each term in the claim its broadest reasonable construction consistent with the specification, and before any consideration is given to evidence which may be submitted in an attempt to establish a contrary conclusion of patentability.” (see § 1.56(b))
Patentability in the context of prior art is determined by 35 USC 102 and 35 USC 103.
It must be stressed that the penalty for failing to disclose a reference to the USPTO is severe as “no patent will be granted on an application in connection with which fraud on the Office was practiced or attempted or the duty of disclosure was violated through bad faith or intentional misconduct.” (see § 1.56(a))
Sources
An Information Disclosure Statement may include items from a variety of sources, including:
- References listed in a search report due to an Applicant initiated Prior Art/Patentability Search;
- References listed in a search report of a foreign patent office in a counterpart application (e.g., report(s) generated through PCT application process);
- Prior patent application(s)/co-pending applications filed by the Applicant
Timing of Disclosure
The duty of disclosure is applicable throughout the entire pendency of the patent application (from filing through issue) with particular emphasis placed upon early disclosure.
The current stage of the patent application will determine the required action/USPTO fees. Accordingly, an Applicant may incur USPTO fees if an Information Disclosure Statement is not filed promptly upon the discovery of prior art items that are required for submission.
According to MPEP 609.04(b) (Timing Requirements for an Information Disclosure Statement), the required action/fee is determined by the following four stages:
I. “Information Disclosure Statement Filed Before First Action on the Merits or Within Three (3) Months of Actual Filing Date (37 CFR 1.97(b))”
II. “Information Disclosure Filed After I. Above but Before Mailing of Final Action, Notice of Allowance, or an Ex Parte Quayle Action (37 CFR 1.97(c))”
III. “Information Disclosure Statement Filed After II. Above but Prior to Payment of Issue Fee (37 CFR 1.97(d))”
IV. “Information Disclosure Statement Filed After Payment of Issue Fee”