Timing of Information Disclosure Statements
Information disclosure statements are filings made with the Patent Office to disclose references that might be relevant to an invention described in a patent application. The Patent Office imposes a duty on everyone associated with a patent application to submit information that is material to the patentability of the idea in the patent application, and an information disclosure statement is normally the way to do that.
Timing
The Patent Office restricts your ability to file an information disclosure statement depending on when you file it. As prosecution of the application continues, the Office places more burdens on the patent applicant when submitting an IDS.
MPEP Section 609 details the specific requirements for submissions of information disclosure statements, but it is dense. This page outlines how the prosecution timeline triggers different requirements for submitting the information disclosure statement.
Timing and Variable Requirements
Expand each of the below toggles to see what must be filed with IDS submissions during different periods of prosecution.
If your patent application is in one of these periods:
- Within 3 months of the filing date of a national application (other than a CPA);
- Within 3 months or the date of entry of the national stage in an international application;
- Before the mailing of a first office action;
- Before the mailing of a first office action after an RCE; or
- Within 3 months of the date of publication of the international registration in a Hague / international design application;
then you can file the IDS without any restrictions.
If your patent application is currently in one of these periods:
- Before the mailing date of a final office action;
- Before the mailing date of a notice of allowance; or
- Before the mailing date of an action that otherwise closes prosecution in the application;
then you can file the information disclosure statement by either paying a fee or making a specific statement (see below for language).
If your patent application is currently in this period:
- On the same day as, or before you file, the payment of the issue fee;
then you can file the information disclosure statement by both paying a fee and making a specific statement (see below for language).
If you have already paid the issue fee but the patent has not yet granted, you may be able to still file an information disclosure statement through two routes:
- RCE – You might be able to file a request for continued examination (RCE) to submit the information disclosure statement and get the reference(s) into the file history. An RCE re-opens prosecution, so the Examiner will have more time to review the references and may issue a new rejection. An RCE incurs a filing fee and can introduce delay into an application, so in some cases it may not be a preferred option.
- QPIDS – You may also be able to file a Quick Path Information Disclosure Statement. A QPIDS is intended to avoid re-opening prosecution of the application by filing a “conditional” RCE along with the IDS and a number of fees and statements. Anyone considering filing a QPIDS should carefully review the requirements and possibly talk with a patent attorney.
Statement Accompanying an IDS
In the middle two periods of prosecution, you may have to make a statement when you submit the IDS. That statement comes in one of two forms. It says either:
- 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.
