Demystifying the Information Disclosure Statement (IDS)

Demystifying the Information Disclosure Statement (IDS)

An Information Disclosure Statement, often abbreviated as IDS, is a document submitted to the USPTO during the patent application process. Its primary purpose is to disclose any relevant prior art or information known to the inventor or their attorney that may be pertinent to the patentability of the invention. This could include prior patents, scientific articles, product descriptions, or any other documentation related to the technology or invention in question.

Why is it important to file an IDS?

The IDS serves several crucial functions within the patent application process:

1. Duty of Disclosure: In the U.S., patent law imposes a duty of disclosure on inventors and applicants. This duty requires them to disclose to the Patent Office all information known to be material to the patentability of the invention. Filing an IDS fulfils this duty by providing the Patent Office with relevant information.
2. Avoidance of Inequitable Conduct: Failure to disclose material information during patent prosecution can lead to allegations of inequitable conduct, which can invalidate a patent or render it unenforceable. Filing an IDS helps applicants avoid such allegations by ensuring that all relevant prior art and information are disclosed to the Patent Office.
3. Expedited Examination: Providing the Patent Office with all relevant prior art and information through an IDS can help expedite the examination process. By disclosing relevant prior art upfront, the examiner can more efficiently assess the patentability of the invention, potentially leading to a quicker issuance of the patent.
4. Enhanced Patent Quality: Filing an IDS contributes to the overall quality of the patent system by ensuring that patents are examined in view of the most relevant prior art and information. This helps prevent the issuance of patents that may be invalid in light of undisclosed prior art, thereby promoting a stronger and more reliable patent system.

To ensure that IDS is officially considered it must be filed in a timely manner. While an IDS can be submitted at various stages of prosecution, it’s advisable to do so as early as possible for examiners’ consideration and to prevent extra expenses. 37 C.F.R. § 1.97 outlines the general guidelines for submitting IDS at various prosecution stages. 

Stage One: An applicant may file an IDS within 3 months of the U.S. filing date, or before the mailing of a first office action or after the filing of a Request for Continued Examination (RCE).  At this stage, there is no need to submit a statement for pay an IDS fee for submitting.

Stage two: Applicant may file an IDS before the mailing of a final Office action, a Notice of Allowance, or an Ex parte Quayle action.  If an IDS is filed at this stage of prosecution, it must be accompanied by either a statement, or the government fee.

Stage Three: If the Second Stage has expired, an applicant may file an IDS before or with payment of the issue fee.  However, if an IDS is filed at this stage of prosecution, the IDS must be accompanied by both a statement and the government fee.  If a statement cannot be made, then an applicant must file an RCE to have the IDS considered by the Examiner.

An IDS is submitted to the USPTO using Form PTO/SB/08a. Along with the IDS, a transmittal letter may also be included. This letter serves to briefly clarify to the USPTO the reasons why the IDS submission adheres to current USPTO guidelines and regulations.

Things to consider while preparing and filing an IDS.

• Ensure to submit all copies of foreign references and non-patent literature with the IDS
• Ensure all references are cited with the IDS form, especially the ones which are mentioned in the body of the application. The examiner will consider only the references cited in the IDS.
• Always file a corrected IDS if the original was not considered by the examiner.
• Any new discovery during the prosecution done by the applicant, foreign associates or examiner must be filed as a supplemental IDS.
• Thoroughly examine to determine if all the references are cited at the time of final office action.

Filing an IDS is important from a technical standpoint because it fulfils the duty of disclosure, helps avoid inequitable conduct allegations, expedites examination, and enhances patent quality by ensuring that all relevant prior art and information are disclosed to the Patent Office.