What is an Information Disclosure Statement (IDS)?

An Information Disclosure Statement (IDS) is a written submission through which a patent applicant brings prior art and other information to the attention of the USPTO for consideration during examination. Filing an IDS is the primary, structured mechanism for satisfying the duty of candor that applies to everyone involved in a U.S. patent prosecution.

The duty of candor

Under 37 CFR 1.56, each person who is substantively involved in preparing or prosecuting a patent application must disclose to the Office all information known to that individual to be material to patentability. The duty falls on named inventors, attorneys or agents handling the prosecution, and any other person who is substantively involved in preparation or prosecution and who is associated with the inventor, the applicant, an assignee, or anyone to whom there is an obligation to assign the application.

What counts as material

Information is material to patentability when it is not cumulative to information already of record, and it either (1) establishes a prima facie case of unpatentability of a claim, or (2) refutes or contradicts a position the applicant takes in arguing for patentability.

In practice this captures relevant prior art references, office actions from foreign counterpart applications, related co-pending applications by the same inventive entity, and technical literature describing the claimed technology. When a reference is on the borderline, the safer choice is always to include it.

The duty does not end at filing. It continues for each pending claim until that claim is cancelled, withdrawn, or the application is abandoned. Prior art cited in a foreign counterpart office action received mid-prosecution, for example, must be evaluated promptly for disclosure in any pending U.S. applications directed to the same invention.

What an IDS must contain

Under 37 CFR 1.98, an IDS must include a list of all patents, publications, applications, and other information submitted for the Office's consideration, with specific identification requirements by document type: U.S. patents by inventor, patent number, and issue date; U.S. patent applications by inventor, application number, and filing date; foreign patents by issuing country or office, document number, and publication date; and non-patent literature by publisher, author (if any), title, relevant pages, date, and place of publication.

Legible copies of foreign patents, relevant portions of non-patent literature, and other listed materials must be included; where two documents are substantively cumulative, one copy covers both. Each page of the list must carry the application number, a blank column for the examiner's initials, and a heading identifying the submission as an information disclosure statement.

When to file: the three timing windows

Timing determines what must accompany an IDS. Under 37 CFR 1.97, there are three windows with escalating requirements and a hard cutoff after which the USPTO will not consider the submission.

Early filing (Period 1)

An IDS filed before the mailing of a first office action on the merits is considered without any additional requirement beyond proper formatting under 37 CFR 1.98. This is the lowest-overhead option and the window to target when information is in hand at or shortly after filing.

Mid-prosecution filing (Period 2)

After the early period closes, an IDS may still be considered if it is filed before a final action, notice of allowance, or other prosecution-closing action and is accompanied by either a 37 CFR 1.97(e) certification statement or payment of the applicable fee. At this stage the certification statement and the fee are alternatives: one or the other suffices.

Late filing (Period 3)

After a final action or notice of allowance, an IDS filed on or before payment of the issue fee requires both the 37 CFR 1.97(e) certification statement and payment of the applicable fee. At this stage they are cumulative requirements, not alternatives.

After issue fee payment (Period 4)

An IDS filed after the issue fee has been paid will not be considered by the USPTO. An applicant who discovers material prior art at this point may petition to withdraw the application from issue and file a Request for Continued Examination or a continuing application so the art can be placed before an examiner.

The 37 CFR 1.97(e) certification statement

The certification required in Periods 2 and 3 must state either that each item was first cited in a communication from a foreign patent office in a counterpart application not more than three months before the IDS was filed, or that no item was cited in such a communication and that, to the knowledge of the person signing the certification after making reasonable inquiry, no item was known to any individual with a duty of disclosure more than three months before filing. It is a factual declaration, not a formality, and must have a good-faith basis.

Filing an IDS is not an admission

Filing an IDS shall not be construed to be an admission that the cited information is, or is considered to be, material to patentability. Practitioners should include borderline references rather than omit them. Over-disclosure is virtually costless; under-disclosure can eliminate patent protection entirely.

Consequences of non-disclosure

Non-compliance operates at two levels.

At the application level, 37 CFR 1.56 provides that no patent will be granted on an application in connection with which fraud on the Office was practiced or attempted, or where the duty of disclosure was violated through bad faith or intentional misconduct.

At the enforcement level, a court finding of inequitable conduct renders the entire patent unenforceable, applying to all claims regardless of which claims were directly connected to the withheld information. This all-or-nothing consequence is one of the most severe sanctions in U.S. patent law.

Practical notes for practitioners