For inventors, applicants, or patent agents, the process of submitting an Information Disclosure Statement (IDS) document is common in US patent applications.

However, in our work, we have found that there are still many people who are not very familiar with the IDS process. So what exactly is IDS? Which files need to be submitted to IDS? What are the time limits and associated costs for proposing IDS? Who is the subject of IDS?

Today's article will bring you the relevant content about US patent IDS from the above aspects. I hope to help everyone cope with IDS obligations scientifically and effectively.

1、 What is IDS

IDS stands for Information Disclosure Statement. Translated into Chinese as an information disclosure statement.

IDS US patent application refers to the process of submitting relevant information to the US Patent Office during the application for a US patent, including prior art and related patent literature related to the applied invention.

Information disclosure is an important and unique system in US patent law, which requires specific obligors to submit their knowledge of information closely related to the patent application in the form of IDS to the US Patent and Trademark Office (USPTO) for consideration by examiners during the examination of the application.

In terms of consequences, information disclosure will not only affect patent examination, but also impact patent litigation and transactions.

Simply put, individuals related to the patent application have an obligation to disclose any known patent related information to the USPTO. From a legal perspective, all parties involved in a patent application have a disclosure obligation, such as inventors, lawyers or agents, any other personnel who are substantially involved in the preparation of the patent application, and so on. These obligated persons who submit relevant information to the Patent Office in the form of IDS through lawyers or agents are deemed to have fulfilled the obligation of information disclosure. If these people fail to faithfully fulfill this obligation, there may be many subsequent problems and serious consequences.

2、 When submitting IDS

What documents were disclosed?

01IPR、 The inventor, agent, assignee, or any person who is obligated to transfer the relevant existing technology known or retrieved by the applicant (including the new application specification of the patent application/prior application, the disclosure document, and the retrieved relevant existing technology)

02‘Comparative documents and notices retrieved by the same family patent application examiner (including ISR, examination opinions, authorization notices, priority examination requests, official search reports, patent evaluation reports, invalidity/litigation, objections, comparative documents referenced in third-party opinions, and comparative documents included in the search report page)

3、 IDS that needs to be submitted

The documents mainly include:

1. PTO/SB/08 form:It is necessary to list all relevant patent information known (including US patents and non US patents), as well as information on relevant non patent literature.

2. Declaration:The applicant is required to provide relevant information to USPTO, such as whether the disclosure document has been known to the applicant for more than 3 months.

3. Non US patent documents and all non patent literature:It is necessary to upload both the complete patent documents and all non patent literature, as well as their related English translations or English explanations regarding their relevance.

For English translations or explanations, the Patent Office does not have specific regulations. Applicants may provide English translations of their abstracts or related paragraphs, full English translations, English equivalent applications (if any), or English abstracts of self-made documents based on the relevance of these cited documents to the present application.

4、 Submit IDS

Time frame and

Costs involved

Submitting IDS is mainly divided into five stages:

first phase——Usually refers to within 3 months from the date of submission of this application or before the first issuance of OA. There is no official fee for submitting IDS at this stage; If the applicant is sensitive to fees, it is recommended not to submit a new application. Within 3 months from the submission date, the deadline will be collected and then submitted uniformly; When any official documents are received in the future, they should be collected and submitted uniformly within 3 months from the date of submission. It is not recommended to delay the submission by testing the publication date of the review opinions, as there are too many uncertain factors.

phase 2——After the issuance of Non Final OA and before Final OA/NOA: Disclosure of literature within 3 months from the date of publication will incur no official fees; Within 3 months of the publication date, 260 official fees were incurred for the disclosure of literature. Within 3 months of receiving official documents, gather all other members of the same clan for unified submission.

Third Stage——After the issuance of Final OA/NOA: Within 3 months from the date of publication, the disclosure document will incur an official fee of $260; If the disclosure of literature exceeds the departure date by 3 months, RCE (official fee of $1360) needs to be submitted. Within 3 months of receiving official documents, gather all other members of the same clan for unified submission. We will also evaluate the progress of cases related to the same ethnic group, to see if they need to be submitted as soon as possible or postponed for a period of time. This is mainly done when issuing the NOA to assess the same ethnic group.

Phase Four——The patent application is in the stage where the authorization fee has been paid but has not yet reached the authorization date. Using the "Quick Path Information Disclosure Statement (QPIDS)", the fees involved are a Petition fee of $140, an IDS fee of $260, and an RCE fee of $1360. This RCE is conditional, and if there is no need for re examination, the RCE fee will be refunded. Evaluate the progress of the same clan case and decide whether to submit it as soon as possible, but not later than the authorized date.

Stage Five——After the patent authorization date. Generally speaking, IDS obligations end after patent authorization and issuance. However, when key IDS materials that should have been submitted during the patent application process are not provided, there are still solutions to deal with them to avoid risks in litigation. In this case, it may be considered to obtain the opportunity to submit IDS through the supplementary examination procedure after obtaining the certificate, but the cost is relatively expensive. Suggest delivering it as soon as possible.

According to Rule 37C FR1.56 of the US Patent Law, the submitting entity of IDS can be every person associated with the filing and examination procedures of the patent application, including:

(1) Each inventor in the patent application;

(2) Every patent lawyer or agent who prepares or processes patent applications;

(3) All individuals who are substantially involved in the preparation or examination of patent applications and are associated with inventors, applicants, assignees, or anyone obligated to acquire patent applications.

In addition, individuals who disclose information to inventors, patent lawyers, or agents also have an obligation to submit IDS.