Key Takeaways

  • An Information Disclosure Statement (IDS) is a crucial document required by the USPTO that ensures all relevant prior art is disclosed during a patent application.
  • Failing to properly file or update an IDS can render a patent unenforceable for inequitable conduct or misrepresentation.
  • IDS obligations extend to inventors, patent attorneys, and anyone substantively involved in patent prosecution.
  • Timeliness is critical: Late submissions often require certifications or fees and can complicate prosecution.
  • Knowing how and when to file, what constitutes material information, and the legal risks of omission helps applicants maintain enforceable rights.
  • Courts have emphasized that improper or careless IDS submissions can have serious consequences, as demonstrated in iRhythm Technologies, Inc. v. Welch Allyn, Inc.
  • Applicants should maintain a consistent, well-documented disclosure process to meet their duty of candor and avoid future litigation risks.

What Is an Information Disclosure Statement?

An information disclosure statement (IDS) describes all prior art or related technology claimed in a patent application. It places the burden of disclosure on the inventor or applicant. If an application doesn't have this statement or fails to include key prior art, any issued patent may become invalid or considered fraudulent.

Information Disclosure Statement: What Is It?

Patent applicants have a responsibility to complete an IDS, which references:

  • all prior art, or patents
  • patent applications, and
  • publications related to an invention.

Because inventors are more likely to be aware of existing patents or related technology than a patent examiner would be, the United States Patent and Trademark Office (USPTO) requires applicants to disclose all prior art in an IDS.

Why Are Information Disclosure Statements Important?

The IDS is part of an applicant's duty to work in good faith and with complete candor when applying for a patent. Applicants should include any information that may affect an invention's patentability. In addition, patent attorneys or agents who help with the application must disclose prior art.

Failing to file an IDS will never benefit you. If your patent is issued, it may be unenforceable. In addition, the USPTO may believe you intended to deceive the office.

Duty of Disclosure Under 37 C.F.R. § 1.56

Under 37 C.F.R. § 1.56, anyone involved in preparing or prosecuting a patent application—including inventors, attorneys, and agents—has a duty of candor and good faith in dealing with the USPTO. This “duty of disclosure” requires submitting all information known to be material to patentability, even if that information could weaken the applicant’s case for patent approval.

Importantly, the regulation does not impose a duty to search for prior art; instead, it compels disclosure of any known references, such as patents, publications, or sales, that may affect patentability. Information is considered material if a reasonable examiner would view it as relevant in deciding whether to allow the claims.

Failure to meet this duty could lead to findings of inequitable conduct, rendering a patent unenforceable even if it was properly issued.

Reasons to Consider Filing an Information Disclosure Statement

You should file an IDS if the prior art meets any of these criteria:

  • It's used, known, or sold in the U.S.;
  • It's patented in another country;
  • It's featured in a publication in the U.S. or anywhere in the world;
  • It's described in a USPTO or foreign patent application; or
  • It's described in an issued USPTO patent.

Reasons to Consider Not Filing an Information Disclosure Statement

An IDS is only necessary when you or any co-applicants are aware of prior art. You don't have to do additional research to discover prior art if you don't already know about it.

Common Mistakes

  • Not understanding what to disclose in an IDS. Include anything that questions the novelty or the obviousness of the invention. If you have applied for similar or related patents before, include that prior art in the IDS. Always be candid and include more than you think is necessary.
  • Neglecting to reference foreign patents in an IDS. The IDS should reference both patents issued by the USPTO and those issued by international patent offices.
  • Failing to update an IDS after discovering previously unknown prior art. Applicants must continue to be open throughout the patent application process. If you discover prior art through a foreign patent application or an International Patent Search, issue a supplemental IDS with this information. Always translate any foreign prior art into English.
  • Not staying up-to-date on IDS requirements. The USPTO constantly updates its processes and fees. The office has proposed eliminating the Quick Path Information Disclosure Statement (QPIDS) process and the need to file a Request for Continued Examination (RCE). Check the USPTO site to know if you need to certify your IDS and pay a fee or if you can submit it throughout the prosecution process. Though staying up to date on changes can be challenging, legal experts believe any attempts to streamline IDS forms will have a positive effect. This will likely reduce delays and quicken the patent application process.

Legal Consequences of Inadequate Disclosure

Courts have repeatedly ruled that failing to properly file or update an IDS can result in serious consequences. In iRhythm Technologies, Inc. v. Welch Allyn, Inc., the court highlighted how over-disclosure or improper identification of prior art can “come back to haunt” patent owners. Submitting irrelevant or incomplete information can raise questions about whether the applicant acted in good faith.

An inadequate or misleading IDS may support a claim of inequitable conduct, a defense used by alleged infringers to challenge the enforceability of a patent. Once inequitable conduct is proven, it affects the entire patent family, not just a single claim. This can destroy the enforceability of all related patents, regardless of their individual merits.

To mitigate these risks, applicants should:

  • Ensure that every cited reference is accurately described and relevant.
  • Keep clear records of when and how each document was discovered.
  • Avoid “burying” key references within long lists of irrelevant prior art.
  • Update the IDS promptly when new material information becomes known.

Deadline

An applicant must file an IDS within one of these periods:

  • With the original patent application;
  • Within three months of the original USPTO filing date;
  • Within three months of beginning the national stage of an international patent application (PCT);
  • Before the mailing date of the first USPTO Office Action on the application's merits;
  • Before the mailing date of the first USPTO Office Action after filing an RCE;
  • Within three months of the publication date of an international design patent application; or
  • Before the mailing date of a final Office Action, a Notice of Allowance, or an Office Action that closes prosecution, also known as an ex part Quayle action, as long as it includes the right fee. This IDS must also include a statement describing that the information was cited in a foreign patent application less than three months prior, or that the applicants didn't know any of the information prior to three months earlier.

If you don't meet the deadline, you don't receive an extension. However, if you make a sincere attempt to comply but accidentally leave out some of the content, you may get additional time to meet the IDS requirements.

Late Submissions and Certifications

If an IDS is filed after the standard timeframes, applicants may still submit it under 37 C.F.R. § 1.97(c) or (d) by including proper certifications and paying the required fees. Specifically:

  • Under §1.97(c), an IDS can be submitted after a first Office Action but before a final Office Action or Notice of Allowance, provided it includes a certification that the information was newly discovered within the past three months.
  • Under §1.97(d), if the information was known earlier, the applicant must submit both the certification and the appropriate fee.

The USPTO provides Form PTO/SB/08A and 08B for listing references, which should be used consistently across all filings. Submitting an IDS without the required certification or fee can result in it being disregarded, meaning the examiner will not consider the cited information.

Maintaining prompt disclosure avoids additional costs and prevents delays or questions of good faith during prosecution.

Steps to File an Information Disclosure Statement

  • Complete the IDS header. Include your original application number and filing date. List the first-named inventor, the art unit location, and the attorney docket number. Include the patent examiner's name if known.
  • Fill in relevant USPTO patent references. List the patent number you're citing, along with the kind code from the World Intellectual Property Organization (WIPO) standard code list. Include the issue date, name of patentee, and relevant page numbers from the cited patent.
  • Fill in relevant USPTO patent application publication references. List the publication number and the kind code from the publication cited. Include the publication date, name of patentee, and relevant pages.
  • Fill in relevant foreign patent references. List the foreign document number you're citing, along with WIPO country and kind codes. Include the publication date, name of patentee, and relevant pages. Check the "T" box if you've included a translation.
  • Fill in relevant, non-patent literature documents. List the name of the author, article title, publication title, and publisher information. Check the "T" box if you've included a translation.
  • Complete the certification statement. Certify that the information was cited in a foreign publication less than three months ago or that you weren't aware of the information cited more than three months prior.
  • Submit the IDS. After signing and printing your name, date the IDS and send the form.

Best Practices for IDS Management

To stay compliant and efficient, applicants should develop a structured IDS management process:

  1. Centralize Prior Art Tracking: Use a shared system or database for logging all prior art references identified across related U.S. and international applications.
  2. Coordinate with Foreign Counsel: Ensure all foreign office actions and references are promptly shared with U.S. counsel for IDS filing.
  3. Regularly Review Case Portfolios: Periodically review all pending applications to determine whether updates are required.
  4. Translate and Summarize Foreign References: Always include English translations or summaries for non-English prior art to ensure clarity.
  5. Train Inventors and Teams: Educate inventors on the importance of promptly reporting relevant publications or disclosures.

Consistent adherence to these best practices not only satisfies the duty of disclosure but also minimizes the risk of unenforceability challenges in future litigation.

Frequently Asked Questions

  1. What happens if I forget to file an IDS?
    If you fail to submit an IDS on time, your patent could be rendered unenforceable if it’s later shown that the omission was intentional or material to patentability.
  2. Can I submit an IDS after a Notice of Allowance?
    Yes, but it must include the proper certification under 37 C.F.R. § 1.97(e) and a processing fee. Failure to comply means the examiner will not consider the submission.
  3. Do I need to perform a prior art search before filing an IDS?
    No. There’s no legal obligation to perform a search, but you must disclose any material prior art that you already know.
  4. What types of documents should be included in an IDS?
    You should include U.S. and foreign patents, published applications, and any relevant non-patent literature that might affect patentability.
  5. How can I avoid inequitable conduct claims related to an IDS?
    Ensure full, accurate, and timely disclosure; maintain documentation; and avoid submitting irrelevant references that obscure key prior art.

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