Information Disclosure Statement: Everything you Need to Know
An information disclosure statement (IDS) describes all prior art or related technology claimed in a patent application.5 min read
2. Information Disclosure Statement: What Is It?
3. Why Are Information Disclosure Statements Important?
4. Reasons to Consider Filing an Information Disclosure Statement
5. Reasons to Consider Not Filing an Information Disclosure Statement
6. Common Mistakes
8. Frequently Asked Questions
9. Steps to File an Information Disclosure Statement
Updated November 2, 2020:
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.
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.
- 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.
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.
Frequently Asked Questions
- Do Applicants Have to Search for Prior Art Before Completing an IDS?
No, an IDS should only include known prior art. It doesn't require applicants to do additional research.
- How Many IDS Forms Can You File?
Most applicants file at least one IDS, and many file more than one.
- Can You File an IDS After Receiving a Notice of Allowance?
Yes. If you discover prior art after getting a Notice of Allowance or a Final Office Action, send a supplemental IDS and pay the fee. If more than three months have passed since you received these notices, file an RCE and a supplemental IDS.
- Can You File an IDS After Paying the Patent Issue Fee?
Yes, you should complete a QPIDS online. This electronic petition withdraws the patent form issue and files an RCE. If there is no need to reopen prosecution, you'll receive a refund for the RCE fee.
- Does a Supplemental IDS Affect the Patent Term?
Filing a supplemental IDS more than 30 days after discovery may reduce the patent term adjustment. You may need to include an additional explanation to prevent any term adjustment.
- How Much Does It Cost to File an IDS?
There is no fee to file an IDS within three months of the original filing date, before the first Office Action, or if you discover the prior art in a foreign search report. In other cases, the fee may be up to $180.
- Can You Streamline the IDS Filing Process?
If you file a group of patent applications that include related materials, it may be in your best interest to file consolidated IDS forms at periodic intervals. Doing this allows you to cross-cite all information without spending more than necessary to file IDS forms.
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.
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