MPEP § 2003 — Disclosure __ When Made (Annotated Rules)
§2003 Disclosure __ When Made
This page consolidates and annotates all enforceable requirements under MPEP § 2003, including statutory authority, regulatory rules, examiner guidance, and practice notes. It is provided as guidance, with links to the ground truth sources. This is information only, it is not legal advice.
Disclosure __ When Made
This section addresses Disclosure __ When Made. Primary authority: 37 CFR 1.98, 37 CFR 1.97, and 37 CFR 1.113. Contains: 4 requirements, 1 guidance statement, and 2 other statements.
Key Rules
Processing Fees
(c) An information disclosure statement shall be considered by the Office if filed after the, period specified in paragraph (b) of this section, provided that the information disclosure statement is filed before the mailing date of any of a final action under § 1.113, a notice of allowance under § 1.311, or an action that otherwise closes prosecution in the application, and it is accompanied by one of:
- (1) The statement specified in paragraph (e) of this section; or
- (2) The fee set forth in § 1.17(p).
(c) An information disclosure statement shall be considered by the Office if filed after the, period specified in paragraph (b) of this section, provided that the information disclosure statement is filed before the mailing date of any of a final action under § 1.113, a notice of allowance under § 1.311, or an action that otherwise closes prosecution in the application, and it is accompanied by one of:
…
(2) The fee set forth in § 1.17(p).
(d) An information disclosure statement shall be considered by the Office if filed by the applicant after the period specified in paragraph (c) of this section, provided that the information disclosure statement is filed on or before payment of the issue fee and is accompanied by:
…
(2) The fee set forth in § 1.17(p).
Fee Requirements
The provisions of 37 CFR 1.97 specify when an information disclosure statement will be considered as a matter of right and when a certification must be made and/or fee submitted in order to have the information disclosure statement considered. In any circumstance, information should be submitted promptly.
The provisions of 37 CFR 1.97 specify when an information disclosure statement will be considered as a matter of right and when a certification must be made and/or fee submitted in order to have the information disclosure statement considered. In any circumstance, information should be submitted promptly.
Reissue Patent Practice
(a) In order for an applicant for a patent or for a reissue of a patent to have an information disclosure statement in compliance with § 1.98 considered by the Office during the pendency of the application, the information disclosure statement must satisfy one of paragraphs (b), (c), or (d) of this section.
Applicant Requirements
(b) An information disclosure statement shall be considered by the Office if filed by the applicant within any one of the following time periods:
- (1) Within three months of the filing date of a national application other than a continued prosecution application under § 1.53(d);
- (2) Within three months of the date of entry of the national stage as set forth in § 1.491 in an international application;
- (3) Before the mailing of a first Office action on the merits;
- (4) Before the mailing of a first Office action after the filing of a request for continued examination under § 1.114; or
- (5) Within three months of the date of publication of the international registration under Hague Agreement Article 10(3) in an international design application.
Issue Fees
(d) An information disclosure statement shall be considered by the Office if filed by the applicant after the period specified in paragraph (c) of this section, provided that the information disclosure statement is filed on or before payment of the issue fee and is accompanied by:
- (1) The statement specified in paragraph (e) of this section; and
- (2) The fee set forth in § 1.17(p).
IDS Fees and Certification
(e) A statement under this section must state either:
- (1) That each item of information contained in the information disclosure statement was first cited in any communication from a foreign patent office in a counterpart foreign application not more than three months prior to the filing of the information disclosure statement; or
- (2) That no item of information contained in the information disclosure statement was cited in a communication from a foreign patent office in a counterpart foreign application, and, to the knowledge of the person signing the certification after making reasonable inquiry, no item of information contained in the information disclosure statement was known to any individual designated in § 1.56(c) more than three months prior to the filing of the information disclosure statement.
IDS Before First Action (1.97(b))
(e) A statement under this section must state either:
…
(2) That no item of information contained in the information disclosure statement was cited in a communication from a foreign patent office in a counterpart foreign application, and, to the knowledge of the person signing the certification after making reasonable inquiry, no item of information contained in the information disclosure statement was known to any individual designated in § 1.56(c) more than three months prior to the filing of the information disclosure statement.
First Action on Merits (FAOM)
An applicant, attorney, or agent who is aware of material prior art or other information and its significance should submit the information as early as possible in prosecution, e.g., before the first Office action, and not wait until after allowance. However, potentially material information discovered late in the prosecution should be promptly submitted. That the issue fee has been paid is no reason or excuse for failing to submit information. See MPEP § 609.04(b). Additionally, applicant should be mindful of the incentives of prompt filing of information as set forth in 37 CFR 1.704(d)(1).
Rule 312 Amendment Timing
An applicant, attorney, or agent who is aware of material prior art or other information and its significance should submit the information as early as possible in prosecution, e.g., before the first Office action, and not wait until after allowance. However, potentially material information discovered late in the prosecution should be promptly submitted. That the issue fee has been paid is no reason or excuse for failing to submit information. See MPEP § 609.04(b). Additionally, applicant should be mindful of the incentives of prompt filing of information as set forth in 37 CFR 1.704(d)(1).
Reissue and Reexamination
Likewise, material prior art or other information and its significance should be submitted as soon as possible for reissue applications, and reexamination proceedings.
Citations
| Primary topic | Citation |
|---|---|
| Processing Fees | 37 CFR § 1.113 |
| Applicant Requirements | 37 CFR § 1.114 |
| Issue Fees Processing Fees | 37 CFR § 1.17(p) |
| Processing Fees | 37 CFR § 1.311 |
| Applicant Requirements | 37 CFR § 1.491 |
| Applicant Requirements | 37 CFR § 1.53(d) |
| IDS Before First Action (1.97(b)) IDS Fees and Certification | 37 CFR § 1.56(c) |
| First Action on Merits (FAOM) Rule 312 Amendment Timing | 37 CFR § 1.704(d)(1) |
| Fee Requirements | 37 CFR § 1.97 |
| Reissue Patent Practice | 37 CFR § 1.98 |
| First Action on Merits (FAOM) Rule 312 Amendment Timing | MPEP § 609.04(b) |
Source Text from USPTO’s MPEP
This is an exact copy of the MPEP from the USPTO. It is here for your reference to see the section in context.
Official MPEP § 2003 — Disclosure __ When Made
Source: USPTO2003 Disclosure __ When Made [R-07.2022]
37 CFR 1.97 Filing of information disclosure statement.
- (a) In order for an applicant for a patent or for a reissue of a patent to have an information disclosure statement in compliance with § 1.98 considered by the Office during the pendency of the application, the information disclosure statement must satisfy one of paragraphs (b), (c), or (d) of this section.
- (b) An information disclosure statement shall be
considered by the Office if filed by the applicant within any one of the following
time periods:
- (1) Within three months of the filing date of a national application other than a continued prosecution application under § 1.53(d);
- (2) Within three months of the date of entry of the national stage as set forth in § 1.491 in an international application;
- (3) Before the mailing of a first Office action on the merits;
- (4) Before the mailing of a first Office action after the filing of a request for continued examination under § 1.114; or
- (5) Within three months of the date of publication of the international registration under Hague Agreement Article 10(3) in an international design application.
- (c) An information disclosure statement shall be
considered by the Office if filed after the, period specified in paragraph (b) of
this section, provided that the information disclosure statement is filed before
the mailing date of any of a final action under § 1.113, a notice of allowance
under § 1.311, or an action that otherwise closes prosecution in the application,
and it is accompanied by one of:
- (1) The statement specified in paragraph (e) of this section; or
- (2) The fee set forth in § 1.17(p).
- (d) An information disclosure statement shall be
considered by the Office if filed by the applicant after the period specified in
paragraph (c) of this section, provided that the information disclosure statement
is filed on or before payment of the issue fee and is accompanied by:
- (1) The statement specified in paragraph (e) of this section; and
- (2) The fee set forth in § 1.17(p).
- (e) A statement under this section must state either:
- (1) That each item of information contained in the information disclosure statement was first cited in any communication from a foreign patent office in a counterpart foreign application not more than three months prior to the filing of the information disclosure statement; or
- (2) That no item of information contained in the information disclosure statement was cited in a communication from a foreign patent office in a counterpart foreign application, and, to the knowledge of the person signing the certification after making reasonable inquiry, no item of information contained in the information disclosure statement was known to any individual designated in § 1.56(c) more than three months prior to the filing of the information disclosure statement.
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The provisions of 37 CFR 1.97 specify when an information disclosure statement will be considered as a matter of right and when a certification must be made and/or fee submitted in order to have the information disclosure statement considered. In any circumstance, information should be submitted promptly.
An applicant, attorney, or agent who is aware of material prior art or other information and its significance should submit the information as early as possible in prosecution, e.g., before the first Office action, and not wait until after allowance. However, potentially material information discovered late in the prosecution should be promptly submitted. That the issue fee has been paid is no reason or excuse for failing to submit information. See MPEP § 609.04(b). Additionally, applicant should be mindful of the incentives of prompt filing of information as set forth in 37 CFR 1.704(d)(1).
Likewise, material prior art or other information and its significance should be submitted as soon as possible for reissue applications, and reexamination proceedings.
The presumption of validity is generally strong when prior art was before and considered by the Office and weak when it was not. See Bolkcom v. Carborundum Co., 523 F.2d 492, 498, 186 USPQ 466, 471 (6th Cir. 1975).