37 CFR § 1.97 — Filing of information disclosure (MPEP Coverage Index) – BlueIron IP

This page consolidates MPEP guidance interpreting 37 CFR § 1.97, including 316 rules from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only, it is not legal advice.

Summary

Information Disclosure Statements submitted after a notice of appeal are typically held in abeyance pending resolution of the appeal process.

What this section covers

Procedural handling of Information Disclosure Statements submitted after an appeal notice
Standard practice of suspending review of supplemental information during an ongoing appeal

Key obligations

Follow specific timing and procedural guidelines when submitting information after filing an appeal
Ensure additional information is properly documented and submitted according to USPTO protocols

Practice notes

Information Disclosure Statements submitted post-appeal will typically be held in suspension until appeal resolution
Carefully time and document supplemental information to ensure proper consideration during the patent application process

Information Disclosure Statement Within 30 Days RequiredMPEP 2732
Information Disclosure Statement Using PTO/SB/08MPEP 609Permitted
Copy of Translation Required If AvailableMPEP 609
Applicants Must Submit Material Information to OfficeMPEP 609
Applicants Must Submit Material to PatentabilityMPEP 609
Office to Consider Information for Examiner ReviewMPEP 609Permitted
Applicants Provided Certainty on Information ConsiderationMPEP 2001.04
Office May Order Reexamination If Document Raises New Question of PatentabilityMPEP 2001.04Permitted
Information Disclosure Statement Required During PendencyMPEP 609.04(b)
Disclosure Statements Held Pending Appeal DecisionMPEP 1206
Consideration of Post-Appeal IDS Based on MPEP §609 and CFR 1.97-1.98MPEP 1206
Requirement for Submitting Material Information to Patent OfficeMPEP 1418
Information Known to Be Material to Patentability Must be SubmittedMPEP 1418
Disclosure Requirement for Reissue ApplicantsMPEP 1418Required
Reissue Applicants Must File Information Disclosure Statements at FilingMPEP 1418
Reminder of Duties for Reissue ApplicationMPEP 1418Permitted
References Cited in Original Patent Must Be ReissuedMPEP 1455Recommended
Requirement for IDS in Reissue ApplicationMPEP 1455Recommended
Reissue Cannot Add New Prior ArtMPEP 1455Prohibited
Disclosure of Material Information Required for PatentabilityMPEP 2001
Disclosure of Closest Information to OfficeMPEP 2001
Duty to Disclose Material Information for PatentabilityMPEP 2001.04
Requirement for Disclosing Closest Information to OfficeMPEP 2001.04
Information Considered After Allowance Until Patent GrantMPEP 2001.04Permitted
Request for Continued Examination Allowed After AllowanceMPEP 2001.04Permitted
RCE Not Allowed for Pre-1995 Utility/Plant and Design AppsMPEP 2001.04Permitted
Requirement for Disclosure of Material InformationMPEP 2001.04Permitted
Requirement for Information Disclosure Statement ComplianceMPEP 2003Required
Information Disclosure Statement Filing RequirementsMPEP 2003Required
Information Disclosure Statement Before Final Action RequiredMPEP 2003Required
Fee for Information Disclosure StatementMPEP 2003
Information Disclosure Statement Must Be Filed Before Issue FeeMPEP 2003Required
Fee Requirement for Late Filing of Information Disclosure StatementMPEP 2003
Certification for Information Disclosure StatementMPEP 2003Required
Information Disclosure Statement Timing RequirementMPEP 2003
Fee Requirement for Information Disclosure StatementMPEP 2003Required
Information Disclosure Statement Must Be Filed PromptlyMPEP 2003Recommended
Material Prior Art Must Be Submitted Promptly for Reissue and ReexaminationMPEP 2003Recommended
IDS Listing Does Not Admit Prior ArtMPEP 2129
Listing of Reference in IDS Not Admitted as Prior ArtMPEP 2129Prohibited
New Nonstatutory Double Patenting Rejection After AmendmentMPEP 2146.02Permitted
New Nonstatutory Double Patenting Rejection Due to AmendmentMPEP 2146.02
Amendment After Appeal Is Considered But Counts As Applicant DelayMPEP 2732Permitted
Information Disclosure Statement Considered as DelayMPEP 2732Permitted
Post-Allowance Submissions Do Not Fail EffortsMPEP 2732
Request for Continued Examination Without Additional Submission AllowedMPEP 2732
Information Disclosure Statement Not Considered for ReductionMPEP 2732
Statement Requirement Does Not Substitute for Filing RequirementsMPEP 2732
Thirty-Day PTA Reduction Period Not ExtendableMPEP 2732
Requirement for Compliance with §1.98 Information Disclosure StatementMPEP 609Required
Timing for Filing Information Disclosure Statement RequiredMPEP 609Required
Late Filing of Information Disclosure Statement Allowed With FeeMPEP 609Required
Fee for Information Disclosure StatementMPEP 609
Information Disclosure Statement Before Issue Fee PaymentMPEP 609Required
Fee Required for Information Disclosure StatementMPEP 609
Certification for IDS Information Sources RequiredMPEP 609Required
Information Disclosure Statement Must Exclude Foreign Office Citations and Pre-Filing KnowledgeMPEP 609
No Extensions for Filing Information Disclosure StatementMPEP 609Permitted
Omission of Content Allows Additional Time for ComplianceMPEP 609Required
Disclosure Not Representing Search ConductedMPEP 609Prohibited
Disclosure Not Admitting MaterialityMPEP 609Prohibited
Non-Compliant Disclosures Not ConsideredMPEP 609
Information Disclosure Statement Must Include Specific ItemsMPEP 609Required
Requirement for Including Other Information CopyMPEP 609
Information Disclosure Statement Must Be Filed Using PTO/SB/08 FormMPEP 609Permitted
Examiner Will Consider Information Disclosure StatementMPEP 609
Individuals Must Submit Relevant InformationMPEP 609Permitted
Procedure for Submitting Information to OfficeMPEP 609
Requirement for Submitting Information Disclosures Before GrantMPEP 609
Requirement for Information Disclosure Statement ComplianceMPEP 609Required
eIDS Submission Meets Signature RequirementMPEP 609
Requirement for Information Disclosure StatementMPEP 609
Requirements Based on Filing Time for IDSMPEP 609
Examiner Processing of Information Disclosure StatementsMPEP 609
Requirement for Electronic IDS via USPTO SystemMPEP 609
Electronic IDS Submission ProcessMPEP 609
Examiner Must Consider Information After Minimum Requirements MetMPEP 609
Examiner Must Consider All IDS InformationMPEP 609Required
IDS Documents Must Be Considered Like Other Prior ArtMPEP 609
Examiner Initials Indicate Information Considered in IDSMPEP 609
Examiner Electronic Signature for IDS ConsiderationMPEP 609Permitted
Examiner Will Strike Through Non-Considered CitationsMPEP 609
Examiner Must Stamp Considered ReferencesMPEP 609
Requirement for Proper Information Disclosure StatementMPEP 609
Multiple Information Disclosures Per Application AllowedMPEP 609Permitted
Use of PTO/SB/08 Encouraged for Information Disclosure StatementsMPEP 609Required
Use PTO/SB/08 for Information Disclosure StatementsMPEP 609
PTO/SB/08 Required for Information Disclosure StatementsMPEP 609
Multiple Information Disclosures AllowedMPEP 609
Examiner Must Consider IDS ProperlyMPEP 609.01Recommended
Examiner Must Initial IDS CitationsMPEP 609.01
Information Disclosure Statement Not Considered If Non-CompliantMPEP 609.01
Reasons for IDS Not Being ConsideredMPEP 609.01
Examiner Must Sign IDS ListingMPEP 609.01
Examiner Must Sign and Date IDS Listing Before Mailing to ApplicantMPEP 609.01
Information Disclosure Statement Required for International ApplicationsMPEP 609.02
Resubmission of Sequence Listing Must Comply with Format and Timing RequirementsMPEP 609.02Recommended
Submit New Listing Compliant with Format RequirementsMPEP 609.02
PTO/SB/08 Form May Contain Examiner Initials from Another ApplicationMPEP 609.02Permitted
Initials May Be Misattributed In Sequence ListingsMPEP 609.02Permitted
Resubmit Information Not Considered In Parent ApplicationMPEP 609.02Required
Parent IDS Compliance Not Requiring ResubmissionMPEP 609.02
Timing Requirements for Information Disclosure StatementMPEP 609.04(b)Permitted
Requirement for Withdrawal Period After Information DisclosureMPEP 609.04(b)Permitted
IDS Information Cannot Be Used in New RejectionMPEP 609.04(b)
Information Disclosure Statement Requires Fee or DeclarationMPEP 609.04(b)
Withdrawn Final Action Not Considered for IDSMPEP 609.04(b)
Information Disclosure Statement Timing Requirement After Ex parte Quayle ActionMPEP 609.04(b)Required
Information Disclosure Statement Must Comply After AppealMPEP 609.04(b)Required
New Grounds of Rejection After Information DisclosureMPEP 609.04(b)
Requirement for Information Disclosure Statement After Examiner Final DeterminationMPEP 609.04(b)
Requirement for Advanced Stage Information DisclosureMPEP 609.04(b)
IDS Must Be Filed Within Three MonthsMPEP 609.04(b)
Certification for Information Disclosure Statement RequiredMPEP 609.04(b)Required
Information Disclosure Statement Must Exclude Foreign Office CitationsMPEP 609.04(b)
Requirement for IDS Statement on Foreign Cited InformationMPEP 609.04(b)Permitted
IDS Must Cite Foreign Office Communication Within Three MonthsMPEP 609.04(b)
Item of Information First Cited Outside U.S. Within Three Months Before IDS Not AllowedMPEP 609.04(b)
Item of Information Previously Cited More Than Three Months Before IDS Not Allowed in Statement Under 37 CFR 1.97(e)MPEP 609.04(b)
Statement Under 37 CFR 1.97(e) Does Not Replace 37 CFR 1.704(d)MPEP 609.04(b)
Requirement for Substantially Identical Foreign ApplicationsMPEP 609.04(b)
International PCT Application Is Not a Counterpart for U.S. FilingMPEP 609.04(b)Recommended
Family Patents from Foreign Communications RequiredMPEP 609.04(b)
United States Patent in Family of PatentsMPEP 609.04(b)Permitted
Information Disclosure of Foreign and US PatentsMPEP 609.04(b)
Examiner Must Consider English Language PatentMPEP 609.04(b)Recommended
Information Disclosure from Foreign Offices IncludedMPEP 609.04(b)
Communication Not First Cited Within Three Months Requires Additional StatementMPEP 609.04(b)Required
Requirement for IDS Item Disclosure Before Foreign CommunicationMPEP 609.04(b)Permitted
Inventor Named in IDS Cannot Make StatementMPEP 609.04(b)Prohibited
Language Must Convey Same Meaning as CFR 1.97(e)MPEP 609.04(b)Prohibited
Two Lists and Two Statements for Information DisclosureMPEP 609.04(b)Permitted
Information Disclosure Statement Can Include One List with Two StatementsMPEP 609.04(b)Permitted
Single Fee for Two Statements on Same DayMPEP 609.04(b)Required
English Version of Foreign Search Report OptionalMPEP 609.04(b)Permitted
Timing of Information Discovery RequirementMPEP 609.04(b)
Requirement for Prompt Evaluation of Information RelevanceMPEP 609.04(b)Permitted
Statement on Information and Belief Not SufficientMPEP 609.04(b)
Examiners Must Not Remind of Candor DutyMPEP 609.04(b)Recommended
Questions About Statement Adequacy Directed to Legal AdministrationMPEP 609.04(b)Recommended
Review of Information Disclosure Statements for ComplianceMPEP 609.05
Examiner Notifies Applicant of Compliance and Noncompliance with Information Disclosure Statement RulesMPEP 609.05
Noncompliant Pre-Grant Submissions Not ConsideredMPEP 609.05(a)
Information After Patent Grant Must Comply with 37 CFR 1.501MPEP 609.05(a)Required
Information Disclosure Statement Filing Requirements Not MetMPEP 609.05(a)
IDS Not Considered Due to NoncomplianceMPEP 609.05(a)Permitted
Correction of Noncomplying IDS AllowedMPEP 609.05(a)Permitted
Requirement for Proper IDS CitationsMPEP 609.05(a)Recommended
Complying Information Disclosure Statements RequirementMPEP 609.05(b)
Information Disclosure Statements Must Be Considered Like Other Prior Art DocumentsMPEP 609.05(b)
Examiner Consideration of IDS InformationMPEP 609.05(b)
IDS Citation Not Compliant with 37 CFR 1.97 and 1.98 Must Be Struck ThroughMPEP 609.05(b)Recommended
Compliant Information Disclosure Statement Items Must Be ConsideredMPEP 609.05(b)
Timely Evidence for Patentability Not Subject to Disclosure RulesMPEP 609.05(c)
Examiner Consideration of Document PortionsMPEP 609.05(c)Prohibited
eIDS References Must Be AccurateMPEP 609.07
U.S. Patent and Publication Numbers Must Be Accurate on eIDSMPEP 609.07Prohibited
Examiner Must Electronically Retrieve Cited DocumentsMPEP 609.07
Citing Correct Document Numbers Required for eIDS ReferencesMPEP 609.07
Information Within Scope of 37 CFR 1.105 Must Be ConsideredMPEP 704.14(b)
Requirement for Specifying Scope of InformationMPEP 704.14(b)Required
Initial Reply Does Not Need Fee/CertificationMPEP 704.14(d)
References Must Be Listed on Form PTO/SB/08MPEP 704.14(d)Recommended
Subsequent Replies Must Meet Fee and Certification RequirementsMPEP 704.14(d)Required
Art Beyond Requirement for Information Is Considered Under Art RulesMPEP 704.14(d)Required
Next Action Cannot Rely on New Art Unless AmendedMPEP 704.14(d)Prohibited
Distinguishing Practice for Reply Under 37 CFR 1.105 from MPEP §609.04(b) and §706.07(a)MPEP 704.14(d)
New Ground of Rejection Not Allowed in Final ActionMPEP 706.07(a)Prohibited
New Double Patenting Requirement After JRA ExceptionMPEP 706.07(a)Permitted
Final Action Without Claim AmendmentMPEP 706.07(a)Permitted
New Double Patenting Due to Applicant’s AmendmentMPEP 706.07(a)
New Ground of Rejection Not Based on Amendments or IDS Improper Final RejectionMPEP 706.07(a)Recommended
Improper Final Rejection with New Ground Not Based on Amendments or IDSMPEP 706.07(a)Recommended
Material Citations from PCT ISR Must Be CitedMPEP 707.05Permitted
Suspension Request Must Present Good and Sufficient ReasonsMPEP 709Permitted
No Suspension for Market Viability TestingMPEP 709
New Double Patenting Rejection After Amending for Prior ArtMPEP 717.02(a)Permitted
New Double Patenting Rejection Necessitated by AmendmentMPEP 717.02(a)
New Double Patenting Rejection After Amending Prior ArtMPEP 717.02(b)Permitted
New Double Patenting Rejection Necessitated by AmendmentMPEP 717.02(b)
Indication of Consideration for Prior Art Citations in IDSMPEP 719.05
Examiner Cannot Assume Common Ownership Without EvidenceMPEP 804Prohibited
Establishment of Joint Research Agreement Disqualifies Prior Art RejectionMPEP 804
Final Action on Conflicting Claims in Same ReferenceMPEP 804Permitted
New Matter Amended Requires Final Office ActionMPEP 804

Examiner Must Reopen Prosecution After Appellant's ReplyMPEP 1207.03(c)Required
After Final Evidence Must Be Considered on MeritsMPEP 1207.04Required
Examiner Must Reopen Prosecution After Appellant ReplyMPEP 1207.05Required
Petition for Withdrawing Application from IssueMPEP 1308Required
Requirement for IDS in Reissue ApplicationMPEP 1406Required
Disclosure Requirement for Reissue ApplicantsMPEP 1418Required
Documents Cited from International Search Report Must Be SubmittedMPEP 1893.03(g)Required
Requirement for Information Disclosure Statement ComplianceMPEP 2003Required
Information Disclosure Statement Filing RequirementsMPEP 2003Required
Information Disclosure Statement Before Final Action RequiredMPEP 2003Required
Information Disclosure Statement Must Be Filed Before Issue FeeMPEP 2003Required
Certification for Information Disclosure StatementMPEP 2003Required
Fee Requirement for Information Disclosure StatementMPEP 2003Required
Requirement for IDS Filing After PublicationMPEP 2920.05(f)Required
Requirement for Compliance with §1.98 Information Disclosure StatementMPEP 609Required
Timing for Filing Information Disclosure Statement RequiredMPEP 609Required
Late Filing of Information Disclosure Statement Allowed With FeeMPEP 609Required
Information Disclosure Statement Before Issue Fee PaymentMPEP 609Required
Certification for IDS Information Sources RequiredMPEP 609Required
Omission of Content Allows Additional Time for ComplianceMPEP 609Required
Information Disclosure Statement Must Include Specific ItemsMPEP 609Required
Requirement for Information Disclosure Statement ComplianceMPEP 609Required
Examiner Must Consider All IDS InformationMPEP 609Required
Use of PTO/SB/08 Encouraged for Information Disclosure StatementsMPEP 609Required
Resubmit Information Not Considered In Parent ApplicationMPEP 609.02Required
Information Disclosure Statement Must Comply with 37 CFR 1.98MPEP 609.04(a)Required
Information Disclosure Statement Must Comply With ProvisionsMPEP 609.04(a)Required
Additional Time for IDS Content ComplianceMPEP 609.04(a)Required
Information Disclosure Statement Timing Requirement After Ex parte Quayle ActionMPEP 609.04(b)Required
Information Disclosure Statement Must Comply After AppealMPEP 609.04(b)Required
Parent Application Can Become Abandoned Without Issue Fee PaymentMPEP 609.04(b)Required
Certification for Information Disclosure Statement RequiredMPEP 609.04(b)Required
Communication Not First Cited Within Three Months Requires Additional StatementMPEP 609.04(b)Required
Single Fee for Two Statements on Same DayMPEP 609.04(b)Required
Information After Patent Grant Must Comply with 37 CFR 1.501MPEP 609.05(a)Required
Examiners Must Sign eIDS FormsMPEP 609.07Required
Initialed eIDS Must Be Sent to ApplicantMPEP 609.07Required
Art Submitted with 37 CFR 1.105 Must Be ConsideredMPEP 704.14(b)Required
Requirement for Art List with Consideration IndicationMPEP 704.14(b)Required
Requirement for Specifying Scope of InformationMPEP 704.14(b)Required
Subsequent Replies Must Meet Fee and Certification RequirementsMPEP 704.14(d)Required
Art Beyond Requirement for Information Is Considered Under Art RulesMPEP 704.14(d)Required
Examiner May Introduce New Ground of RejectionMPEP 706.07(a)Required
IDS Previously Refused Can Be Reconsidered Without FeeMPEP 706.07(g)Required
Information Disclosure Statement Allowed Only After Notice of AllowanceMPEP 706.07(h)Required
Updated Accelerated Examination Support Document Required for AmendmentsMPEP 708.02(a)Required
Updated IDS Must Comply with 37 CFR 1.97 and 1.98MPEP 708.02(a)Required
Amendments Must Comply with Other RequirementsMPEP 714.16Required
Amendments Must Comply With Specific RulesMPEP 714.16Required

IDS Submission from Office Communication Required Within 30 Days to Avoid Patent Term Adjustment ReductionMPEP 2730
Requirement for IDS Resulting from Foreign Patent Office CommunicationMPEP 2730
Third Parties Can Provide Information to Applicant for IDSMPEP 609Permitted
Third Parties May Only Submit Patents and Publications in Compliance with 37 CFR 1.290MPEP 609Permitted
Public Can File Protest Before Allowance NoticeMPEP 609Permitted
Review of Third-Party Submissions for ComplianceMPEP 609
Noncompliant Third-Party Submissions DiscardedMPEP 609
Office Personnel Must Not Act on Third-Party Submissions Except as PermittedMPEP 609
Diligent Applicant Can Avoid Patent Term Adjustment Reduction for IDS Within 30 Days of Office CommunicationMPEP 2730
IDS Submission Within 30 Days of Office Communication Required for Patent Term AdjustmentMPEP 2730
Examiner-Amended Claims After Allowance Require PTA ReductionMPEP 2732
Amendment Not Expressly Requested By Office Not ConsideredMPEP 2732
Amendment Must Be Explicitly Requested by OfficeMPEP 2732
Examiner's Amendment Not Expressly Requested Is Not Basis For Adjustment ReductionMPEP 2732Permitted
Next Office Action May Be Final Unless New Grounds Are IntroducedMPEP 1207.03(c)Permitted
Examiner Can Enter New Rejection After Appeal BriefMPEP 1207.04Permitted
Requirement for New Ground of Rejection After AppealMPEP 1207.04
Considerations for Adding New Grounds in Examiner's Answer After AppealMPEP 1207.04Recommended
New Ground of Rejection Based on Amendment or Information Disclosure StatementMPEP 1207.04Permitted
First After Final Amendment Is RequiredMPEP 1207.04Recommended
Requirement for Reopening Prosecution to Make New Grounds of RejectionMPEP 1207.04
Final Office Action After Reopening with New GroundsMPEP 1207.04Permitted
Examiner Must Not Introduce New Grounds Unless NecessitatedMPEP 1207.05Permitted
Information Disclosure Statement Or Amendment Required For WithdrawalMPEP 1308Permitted
RCE Not Applicable to Pre-1995 Utility/Plant and Design AppsMPEP 1308
RCE Waives Issue Fee RequirementMPEP 1308
RCE Before Issue Fee Invalidates RCEMPEP 1308Permitted
Requirement for Legible Copy of Listed ReferencesMPEP 1406
Notification of National Stage Application AcceptanceMPEP 1893.03(g)
Itemized List of Received Documents Must Include Search Report ReferencesMPEP 1893.03(g)
ISA Search Report and Citations Must Be PresentMPEP 1893.03(g)
Examiner Will Consider International Search Report in First Office ActionMPEP 1893.03(g)
Documents Not Required on PTO-892 FormMPEP 1893.03(g)
Examiner Considers International Search Report Without Further ActionMPEP 1893.03(g)
Material Information Must Be Promptly SubmittedMPEP 2003Recommended
Late Information Submission Not Excused by Issue Fee PaymentMPEP 2003Recommended
Examiner May Use New Prior Art Without AmendmentMPEP 2271Permitted
Request for Continued Examination Accompanied by IDS Not Considered Failure to Engage in Reasonable EffortsMPEP 2730
Information Disclosure Statement Not Expressly Requested By OfficeMPEP 2732
Information Disclosure Statement Timing RequirementMPEP 2732
Request for Continued Examination Not Considered Failure to Engage in Reasonable EffortsMPEP 2732
Safe Harbor Statement Required for Information Disclosure Statements Filed After AllowanceMPEP 2732
RCE After Allowance Requires Safe Harbor StatementMPEP 2732
Information Disclosure Statement Using Annex III Required for International Design ApplicationsMPEP 2920.05(f)Permitted
Annex Sent by International Bureau After PublicationMPEP 2920.05(f)
Information Disclosure Statement Within Three Months of PublicationMPEP 2920.05(f)
IDS After Three Months AllowedMPEP 2920.05(f)Permitted
Disclosure Statement Required for Nonprovisional ApplicationsMPEP 601
No Information Disclosure Statement in Provisional ApplicationMPEP 601Permitted
Description of Related Art RequiredMPEP 608.01(c)
Problems with Prior Art Must Be IndicatedMPEP 608.01(c)Recommended
Third Parties Cannot File IDS Under 37 CFR 1.97 and 1.98MPEP 609Prohibited
Disclosure Not Representing Search ConductedMPEP 609Prohibited
Information Disclosure Statement Filing Does Not Imply Search ConductedMPEP 609
No Requirement for Patentability SearchMPEP 609
Disclosure Not Admitting Materiality to PatentabilityMPEP 609Prohibited
Filing of IDS Does Not Admit Materiality to PatentabilityMPEP 609
IDS Considered After RCEMPEP 609.02
IDS Not Considered Without Proper Format After RCEMPEP 609.02
IDS Filed Before RCE Must Be ConsideredMPEP 609.02
IDS Considered After RCEMPEP 609.02
Information Disclosure Statement Filing Within Specific Periods Requires No Fee Or Certificate of MailingMPEP 609.04(b)
Information Disclosure Statement Must Be Timely FiledMPEP 609.04(b)
Information Disclosure Statement May Be Filed on Next Business Day If Last Day Falls on HolidayMPEP 609.04(b)Permitted
Office Action Mailed on Indicated DateMPEP 609.04(b)
New Grounds of Rejection After AmendmentMPEP 609.04(b)Permitted
Examiner May Use Submitted Information Regardless of Claims AmendmentMPEP 609.04(b)Permitted
Option to File Continuing Application After Non-ComplianceMPEP 609.04(b)Permitted
Continued Prosecution Abandons Design ApplicationMPEP 609.04(b)
Continuing Application Requirement for Design ApplicationsMPEP 609.04(b)
Three-Month Reply Period Begins with Foreign Office Communication DateMPEP 609.04(b)
Mailing Date Begins Three-Month PeriodMPEP 609.04(b)
Date of Communication Begins Three-Month PeriodMPEP 609.04(b)
Statement Considered Filed on Receipt or Earlier Date of MailingMPEP 609.04(b)
Extension for Filing Statement on Holiday or WeekendMPEP 609.04(b)Permitted
Duty to Make Reasonable Inquiry Before Submitting Information Disclosure StatementMPEP 609.04(b)
Practitioner Must Verify Client’s Knowledge DateMPEP 609.04(b)Permitted
Practitioner Must Verify Information Age Before SubmissionMPEP 609.04(b)Prohibited
Attorney Must Inquire About Publication DateMPEP 609.04(b)Recommended
Timing Requirement for Information Disclosure StatementMPEP 609.04(b)Permitted
Oath or Declaration Not Required for Statement Under 1.97(e)MPEP 609.04(b)
Filing Requirement for Information Disclosure Statement Within Three Months of CitationMPEP 609.04(b)
Statement Acceptance for ComplianceMPEP 609.04(b)
Information Disclosure Statement Not Compliant Without Fee and Form FilingMPEP 609.05(c)
Gaps in Citation Numbers on eIDS Not Affecting ConsiderationMPEP 609.07Permitted
Data Entry Error Does Not Invalidate eIDSMPEP 609.07
Completed eIDS Form Must Be Recorded In Official FileMPEP 609.07Recommended
Examiner Must Annotate Art ConsiderationMPEP 704.14(b)Permitted
Requirement for Providing List of Submitted ArtMPEP 704.14(b)
Examiner May Use Info Disclosed Statment to Make Final ActionMPEP 706.07(a)Prohibited
Dependent Claim Amended When Independent Claim ChangesMPEP 706.07(a)
Rejoined Claims Must Be Supported by DescriptionMPEP 706.07(a)Permitted
Amendments and IDS Under 37 CFR 1.129(a)MPEP 706.07(g)Permitted
Amendment Fee Does Not Allow New MatterMPEP 706.07(g)Permitted
IDS Must Include Statement Under 1.97(e)MPEP 706.07(g)
Examiner May Introduce New IDS-Based RejectionMPEP 706.07(g)Permitted
Fee for Merits Action After June 8, 2005MPEP 706.07(g)
Merits Office Action Is Final Except New Grounds Not Necessitated By ClaimsMPEP 706.07(g)
Submission Includes Information Disclosure Statement Or AmendmentsMPEP 706.07(h)
Appeal Brief Is Not a Submission Under 37 CFR 1.114MPEP 706.07(h)
Submission Can Incorporate Previous Appeal Brief ArgumentsMPEP 706.07(h)Permitted
Amendment After Final May Satisfy Submission RequirementMPEP 706.07(h)Permitted
Updated Accelerated Examination Support Document Required for AmendmentsMPEP 708.02(a)
Amended Markush Claim Must Be Examined AgainMPEP 803.02Recommended
Extension of Examination for PatentabilityMPEP 803.02
Amended Markush Claim Must Be ReexaminedMPEP 803.02Permitted
Amendments Restricting Claims After Final Rejection May Be DeniedMPEP 803.02Permitted
Final Office Action in Rejoinder Situations Governed by MPEP § 706.07MPEP 821.04
Final Action on Rejoined ClaimsMPEP 821.04Permitted

MPEP Section	Rules
MPEP § 1206	Disclosure Statements Held Pending Appeal DecisionMPEP 1206 Consideration of Post-Appeal IDS Based on MPEP §609 and CFR 1.97-1.98MPEP 1206
MPEP § 1207.03(c)	Examiner Must Reopen Prosecution After Appellant's ReplyMPEP 1207.03(c)Required Next Office Action May Be Final Unless New Grounds Are IntroducedMPEP 1207.03(c)Permitted
MPEP § 1207.04	Examiner Can Enter New Rejection After Appeal BriefMPEP 1207.04Permitted Requirement for New Ground of Rejection After AppealMPEP 1207.04 Considerations for Adding New Grounds in Examiner's Answer After AppealMPEP 1207.04Recommended New Ground of Rejection Based on Amendment or Information Disclosure StatementMPEP 1207.04Permitted After Final Evidence Must Be Considered on MeritsMPEP 1207.04Required First After Final Amendment Is RequiredMPEP 1207.04Recommended Requirement for Reopening Prosecution to Make New Grounds of RejectionMPEP 1207.04 Final Office Action After Reopening with New GroundsMPEP 1207.04Permitted
MPEP § 1207.05	Examiner Must Reopen Prosecution After Appellant ReplyMPEP 1207.05Required Examiner Must Not Introduce New Grounds Unless NecessitatedMPEP 1207.05Permitted
MPEP § 1308	Petition for Withdrawing Application from IssueMPEP 1308Required Information Disclosure Statement Or Amendment Required For WithdrawalMPEP 1308Permitted RCE Not Applicable to Pre-1995 Utility/Plant and Design AppsMPEP 1308 RCE Waives Issue Fee RequirementMPEP 1308 RCE Before Issue Fee Invalidates RCEMPEP 1308Permitted
MPEP § 1406	Requirement for IDS in Reissue ApplicationMPEP 1406Required Requirement for Legible Copy of Listed ReferencesMPEP 1406
MPEP § 1418	Requirement for Submitting Material Information to Patent OfficeMPEP 1418 Information Known to Be Material to Patentability Must be SubmittedMPEP 1418 Disclosure Requirement for Reissue ApplicantsMPEP 1418Required Reissue Applicants Must File Information Disclosure Statements at FilingMPEP 1418 Reminder of Duties for Reissue ApplicationMPEP 1418Permitted
MPEP § 1455	References Cited in Original Patent Must Be ReissuedMPEP 1455Recommended Requirement for IDS in Reissue ApplicationMPEP 1455Recommended Reissue Cannot Add New Prior ArtMPEP 1455Prohibited
MPEP § 1893.03(g)	Notification of National Stage Application AcceptanceMPEP 1893.03(g) Itemized List of Received Documents Must Include Search Report ReferencesMPEP 1893.03(g) ISA Search Report and Citations Must Be PresentMPEP 1893.03(g) Examiner Will Consider International Search Report in First Office ActionMPEP 1893.03(g) Documents Not Required on PTO-892 FormMPEP 1893.03(g) Examiner Considers International Search Report Without Further ActionMPEP 1893.03(g) Documents Cited from International Search Report Must Be SubmittedMPEP 1893.03(g)Required
MPEP § 2001	Disclosure of Material Information Required for PatentabilityMPEP 2001 Disclosure of Closest Information to OfficeMPEP 2001
MPEP § 2001.04	Applicants Provided Certainty on Information ConsiderationMPEP 2001.04 Office May Order Reexamination If Document Raises New Question of PatentabilityMPEP 2001.04Permitted Duty to Disclose Material Information for PatentabilityMPEP 2001.04 Requirement for Disclosing Closest Information to OfficeMPEP 2001.04 Information Considered After Allowance Until Patent GrantMPEP 2001.04Permitted Request for Continued Examination Allowed After AllowanceMPEP 2001.04Permitted RCE Not Allowed for Pre-1995 Utility/Plant and Design AppsMPEP 2001.04Permitted Requirement for Disclosure of Material InformationMPEP 2001.04Permitted
MPEP § 2003	Requirement for Information Disclosure Statement ComplianceMPEP 2003Required Information Disclosure Statement Filing RequirementsMPEP 2003Required Information Disclosure Statement Before Final Action RequiredMPEP 2003Required Fee for Information Disclosure StatementMPEP 2003 Information Disclosure Statement Must Be Filed Before Issue FeeMPEP 2003Required Fee Requirement for Late Filing of Information Disclosure StatementMPEP 2003 Certification for Information Disclosure StatementMPEP 2003Required Information Disclosure Statement Timing RequirementMPEP 2003 Fee Requirement for Information Disclosure StatementMPEP 2003Required Information Disclosure Statement Must Be Filed PromptlyMPEP 2003Recommended Material Information Must Be Promptly SubmittedMPEP 2003Recommended Late Information Submission Not Excused by Issue Fee PaymentMPEP 2003Recommended Material Prior Art Must Be Submitted Promptly for Reissue and ReexaminationMPEP 2003Recommended
MPEP § 2129	IDS Listing Does Not Admit Prior ArtMPEP 2129 Listing of Reference in IDS Not Admitted as Prior ArtMPEP 2129Prohibited
MPEP § 2146.02	New Nonstatutory Double Patenting Rejection After AmendmentMPEP 2146.02Permitted New Nonstatutory Double Patenting Rejection Due to AmendmentMPEP 2146.02
MPEP § 2271	Examiner May Use New Prior Art Without AmendmentMPEP 2271Permitted
MPEP § 2730	IDS Submission from Office Communication Required Within 30 Days to Avoid Patent Term Adjustment ReductionMPEP 2730 Requirement for IDS Resulting from Foreign Patent Office CommunicationMPEP 2730 Diligent Applicant Can Avoid Patent Term Adjustment Reduction for IDS Within 30 Days of Office CommunicationMPEP 2730 IDS Submission Within 30 Days of Office Communication Required for Patent Term AdjustmentMPEP 2730 Request for Continued Examination Accompanied by IDS Not Considered Failure to Engage in Reasonable EffortsMPEP 2730
MPEP § 2732	Information Disclosure Statement Within 30 Days RequiredMPEP 2732 Examiner-Amended Claims After Allowance Require PTA ReductionMPEP 2732 Amendment Not Expressly Requested By Office Not ConsideredMPEP 2732 Amendment Must Be Explicitly Requested by OfficeMPEP 2732 Examiner's Amendment Not Expressly Requested Is Not Basis For Adjustment ReductionMPEP 2732Permitted Amendment After Appeal Is Considered But Counts As Applicant DelayMPEP 2732Permitted Information Disclosure Statement Considered as DelayMPEP 2732Permitted Information Disclosure Statement Not Expressly Requested By OfficeMPEP 2732 Information Disclosure Statement Timing RequirementMPEP 2732 Post-Allowance Submissions Do Not Fail EffortsMPEP 2732 Request for Continued Examination Without Additional Submission AllowedMPEP 2732 Information Disclosure Statement Not Considered for ReductionMPEP 2732 Request for Continued Examination Not Considered Failure to Engage in Reasonable EffortsMPEP 2732 Safe Harbor Statement Required for Information Disclosure Statements Filed After AllowanceMPEP 2732 RCE After Allowance Requires Safe Harbor StatementMPEP 2732 Statement Requirement Does Not Substitute for Filing RequirementsMPEP 2732 Thirty-Day PTA Reduction Period Not ExtendableMPEP 2732
MPEP § 2920.05(f)	Requirement for IDS Filing After PublicationMPEP 2920.05(f)Required Information Disclosure Statement Using Annex III Required for International Design ApplicationsMPEP 2920.05(f)Permitted Annex Sent by International Bureau After PublicationMPEP 2920.05(f) Information Disclosure Statement Within Three Months of PublicationMPEP 2920.05(f) IDS After Three Months AllowedMPEP 2920.05(f)Permitted
MPEP § 601	Disclosure Statement Required for Nonprovisional ApplicationsMPEP 601 No Information Disclosure Statement in Provisional ApplicationMPEP 601Permitted
MPEP § 608.01(c)	Description of Related Art RequiredMPEP 608.01(c) Problems with Prior Art Must Be IndicatedMPEP 608.01(c)Recommended
MPEP § 609	Information Disclosure Statement Using PTO/SB/08MPEP 609Permitted Third Parties Can Provide Information to Applicant for IDSMPEP 609Permitted Copy of Translation Required If AvailableMPEP 609 Applicants Must Submit Material Information to OfficeMPEP 609 Applicants Must Submit Material to PatentabilityMPEP 609 Office to Consider Information for Examiner ReviewMPEP 609Permitted Third Parties May Only Submit Patents and Publications in Compliance with 37 CFR 1.290MPEP 609Permitted Public Can File Protest Before Allowance NoticeMPEP 609Permitted Review of Third-Party Submissions for ComplianceMPEP 609 Noncompliant Third-Party Submissions DiscardedMPEP 609 Office Personnel Must Not Act on Third-Party Submissions Except as PermittedMPEP 609 Requirement for Compliance with §1.98 Information Disclosure StatementMPEP 609Required Timing for Filing Information Disclosure Statement RequiredMPEP 609Required Late Filing of Information Disclosure Statement Allowed With FeeMPEP 609Required Fee for Information Disclosure StatementMPEP 609 Information Disclosure Statement Before Issue Fee PaymentMPEP 609Required Fee Required for Information Disclosure StatementMPEP 609 Certification for IDS Information Sources RequiredMPEP 609Required Information Disclosure Statement Must Exclude Foreign Office Citations and Pre-Filing KnowledgeMPEP 609 No Extensions for Filing Information Disclosure StatementMPEP 609Permitted Omission of Content Allows Additional Time for ComplianceMPEP 609Required Disclosure Not Representing Search ConductedMPEP 609Prohibited Disclosure Not Admitting MaterialityMPEP 609Prohibited Non-Compliant Disclosures Not ConsideredMPEP 609 Information Disclosure Statement Must Include Specific ItemsMPEP 609Required Requirement for Including Other Information CopyMPEP 609 Information Disclosure Statement Must Be Filed Using PTO/SB/08 FormMPEP 609Permitted Third Parties Cannot File IDS Under 37 CFR 1.97 and 1.98MPEP 609Prohibited Examiner Will Consider Information Disclosure StatementMPEP 609 Individuals Must Submit Relevant InformationMPEP 609Permitted Procedure for Submitting Information to OfficeMPEP 609 Requirement for Submitting Information Disclosures Before GrantMPEP 609 Disclosure Not Representing Search ConductedMPEP 609Prohibited Information Disclosure Statement Filing Does Not Imply Search ConductedMPEP 609 No Requirement for Patentability SearchMPEP 609 Disclosure Not Admitting Materiality to PatentabilityMPEP 609Prohibited Filing of IDS Does Not Admit Materiality to PatentabilityMPEP 609 Requirement for Information Disclosure Statement ComplianceMPEP 609Required eIDS Submission Meets Signature RequirementMPEP 609 Requirement for Information Disclosure StatementMPEP 609 Requirements Based on Filing Time for IDSMPEP 609 Examiner Processing of Information Disclosure StatementsMPEP 609 Requirement for Electronic IDS via USPTO SystemMPEP 609 Electronic IDS Submission ProcessMPEP 609 Examiner Must Consider Information After Minimum Requirements MetMPEP 609 Examiner Must Consider All IDS InformationMPEP 609Required IDS Documents Must Be Considered Like Other Prior ArtMPEP 609 Examiner Initials Indicate Information Considered in IDSMPEP 609 Examiner Electronic Signature for IDS ConsiderationMPEP 609Permitted Examiner Will Strike Through Non-Considered CitationsMPEP 609 Examiner Must Stamp Considered ReferencesMPEP 609 Requirement for Proper Information Disclosure StatementMPEP 609 Multiple Information Disclosures Per Application AllowedMPEP 609Permitted Use of PTO/SB/08 Encouraged for Information Disclosure StatementsMPEP 609Required Use PTO/SB/08 for Information Disclosure StatementsMPEP 609 PTO/SB/08 Required for Information Disclosure StatementsMPEP 609 Multiple Information Disclosures AllowedMPEP 609
MPEP § 609.01	Examiner Must Consider IDS ProperlyMPEP 609.01Recommended Examiner Must Initial IDS CitationsMPEP 609.01 Information Disclosure Statement Not Considered If Non-CompliantMPEP 609.01 Reasons for IDS Not Being ConsideredMPEP 609.01 Examiner Must Sign IDS ListingMPEP 609.01 Examiner Must Sign and Date IDS Listing Before Mailing to ApplicantMPEP 609.01
MPEP § 609.02	Information Disclosure Statement Required for International ApplicationsMPEP 609.02 Resubmission of Sequence Listing Must Comply with Format and Timing RequirementsMPEP 609.02Recommended Submit New Listing Compliant with Format RequirementsMPEP 609.02 PTO/SB/08 Form May Contain Examiner Initials from Another ApplicationMPEP 609.02Permitted Initials May Be Misattributed In Sequence ListingsMPEP 609.02Permitted Resubmit Information Not Considered In Parent ApplicationMPEP 609.02Required Parent IDS Compliance Not Requiring ResubmissionMPEP 609.02 IDS Considered After RCEMPEP 609.02 IDS Not Considered Without Proper Format After RCEMPEP 609.02 IDS Filed Before RCE Must Be ConsideredMPEP 609.02 IDS Considered After RCEMPEP 609.02
MPEP § 609.04(a)	Information Disclosure Statement Must Comply with 37 CFR 1.98MPEP 609.04(a)Required Information Disclosure Statement Must Comply With ProvisionsMPEP 609.04(a)Required Additional Time for IDS Content ComplianceMPEP 609.04(a)Required
MPEP § 609.04(b)	Information Disclosure Statement Required During PendencyMPEP 609.04(b) Timing Requirements for Information Disclosure StatementMPEP 609.04(b)Permitted Requirement for Withdrawal Period After Information DisclosureMPEP 609.04(b)Permitted Information Disclosure Statement Filing Within Specific Periods Requires No Fee Or Certificate of MailingMPEP 609.04(b) Information Disclosure Statement Must Be Timely FiledMPEP 609.04(b) Information Disclosure Statement May Be Filed on Next Business Day If Last Day Falls on HolidayMPEP 609.04(b)Permitted Office Action Mailed on Indicated DateMPEP 609.04(b) IDS Information Cannot Be Used in New RejectionMPEP 609.04(b) Information Disclosure Statement Requires Fee or DeclarationMPEP 609.04(b) Withdrawn Final Action Not Considered for IDSMPEP 609.04(b) Information Disclosure Statement Timing Requirement After Ex parte Quayle ActionMPEP 609.04(b)Required Information Disclosure Statement Must Comply After AppealMPEP 609.04(b)Required New Grounds of Rejection After Information DisclosureMPEP 609.04(b) New Grounds of Rejection After AmendmentMPEP 609.04(b)Permitted Examiner May Use Submitted Information Regardless of Claims AmendmentMPEP 609.04(b)Permitted Requirement for Information Disclosure Statement After Examiner Final DeterminationMPEP 609.04(b) Requirement for Advanced Stage Information DisclosureMPEP 609.04(b) IDS Must Be Filed Within Three MonthsMPEP 609.04(b) Option to File Continuing Application After Non-ComplianceMPEP 609.04(b)Permitted Parent Application Can Become Abandoned Without Issue Fee PaymentMPEP 609.04(b)Required Continued Prosecution Abandons Design ApplicationMPEP 609.04(b) Continuing Application Requirement for Design ApplicationsMPEP 609.04(b) Certification for Information Disclosure Statement RequiredMPEP 609.04(b)Required Information Disclosure Statement Must Exclude Foreign Office CitationsMPEP 609.04(b) Requirement for IDS Statement on Foreign Cited InformationMPEP 609.04(b)Permitted IDS Must Cite Foreign Office Communication Within Three MonthsMPEP 609.04(b) Item of Information First Cited Outside U.S. Within Three Months Before IDS Not AllowedMPEP 609.04(b) Item of Information Previously Cited More Than Three Months Before IDS Not Allowed in Statement Under 37 CFR 1.97(e)MPEP 609.04(b) Statement Under 37 CFR 1.97(e) Does Not Replace 37 CFR 1.704(d)MPEP 609.04(b) Three-Month Reply Period Begins with Foreign Office Communication DateMPEP 609.04(b) Mailing Date Begins Three-Month PeriodMPEP 609.04(b) Date of Communication Begins Three-Month PeriodMPEP 609.04(b) Statement Considered Filed on Receipt or Earlier Date of MailingMPEP 609.04(b) Extension for Filing Statement on Holiday or WeekendMPEP 609.04(b)Permitted Requirement for Substantially Identical Foreign ApplicationsMPEP 609.04(b) International PCT Application Is Not a Counterpart for U.S. FilingMPEP 609.04(b)Recommended Family Patents from Foreign Communications RequiredMPEP 609.04(b) United States Patent in Family of PatentsMPEP 609.04(b)Permitted Information Disclosure of Foreign and US PatentsMPEP 609.04(b) Examiner Must Consider English Language PatentMPEP 609.04(b)Recommended Information Disclosure from Foreign Offices IncludedMPEP 609.04(b) Communication Not First Cited Within Three Months Requires Additional StatementMPEP 609.04(b)Required Requirement for IDS Item Disclosure Before Foreign CommunicationMPEP 609.04(b)Permitted Inventor Named in IDS Cannot Make StatementMPEP 609.04(b)Prohibited Duty to Make Reasonable Inquiry Before Submitting Information Disclosure StatementMPEP 609.04(b) Practitioner Must Verify Client’s Knowledge DateMPEP 609.04(b)Permitted Practitioner Must Verify Information Age Before SubmissionMPEP 609.04(b)Prohibited Attorney Must Inquire About Publication DateMPEP 609.04(b)Recommended Timing Requirement for Information Disclosure StatementMPEP 609.04(b)Permitted Oath or Declaration Not Required for Statement Under 1.97(e)MPEP 609.04(b) Filing Requirement for Information Disclosure Statement Within Three Months of CitationMPEP 609.04(b) Statement Acceptance for ComplianceMPEP 609.04(b) Language Must Convey Same Meaning as CFR 1.97(e)MPEP 609.04(b)Prohibited Two Lists and Two Statements for Information DisclosureMPEP 609.04(b)Permitted Information Disclosure Statement Can Include One List with Two StatementsMPEP 609.04(b)Permitted Single Fee for Two Statements on Same DayMPEP 609.04(b)Required English Version of Foreign Search Report OptionalMPEP 609.04(b)Permitted Timing of Information Discovery RequirementMPEP 609.04(b) Requirement for Prompt Evaluation of Information RelevanceMPEP 609.04(b)Permitted Statement on Information and Belief Not SufficientMPEP 609.04(b) Examiners Must Not Remind of Candor DutyMPEP 609.04(b)Recommended Questions About Statement Adequacy Directed to Legal AdministrationMPEP 609.04(b)Recommended
MPEP § 609.05	Review of Information Disclosure Statements for ComplianceMPEP 609.05 Examiner Notifies Applicant of Compliance and Noncompliance with Information Disclosure Statement RulesMPEP 609.05
MPEP § 609.05(a)	Noncompliant Pre-Grant Submissions Not ConsideredMPEP 609.05(a) Information After Patent Grant Must Comply with 37 CFR 1.501MPEP 609.05(a)Required Information Disclosure Statement Filing Requirements Not MetMPEP 609.05(a) IDS Not Considered Due to NoncomplianceMPEP 609.05(a)Permitted Correction of Noncomplying IDS AllowedMPEP 609.05(a)Permitted Requirement for Proper IDS CitationsMPEP 609.05(a)Recommended
MPEP § 609.05(b)	Complying Information Disclosure Statements RequirementMPEP 609.05(b) Information Disclosure Statements Must Be Considered Like Other Prior Art DocumentsMPEP 609.05(b) Examiner Consideration of IDS InformationMPEP 609.05(b) IDS Citation Not Compliant with 37 CFR 1.97 and 1.98 Must Be Struck ThroughMPEP 609.05(b)Recommended Compliant Information Disclosure Statement Items Must Be ConsideredMPEP 609.05(b)
MPEP § 609.05(c)	Timely Evidence for Patentability Not Subject to Disclosure RulesMPEP 609.05(c) Examiner Consideration of Document PortionsMPEP 609.05(c)Prohibited Information Disclosure Statement Not Compliant Without Fee and Form FilingMPEP 609.05(c)
MPEP § 609.07	Examiners Must Sign eIDS FormsMPEP 609.07Required Gaps in Citation Numbers on eIDS Not Affecting ConsiderationMPEP 609.07Permitted Data Entry Error Does Not Invalidate eIDSMPEP 609.07 Initialed eIDS Must Be Sent to ApplicantMPEP 609.07Required Completed eIDS Form Must Be Recorded In Official FileMPEP 609.07Recommended eIDS References Must Be AccurateMPEP 609.07 U.S. Patent and Publication Numbers Must Be Accurate on eIDSMPEP 609.07Prohibited Examiner Must Electronically Retrieve Cited DocumentsMPEP 609.07 Citing Correct Document Numbers Required for eIDS ReferencesMPEP 609.07
MPEP § 704.14(b)	Art Submitted with 37 CFR 1.105 Must Be ConsideredMPEP 704.14(b)Required Requirement for Art List with Consideration IndicationMPEP 704.14(b)Required Examiner Must Annotate Art ConsiderationMPEP 704.14(b)Permitted Requirement for Providing List of Submitted ArtMPEP 704.14(b) Information Within Scope of 37 CFR 1.105 Must Be ConsideredMPEP 704.14(b) Requirement for Specifying Scope of InformationMPEP 704.14(b)Required
MPEP § 704.14(d)	Initial Reply Does Not Need Fee/CertificationMPEP 704.14(d) References Must Be Listed on Form PTO/SB/08MPEP 704.14(d)Recommended Subsequent Replies Must Meet Fee and Certification RequirementsMPEP 704.14(d)Required Art Beyond Requirement for Information Is Considered Under Art RulesMPEP 704.14(d)Required Next Action Cannot Rely on New Art Unless AmendedMPEP 704.14(d)Prohibited Distinguishing Practice for Reply Under 37 CFR 1.105 from MPEP §609.04(b) and §706.07(a)MPEP 704.14(d)
MPEP § 706.07(a)	Examiner May Introduce New Ground of RejectionMPEP 706.07(a)Required Examiner May Use Info Disclosed Statment to Make Final ActionMPEP 706.07(a)Prohibited Dependent Claim Amended When Independent Claim ChangesMPEP 706.07(a) Rejoined Claims Must Be Supported by DescriptionMPEP 706.07(a)Permitted New Ground of Rejection Not Allowed in Final ActionMPEP 706.07(a)Prohibited New Double Patenting Requirement After JRA ExceptionMPEP 706.07(a)Permitted Final Action Without Claim AmendmentMPEP 706.07(a)Permitted New Double Patenting Due to Applicant’s AmendmentMPEP 706.07(a) New Ground of Rejection Not Based on Amendments or IDS Improper Final RejectionMPEP 706.07(a)Recommended Improper Final Rejection with New Ground Not Based on Amendments or IDSMPEP 706.07(a)Recommended
MPEP § 706.07(g)	Amendments and IDS Under 37 CFR 1.129(a)MPEP 706.07(g)Permitted Amendment Fee Does Not Allow New MatterMPEP 706.07(g)Permitted IDS Previously Refused Can Be Reconsidered Without FeeMPEP 706.07(g)Required IDS Must Include Statement Under 1.97(e)MPEP 706.07(g) Examiner May Introduce New IDS-Based RejectionMPEP 706.07(g)Permitted Fee for Merits Action After June 8, 2005MPEP 706.07(g) Merits Office Action Is Final Except New Grounds Not Necessitated By ClaimsMPEP 706.07(g)
MPEP § 706.07(h)	Submission Includes Information Disclosure Statement Or AmendmentsMPEP 706.07(h) Information Disclosure Statement Allowed Only After Notice of AllowanceMPEP 706.07(h)Required Appeal Brief Is Not a Submission Under 37 CFR 1.114MPEP 706.07(h) Submission Can Incorporate Previous Appeal Brief ArgumentsMPEP 706.07(h)Permitted Amendment After Final May Satisfy Submission RequirementMPEP 706.07(h)Permitted
MPEP § 707.05	Material Citations from PCT ISR Must Be CitedMPEP 707.05Permitted
MPEP § 708.02(a)	Updated Accelerated Examination Support Document Required for AmendmentsMPEP 708.02(a)Required Updated Accelerated Examination Support Document Required for AmendmentsMPEP 708.02(a) Updated IDS Must Comply with 37 CFR 1.97 and 1.98MPEP 708.02(a)Required
MPEP § 709	Suspension Request Must Present Good and Sufficient ReasonsMPEP 709Permitted No Suspension for Market Viability TestingMPEP 709
MPEP § 714.16	Amendments Must Comply with Other RequirementsMPEP 714.16Required Amendments Must Comply With Specific RulesMPEP 714.16Required
MPEP § 717.02(a)	New Double Patenting Rejection After Amending for Prior ArtMPEP 717.02(a)Permitted New Double Patenting Rejection Necessitated by AmendmentMPEP 717.02(a)
MPEP § 717.02(b)	New Double Patenting Rejection After Amending Prior ArtMPEP 717.02(b)Permitted New Double Patenting Rejection Necessitated by AmendmentMPEP 717.02(b)
MPEP § 719.05	Indication of Consideration for Prior Art Citations in IDSMPEP 719.05
MPEP § 803.02	Amended Markush Claim Must Be Examined AgainMPEP 803.02Recommended Extension of Examination for PatentabilityMPEP 803.02 Amended Markush Claim Must Be ReexaminedMPEP 803.02Permitted Amendments Restricting Claims After Final Rejection May Be DeniedMPEP 803.02Permitted
MPEP § 804	Examiner Cannot Assume Common Ownership Without EvidenceMPEP 804Prohibited Establishment of Joint Research Agreement Disqualifies Prior Art RejectionMPEP 804 Final Action on Conflicting Claims in Same ReferenceMPEP 804Permitted New Matter Amended Requires Final Office ActionMPEP 804
MPEP § 821.04	Final Office Action in Rejoinder Situations Governed by MPEP § 706.07MPEP 821.04 Final Action on Rejoined ClaimsMPEP 821.04Permitted

Related Provisions

Based on MPEP Last Modified: 10/30/2024 08:50:22

37 CFR § 1.97 — Filing of information disclosure (MPEP Coverage Index) – BlueIron IP

37 CFR § 1.97 Filing of information disclosure

Summary

Official MPEP § 1.97 — Filing of information disclosure

1.97 Filing of information disclosure statement.

Verbatim in MPEP

Required Actions

Key Interpretations

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MPEP Coverage

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