Patent Law FAQ
This FAQ answers all your questions about patent law, patent procedure, and the patent examination process.
MPEP 2900 – International Design Applications (1)
The timeline for submitting an Information Disclosure Statement (IDS) in an international design application designating the United States is outlined in MPEP 2920.05(f):
- At filing: An applicant may submit an IDS using Annex III to the official application form (DM/1 form) when filing the international design application.
- Preferred timing: “The Office would prefer to receive the IDS from the applicant after publication of the international registration.”
- Three-month window: According to 37 CFR 1.97(b)(5), “the IDS will be considered by the Office if filed by the applicant within three months of the date of publication of the international registration under Hague Agreement Article 10(3).”
- Later submissions: “The Office may also consider an IDS filed after this three month period as provided in 37 CFR 1.97.”
It’s important to note that while the USPTO will accept IDS submissions at various stages, submitting within the three-month window after publication ensures consideration without additional requirements. For IDS submissions outside this window, applicants should consult 37 CFR 1.97 for specific requirements and potential fees.
To learn more:
MPEP 2920.05(F) – Information Disclosure Statement In An International Design Application Designating The United States (1)
The timeline for submitting an Information Disclosure Statement (IDS) in an international design application designating the United States is outlined in MPEP 2920.05(f):
- At filing: An applicant may submit an IDS using Annex III to the official application form (DM/1 form) when filing the international design application.
- Preferred timing: “The Office would prefer to receive the IDS from the applicant after publication of the international registration.”
- Three-month window: According to 37 CFR 1.97(b)(5), “the IDS will be considered by the Office if filed by the applicant within three months of the date of publication of the international registration under Hague Agreement Article 10(3).”
- Later submissions: “The Office may also consider an IDS filed after this three month period as provided in 37 CFR 1.97.”
It’s important to note that while the USPTO will accept IDS submissions at various stages, submitting within the three-month window after publication ensures consideration without additional requirements. For IDS submissions outside this window, applicants should consult 37 CFR 1.97 for specific requirements and potential fees.
To learn more:
Patent Law (6)
How do I cite non-English language documents in an IDS?
When citing non-English language documents in an Information Disclosure Statement (IDS), follow these guidelines:
- Provide a concise explanation of the relevance of the document.
- Include an English language translation or abstract if available.
- If a translation is not available, indicate the language of the document.
According to MPEP 609.04(a): “Where the information listed is not in the English language, but was cited in a search report or other action by a foreign patent office in a counterpart foreign application, the requirement for a concise explanation of relevance can be satisfied by submitting an English-language version of the search report or action which indicates the degree of relevance found by the foreign office.”
Properly citing non-English documents ensures the examiner can consider their relevance to your application.
To learn more:
For continuation, divisional, or continuation-in-part applications filed under 37 CFR 1.53(b), the requirements for submitting an Information Disclosure Statement (IDS) depend on whether the information was previously considered in the parent application. The MPEP provides the following guidance:
- If the information was considered in the parent application, it need not be resubmitted unless the applicant wants it printed on the patent.
- If the information was not considered in the parent application, it must be resubmitted in compliance with 37 CFR 1.97 and 37 CFR 1.98.
The MPEP further states:
“Pursuant to 37 CFR 1.98(d), if the IDS submitted in the parent application complies with 37 CFR 1.98(a) to (c), copies of the patents, publications, pending U.S. applications, or other information submitted in the parent application need not be resubmitted in the continuing application.”
When resubmitting information, applicants should use a new listing that complies with the format requirements in 37 CFR 1.98(a)(1) and avoid submitting copies of PTO/SB/08 or PTO-892 forms from other applications to prevent confusion in the record.
To learn more:
The timeline for submitting an Information Disclosure Statement (IDS) in an international design application designating the United States is outlined in MPEP 2920.05(f):
- At filing: An applicant may submit an IDS using Annex III to the official application form (DM/1 form) when filing the international design application.
- Preferred timing: “The Office would prefer to receive the IDS from the applicant after publication of the international registration.”
- Three-month window: According to 37 CFR 1.97(b)(5), “the IDS will be considered by the Office if filed by the applicant within three months of the date of publication of the international registration under Hague Agreement Article 10(3).”
- Later submissions: “The Office may also consider an IDS filed after this three month period as provided in 37 CFR 1.97.”
It’s important to note that while the USPTO will accept IDS submissions at various stages, submitting within the three-month window after publication ensures consideration without additional requirements. For IDS submissions outside this window, applicants should consult 37 CFR 1.97 for specific requirements and potential fees.
To learn more:
A statement under 37 CFR 1.97(e) is a declaration that either:
- Each item of information in the IDS was first cited in a foreign patent office communication no more than 3 months prior to the IDS filing, or
- No item in the IDS was cited by a foreign patent office, and no item was known to anyone with a duty of disclosure more than 3 months prior to the IDS filing.
This statement is required when submitting an IDS after a first Office action but before a final Office action, Notice of Allowance, or Quayle action, unless a fee is paid. It’s also required when submitting an IDS after a final Office action, Notice of Allowance, or Quayle action (along with the fee).
As stated in MPEP 609.04(b): “A statement under 37 CFR 1.97(e) can contain either of two statements. One statement is that each item of information in an information disclosure statement was first cited in any communication, such as a search report, from a patent office outside the U.S. in a counterpart foreign application not more than three months prior to the filing date of the statement.”
To learn more:
To learn more:
An Information Disclosure Statement (IDS) is a mechanism by which patent applicants can comply with the duty of disclosure provided in 37 CFR 1.56. It allows applicants to submit information that is material to patentability to the U.S. Patent and Trademark Office (USPTO).
According to the MPEP, The provisions of 37 CFR 1.97 and 37 CFR 1.98 provide a mechanism by which patent applicants may comply with the duty of disclosure provided in 37 CFR 1.56 using an IDS.
This means that an IDS is a formal way to disclose relevant prior art and other information to the patent examiner.
To learn more:
If an Information Disclosure Statement (IDS) is filed after the issue fee is paid:
- The IDS will not be considered by the examiner
- The IDS will be placed in the application file
- The application may be withdrawn from issue to file a Request for Continued Examination (RCE) or a continuing application
- A petition under 37 CFR 1.313(c) is required to withdraw the application from issue
MPEP 609.04(b)(IV) states: “After the issue fee has been paid on an application, it is impractical for the Office to attempt to consider newly submitted information. Information disclosure statements filed after payment of the issue fee in an application will not be considered but will merely be placed in the application file.”
The MPEP further explains: “The application may be withdrawn from issue at this point, pursuant to 37 CFR 1.313(c)(2) or 1.313(c)(3) so that the information can be considered in the application upon the filing of a RCE under 37 CFR 1.114 or in a continuing application filed under 37 CFR 1.53(b) (or 37 CFR 1.53(d) if the application is a design application).”
To learn more:
Patent Procedure (6)
How do I cite non-English language documents in an IDS?
When citing non-English language documents in an Information Disclosure Statement (IDS), follow these guidelines:
- Provide a concise explanation of the relevance of the document.
- Include an English language translation or abstract if available.
- If a translation is not available, indicate the language of the document.
According to MPEP 609.04(a): “Where the information listed is not in the English language, but was cited in a search report or other action by a foreign patent office in a counterpart foreign application, the requirement for a concise explanation of relevance can be satisfied by submitting an English-language version of the search report or action which indicates the degree of relevance found by the foreign office.”
Properly citing non-English documents ensures the examiner can consider their relevance to your application.
To learn more:
For continuation, divisional, or continuation-in-part applications filed under 37 CFR 1.53(b), the requirements for submitting an Information Disclosure Statement (IDS) depend on whether the information was previously considered in the parent application. The MPEP provides the following guidance:
- If the information was considered in the parent application, it need not be resubmitted unless the applicant wants it printed on the patent.
- If the information was not considered in the parent application, it must be resubmitted in compliance with 37 CFR 1.97 and 37 CFR 1.98.
The MPEP further states:
“Pursuant to 37 CFR 1.98(d), if the IDS submitted in the parent application complies with 37 CFR 1.98(a) to (c), copies of the patents, publications, pending U.S. applications, or other information submitted in the parent application need not be resubmitted in the continuing application.”
When resubmitting information, applicants should use a new listing that complies with the format requirements in 37 CFR 1.98(a)(1) and avoid submitting copies of PTO/SB/08 or PTO-892 forms from other applications to prevent confusion in the record.
To learn more:
The timeline for submitting an Information Disclosure Statement (IDS) in an international design application designating the United States is outlined in MPEP 2920.05(f):
- At filing: An applicant may submit an IDS using Annex III to the official application form (DM/1 form) when filing the international design application.
- Preferred timing: “The Office would prefer to receive the IDS from the applicant after publication of the international registration.”
- Three-month window: According to 37 CFR 1.97(b)(5), “the IDS will be considered by the Office if filed by the applicant within three months of the date of publication of the international registration under Hague Agreement Article 10(3).”
- Later submissions: “The Office may also consider an IDS filed after this three month period as provided in 37 CFR 1.97.”
It’s important to note that while the USPTO will accept IDS submissions at various stages, submitting within the three-month window after publication ensures consideration without additional requirements. For IDS submissions outside this window, applicants should consult 37 CFR 1.97 for specific requirements and potential fees.
To learn more:
A statement under 37 CFR 1.97(e) is a declaration that either:
- Each item of information in the IDS was first cited in a foreign patent office communication no more than 3 months prior to the IDS filing, or
- No item in the IDS was cited by a foreign patent office, and no item was known to anyone with a duty of disclosure more than 3 months prior to the IDS filing.
This statement is required when submitting an IDS after a first Office action but before a final Office action, Notice of Allowance, or Quayle action, unless a fee is paid. It’s also required when submitting an IDS after a final Office action, Notice of Allowance, or Quayle action (along with the fee).
As stated in MPEP 609.04(b): “A statement under 37 CFR 1.97(e) can contain either of two statements. One statement is that each item of information in an information disclosure statement was first cited in any communication, such as a search report, from a patent office outside the U.S. in a counterpart foreign application not more than three months prior to the filing date of the statement.”
To learn more:
To learn more:
An Information Disclosure Statement (IDS) is a mechanism by which patent applicants can comply with the duty of disclosure provided in 37 CFR 1.56. It allows applicants to submit information that is material to patentability to the U.S. Patent and Trademark Office (USPTO).
According to the MPEP, The provisions of 37 CFR 1.97 and 37 CFR 1.98 provide a mechanism by which patent applicants may comply with the duty of disclosure provided in 37 CFR 1.56 using an IDS.
This means that an IDS is a formal way to disclose relevant prior art and other information to the patent examiner.
To learn more:
If an Information Disclosure Statement (IDS) is filed after the issue fee is paid:
- The IDS will not be considered by the examiner
- The IDS will be placed in the application file
- The application may be withdrawn from issue to file a Request for Continued Examination (RCE) or a continuing application
- A petition under 37 CFR 1.313(c) is required to withdraw the application from issue
MPEP 609.04(b)(IV) states: “After the issue fee has been paid on an application, it is impractical for the Office to attempt to consider newly submitted information. Information disclosure statements filed after payment of the issue fee in an application will not be considered but will merely be placed in the application file.”
The MPEP further explains: “The application may be withdrawn from issue at this point, pursuant to 37 CFR 1.313(c)(2) or 1.313(c)(3) so that the information can be considered in the application upon the filing of a RCE under 37 CFR 1.114 or in a continuing application filed under 37 CFR 1.53(b) (or 37 CFR 1.53(d) if the application is a design application).”
To learn more: