Patent Law FAQ
This FAQ answers all your questions about patent law, patent procedure, and the patent examination process.
Patent Law (2)
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:
Patent Procedure (2)
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: