What are the requirements for listing U.S. patents in an Information Disclosure Statement?
When listing U.S. patents in an Information Disclosure Statement (IDS), the following requirements must be met: List each patent by document number Include the name of the patentee Provide the issue date According to MPEP 609.04(a): Each U.S. patent listed in an information disclosure statement must be identified by patentee, patent number, and issue date.…
Read MoreDo applicants need to provide a separate listing of references cited in the international search report?
Generally, applicants do not need to provide a separate listing of references cited in the international search report for a PCT national stage application. According to MPEP 609.03: “There is no requirement that the examiner list the documents on a PTO-892 form and there is no requirement for the applicant to provide a separate listing…
Read MoreAre copies of U.S. patents required when submitting an IDS?
Generally, copies of U.S. patents and U.S. patent application publications listed in an Information Disclosure Statement (IDS) are not required unless specifically requested by the Office. According to the MPEP: ‘There is no requirement for a copy of each U.S. patent or U.S. patent application publication listed in an IDS unless required by the Office.‘…
Read MoreWhat happens if an IDS is filed after the mailing of a final Office action?
What happens if an IDS is filed after the mailing of a final Office action? If an Information Disclosure Statement (IDS) is filed after the mailing of a final Office action, the examiner will consider it according to specific guidelines: The IDS will be considered if it’s accompanied by either a statement as specified in…
Read MoreWhat happens if an Information Disclosure Statement is filed after the issue fee is paid?
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The IDS will not be considered by the examiner The IDS will be placed in the application file The application may be withdrawn from issue to file a Request for Continued Examination (RCE) or a continuing application A petition under 37…
Read MoreWhat are the content requirements for an Information Disclosure Statement (IDS)?
An Information Disclosure Statement (IDS) must include: A list of all patents, publications, applications, or other information submitted for consideration A column for examiner’s initials U.S. patents and patent application publications listed separately from other documents Proper identification of each document listed Copies of foreign patents/publications Copies of non-patent literature Copies of pending U.S. applications…
Read MoreWhat happens if an IDS is filed after the issue fee has been paid?
What happens if an IDS is filed after the issue fee has been paid? If an Information Disclosure Statement (IDS) is filed after the issue fee has been paid, it will not be considered by the examiner. According to MPEP 609.02: ‘Any IDS filed after the issue fee has been paid will not be considered…
Read MoreHow does the USPTO handle Information Disclosure Statements (IDS) in Continued Prosecution Applications (CPAs)?
For Continued Prosecution Applications (CPAs) filed under 37 CFR 1.53(d), the USPTO automatically considers information that was considered in the parent application. The MPEP states: “Information which has been considered by the Office in the parent application of a continued prosecution application (CPA) filed under 37 CFR 1.53(d) will be part of the file before…
Read MoreWhat are the requirements for citing foreign patent documents and non-English documents in an IDS?
When citing foreign patent documents and non-English documents in an Information Disclosure Statement (IDS), the following requirements apply: For foreign patent documents: Cite by document number, country, and publication or issue date Provide a copy of each cited foreign patent document For non-English documents: Provide a concise explanation of the relevance, as understood by the…
Read MoreHow does the USPTO handle IDSs in Requests for Continued Examination (RCE)?
When dealing with Information Disclosure Statements (IDSs) in Requests for Continued Examination (RCE), the USPTO follows specific guidelines as outlined in the MPEP: Previously considered information: The MPEP states, “Information which has been considered by the Office in the application before the filing of a RCE will be part of the file before the examiner…
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