What happens if documents are submitted both as evidence and on an IDS form?
When documents are submitted both as evidence in a reply to an Office action and listed on an Information Disclosure Statement (IDS) form, the examiner’s treatment may differ. The MPEP provides an example: “For example, if applicant submits and relies on three patents as evidence in reply to the first Office action and also lists…
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The IDS will not be considered by the examiner The IDS will be placed in the application file The application may be withdrawn from issue to file a Request for Continued Examination (RCE) or a continuing application A petition under 37…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 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…
Read MoreWhat are the requirements for submitting an IDS after the first Office action?
What are the requirements for submitting an IDS after the first Office action? When submitting an Information Disclosure Statement (IDS) after the first Office action on the merits, additional requirements apply: Timing: The IDS must be filed before the mailing date of a final action, notice of allowance, or other action that closes prosecution. Statement:…
Read MoreWhat are the requirements for an IDS filed after a final Office action or Notice of Allowance?
For an Information Disclosure Statement (IDS) filed after a final Office action, Notice of Allowance, or an Ex parte Quayle action, but before or with payment of the issue fee, the following is required: A statement under 37 CFR 1.97(e), and The fee set forth in 37 CFR 1.17(p) According to MPEP 609.04(b): An information…
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