How are documents submitted as part of an applicant’s reply to an Office action handled?

This page is an FAQ based on guidance 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.

Documents submitted as part of an applicant’s reply to an Office action are handled differently from regular Information Disclosure Statements:

• They do not need to comply with 37 CFR 1.97 and 37 CFR 1.98 to be considered
• The examiner will consider the portion of the document relied upon as rebuttal evidence
• The entire document may not necessarily be considered
• These documents are not processed as items cited in an IDS
• The record should reflect that the evidence was considered, but listing on forms like PTO-892 or PTO/SB/08 is not required

The MPEP states:

‘To the extent that a document is submitted as evidence directed to an issue of patentability raised in an Office action, and the evidence is timely presented, applicant need not satisfy the requirements of 37 CFR 1.97 and 37 CFR 1.98 in order to have the examiner consider the information contained in the document relied on by applicant.’

This approach allows for efficient consideration of evidence submitted in response to Office actions without the formal IDS requirements.