What are the consequences of listing references in the specification instead of an IDS?
Listing references in the specification instead of submitting them in a proper Information Disclosure Statement (IDS) can have significant consequences. The MPEP 609.05(a) addresses this issue with form paragraph 6.49.06:
The listing of references in the specification is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, applications, or other information submitted for consideration by the Office, and MPEP ยง 609.04(a), subsection I. states, ‘the list may not be incorporated into the specification but must be submitted in a separate paper.’ Therefore, unless the references have been cited by the examiner on form PTO-892, they have not been considered.
This means that references listed in the specification:
- Are not considered a proper IDS
- Will not be considered by the examiner unless cited on form PTO-892
- Must be submitted separately in a proper IDS to ensure consideration
To ensure all relevant prior art is considered, applicants should always submit references in a separate, properly formatted IDS rather than listing them in the specification.
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