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 § 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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