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 those patents on a PTO/SB/08 along with two journal articles, but does not file a statement under 37 CFR 1.97(e) or the fee set forth in 37 CFR 1.17(p), it would be appropriate for the examiner to indicate that the teachings relied on by applicant in the three patents have been considered, but to line through the citation of all five documents on the PTO/SB/08 and to inform applicant that the information disclosure statement did not comply with 37 CFR 1.97(c).”
In this case, the examiner would consider the evidence relied upon in the reply but would not formally consider the documents as part of the IDS due to non-compliance with IDS requirements.
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