An Information Disclosure Statement (also known as an IDS) is a document (IDS form PTO/SB/08a) submitted to USPTO identifying the prior art (e.g., patents, publications, non-patent literature) you’re aware of. The purpose of the IDS is to satisfy your duty of candor and good faith in dealing with the USPTO. Failure to submit the IDS may breach this duty and invalidate your patent. Be safe and submit the prior art via the IDS.
The IDS is submitted while your utility or design patent application is pending with the USPTO. You are not required to submit the Information Disclosure Statement after your patent is granted or if your patent application has been abandoned.
Why you must file an Information Disclosure Statement?
First, failure to file the IDS may invalidate your patent. If you don’t submit the IDS, you may have breached your duty of candor and good faith in dealing with the United States Patent and Trademark Office (USPTO). This duty is imposed on everyone involved in the preparation and prosecution of the patent application. For example, the inventors, your patent attorney, investors, and anyone associated with the examination must satisfy this duty of candor and good faith.
The USPTO expects the inventor to be truthful and disclose information relevant to the patentability of the invention to help them examine the patent application. The examiner doesn’t have access to the information you have such as your first offer for sale, when you first posted information on the internet, or public demonstration of your invention.
Second, by filing the Information Disclosure Statement, you are deemed to have satisfied your duty of candor and good faith for the prior art you identified in the IDS. You can rest assured that during litigation, the infringer can’t accuse you of hiding the prior art to invalidate your patent. The information submitted in the IDS is deemed to have been formally considered by the examiner.
On the other hand, suppose you inform the Patent Office about the same information differently. For example, instead of using the approved IDS Form PTO/SB/08a to list and identify the prior art, you describe the prior art in the background section of the patent application.
You may have satisfied your duty of candor and good faith. However, during litigation, an infringer could argue that you breached your duty of candor and good faith. For example, if you characterized the prior art incorrectly no matter how slight, the infringer could accuse you of lying to the patent office. If so, your patent may be invalidated during litigation.
Be on the safe side. Submit your prior art information via the Information Disclosure Statement.
How to file an Information Disclosure Statement?
To submit the information disclosure statement, fill in the information requested on IDS form PTO/SB/08a. File it with the USPTO via Private PAIR per 37 CFR 1.98(a).
Here are the instructions for filling in the information requested on the IDS form (PTO/SB/08a).
Step 1: Fill in the Application Number, Filing Date, First Named Inventor, Art Unit, Examiner’s Name (if known), and the attorney docket number (if any) into the header section of the IDS form.
Step 2: Fill in the Patent Number, the Issue Date, and the Name of the Patentee or Applicant in the U.S. Patents section of the IDS form.
Step 3: Fill in the Publication Number, Publication Date, the Name of the Patentee, or Applicant of cited Document in the U.S. Patent Application Publications section of the IDS form. These are pre-grant publications of the patent applications, not the granted patents.
Step 4: Fill in the Foreign Document Number, Country Code, Publication Date, Name of Patentee, or Applicant of cited Document in the Foreign Patent Documents section of the IDS form. You must submit the foreign patent document and its English translation if you have one. An easy way to obtain a foreign language translation without having to pay for it is to search for the foreign language patent document in Google Patents. You may use the machine translation of foreign language documents.
Step 5: Fill in the name of the author, the title of the article, date, pages, volume-issue number(s), publisher, city, and/or country where the document was published for the Non-Patent Literature Documents section.
Step 6: Check one or more boxes in the Certification Statement. If the IDS is being submitted before the first Office Action, then a certification statement is not submitted herewith. If the IDS is being submitted after the first Office Action, then pay the fee or check one of the statements. If the IDS is being submitted after the Notice of Allowance, then check one of the statements and pay the fee.
Common questions when filling out the IDS form
What do you do if you are unsure of the data?
Submit the form within the period set forth in 37 CFR 1.97 as explained below even if you don’t have all of the data. If you are unsure of the information, list what you do know and submit the Information Disclosure Statement. It is important that you file the IDS on time. If more information is needed, the examiner will object to the IDS in an office action. Better to file the IDS on time with incomplete data than to submit the IDS late.
What date do you use for the publication date?
If you don’t enter a publication date for any of the documents, the examiner will not consider the document you submitted. If you know that the document was publicly available before your patent application’s filing date, you can enter “at least as early as [insert your application’s filing date]”.
If you enter a month and year, the assumption is that the date is the last day of that month and the stated year.
What prior art documents should you submit in the Information Disclosure Statement?
You need to submit any document the examiner could use to reject your patent application. The legal standard is material information or information that the examiner would consider useful in reviewing your patent application. If the document is dated after the filing of your patent application, it is not prior art. You don’t need to submit it.
Over time, you may have forgotten about some prior art you saw a long time ago. Inadvertently, you may not submit these prior art documents. Here is a checklist of potentially prior art information that you should look up and submit with the Information Disclosure statement.
- Any prior art document you found during a prior art search that you or your patent attorney conducted.
- Any prior art document in a related U.S. or foreign patent application. The related patent application may be related via a claim of priority or due to a similar subject matter.
- Any offers for sale (even if to one person) you made more than one year before the filing date of the patent application.
- Your web pages that disclose the invention if you published the web page more than one year before the filing date of the patent application.
- Any public disclosures or demonstrations you made during a trade show or other event more than one year before the patent application’s filing date.
If you are unsure whether a document is material to the invention’s patentability, submit it in the IDS. No good reason exists to withhold the information from the patent office. Generally, there is no detriment for filing too much information.
Here’s the logic.
If it is related, then you must submit it. Otherwise, you committed inequitable conduct in getting your patent. Your patent will then be invalid.
If it is genuinely unrelated, the examiner will consider it irrelevant.
If the examiner finds it related, it was the right decision to submit it.
What kind of information should you list in your information disclosure statement?
Inventors often think that their own products are not prior art. However, any offer for sale, public demonstration, or printed publication made more than one year prior to the filing date of the patent application is prior art. If the inventor attended a trade show more than one year prior to the filing date of the patent application, the products and services discussed at the trade show are prior art that needs to be submitted in the IDS.
A webpage on the inventor’s website or a product listing on Amazon is prior art if it occurred more than one year before the filing of the patent application.
Do you have to search for prior art to prepare and submit the IDS?
You don’t have to conduct a prior art search to find things to submit in the IDS. The duty of candor and good faith does not impose a duty to search for prior art. You are not required to do the job of the examiner. The examiner will conduct their patent search to determine if your invention is novel and non-obvious.
When do you file the Information Disclosure Statement?
Typically, one IDS is filed within three months after filing the patent application. You file the results of your patent search and any other documents you found before you hired your patent attorney. The results of any formal patent search are also submitted in the IDS.
One or more IDSs may be filed during the pendency of the patent application. As you find more prior art references, additional information disclosure statements have to be filed to submit those newly uncovered prior art references.
37 CFR 1.97 sets forth the timing of when you should file the IDS and whether the examiner will consider the prior art you submit.
Suppose you file the IDS within three months of the patent application’s filing date. In that case, the examiner must consider the information you submit in the IDS.
Suppose you file the IDS after three months but before the first office action. In this case, the examiner must still consider the information you submit in the IDS.
If you file the IDS after the Patent Office mails you an office action, you can still file the IDS to satisfy your duty of candor and good faith. You must file the IDS within three months from the date you became aware of the prior art document or information and pay a government fee.
Generally speaking, the Patent Office wants you to tell them of any prior art information as soon as possible but not later than three months. If you submit it within the three-month period, you can typically submit it. Sometimes, it may require a fee.
What should you do if prior art is uncovered after the final office action or Notice of Allowance?
Report it to your patent attorney immediately. The prior art needs to be submitted to the Patent Office within 3 months after it is uncovered for it to be considered by the Patent Office. You will have to make a statement that you didn’t know about the newly uncovered prior art for more than 3 months and pay a fee.
Oftentimes, inventors don’t want to submit newly submitted prior art because the examiner might withdraw the notice of allowance. That is a possible outcome.
However, the inventor still has a duty of candor and good faith to the patent office. As such, the newly uncovered prior art needs to be submitted to the patent office. Failure to submit the new prior art may jeopardize the validity of the patent and any related patent.
What do you do if prior art is uncovered after payment of the issue fee?
Once again, immediately let your patent attorney know. The patent will grant within about 4 to 6 weeks after payment of the issue fee. As such, you don’t have much time to file the IDS. You can file the IDS under the Quick Path Information Disclosure Statement, also known as QPIDS. Along with the documents identified above, you must submit QPIDS form PTO/SB/09 form.
Do not identify prior art references in the patent specification
Generally, I don’t recommend listing the prior art references in the patent specification.
First, they are not formally considered by the examiner. On the other hand, if you list the prior art references in the Information Disclosure Statement, the references are formally considered by the examiner, and thus the patent is presumed valid over those prior art references.
Second, you should keep the prior art or background section as short as possible. No patent has ever been granted on a beautifully crafted BACKGROUND. The background is just that, the background of the invention. It describes nothing about the invention. Anything you say in the background can and will be used against you. The bottom line is to keep the background as short as possible.