Context: Duty of Disclosure
The USPTO imposes a duty of candor and good faith in dealing with the USPTO upon each individual associated with the filing and prosecution of a patent application. The duty of candor and good faith includes a duty to disclose to the USPTO all information material to patentability known to each said individual.
Who has a duty of disclosure?
The duty of disclosure falls on everyone associated with the preparation, filing, or prosecution of a patent application. This includes:
- Each inventor named in the application,
- Each attorney or agent who prepares or prosecutes the application, and
- Every other person (i) who is substantively involved in the preparation or prosecution of the application and (ii) who is associated with the inventor, the applicant, an assignee, or anyone to whom there is an obligation to assign the application.
How do I meet the duty of disclosure?
The duty of disclosure is accomplished by submitting an Information Disclosure Statement (IDS) containing the material information to the United States Patent and Trademark Office (USPTO).
The duty of disclosure continues throughout the life of a patent application; anytime new information is discovered (for example, cited in a related patent application or foreign counterpart patent application), this information should be disclosed to the USPTO in a timely manner.
What is an Information Disclosure Statement?
An Information Disclosure Statement (IDS) is a form filed with the USPTO in a U.S. patent application listing information that may be material to the patentability of the subject application (i.e., relevant information) that is known to individuals associated with that patent application.
Do I need to file an IDS in all U.S. patent applications?
The duty of disclosure only exists for U.S. nonprovisional patent applications, i.e., utility, design, and plant patent applications. Thus, an IDS only needs to be filed in a U.S. nonprovisional patent application.
- An IDS may not be filed in a U.S. provisional patent application.
Do I have to search for references to disclose?
No searching is necessary; however, if a search has been performed, the relevant references found in the search must be disclosed.
Do I have to disclose relevant information?
Yes. Disclosure of relevant information is compulsory in order for a patent application to proceed to grant; failure to disclose all known information material to patentability may result in refusal to grant a patent or cancellation of a granted patent for violation of the duty of disclosure through bad faith or intentional misconduct.
Disclosing information to the USPTO is not construed to be an admission that the information is, or is considered to be, material to patentability. Disclosure is required by the USPTO to assure good faith in the application proceedings.
What kind of information should be disclosed?
Information that is “material to patentability” should be disclosed. Information is “material to patentability” if it is relevant to the invention claimed in your patent application; that is if the information establishes a prima facie case of patentability.
This information includes patents, patent applications, patent application publications, products, and any other publication (e.g., articles, research papers, videos, books, products, etc.) relevant to the claimed invention.
- If a reference is a patent or published patent application, it will need to be disclosed if the filing date of the patent or published application predates the filing date or priority date of your patent application.
- If the reference is non-patent literature (books, articles, products, etc.), it should be disclosed if the first date the item was published, offered for sale, used, or known predates the filing date or priority date of your patent application.
Can I file more than one IDS?
You can file more than one IDS in a single patent application, and it is common to file more than one IDS throughout the prosecution of a U.S. patent application. There are several reasons to file more than one IDS, which you should discuss with your patent attorney.
Is there a government fee to file an IDS?
Sometimes a government fee must be paid when filing an IDS, but it depends on when the IDS is filed (see below). The government fee ranges from $52 to $260, depending on the entity status of the patent applicant.
When should I file an IDS?
You can file an IDS at any time during the pendency of a patent application. It's best to meet the duty of disclosure within one of the following windows to avoid a government fee:
- Within three (3) months of filing an application
- Within three (3) months of when new information is made known to an individual associated with the patent application
- Within three (3) months of when the information was cited in a counterpart foreign patent application
It is possible to disclose information after these time periods with the payment of a USPTO fee. However, if you file an IDS after three months from the application filing date but before a first Office Action, no fee is due.
You never know when the USPTO will issue the first Office Action, so the sooner an IDS is filed, the better!
*The information on this webpage is not legal advice and should not be relied on. The content of this webpage is for informational purposes only and is meant as a starting point in your search for answers to your legal questions.
Relevant law