Information
Disclosure
Statements
Jason Garbell
The Duty of Disclosure
 A duty to disclose all information known to be
material to patentability.
 Also called the duty of candor.
What is material information?
 Material information includes:
 Prior art printed publications (e.g., patent or scientific
publications).
 Prior art cited in search reports of a non-US patent office in
a counterpart application or highly related application
 Information relating to or from a co-pending US Patent
application.
 Related applications by the same applicant or inventors.
 Publications by the inventors.
 Public presentations at conferences or trade shows.
 Offers for sale or public uses of the invention.
 Information from litigations/oppositions.
What is material information?
 Material information includes:
 Prior art printed publications (e.g., patent or scientific
publications).
 Prior art cited in search reports of a non-US patent
office in a counterpart application or subject matter
related application
 Information relating to or from a co-pending US Patent
application.
 Related applications by the same applicant or inventors.
 Publications by the inventors.
 Public presentations at conferences or trade shows.
 Offers for sale or public uses of the invention.
 Information from litigations/oppositions.
What is material information?
 Material information includes:
 Prior art printed publications (e.g., patent or scientific
publications).
 Prior art cited in search reports of a non-US patent office in
a counterpart application or subject matter related
application
 Information relating to or from a co-pending US
Patent application.
 Related applications by the same applicant or inventors.
 Publications by the inventors.
 Public presentations at conferences or trade shows.
 Offers for sale or public uses of the invention.
 Information from litigations/oppositions.
Co-pending applications
 The USPTO will consider all information from any parent
application if the application is identified as a
continuation, divisional or continuation-in-part of
an earlier application.
 Still may want to submit an IDS to have the references from
the parent listed on the front cover of the patent.
 However, co-pending or related applications which are
not parent applications, but which have similar subject
matter must be disclosed to the USPTO.
 Similarly prior art references from such co-pending or
related applications may need to be disclosed if material to
patentability.
What is material information?
 Material information includes:
 Prior art printed publications (e.g., patent or scientific
publications).
 Prior art cited in search reports of a non-US patent office in
a counterpart application or subject matter related
application
 Information relating to or from a co-pending US Patent
application.
 Related applications by the same applicant or
inventors.
 Publications by the inventors.
 Public presentations at conferences or trade shows.
 Offers for sale or public uses of the invention.
 Information from litigations/oppositions.
What is material information?
 Material information includes:
 Prior art printed publications (e.g., patent or scientific
publications).
 Prior art cited in search reports of a non-US patent office in
a counterpart application or subject matter related
application
 Information relating to or from a co-pending US Patent
application.
 Related applications by the same applicant or inventors.
 Publications by the inventors.
 Public presentations at conferences or trade shows.
 Offers for sale or public uses of the invention.
 Information from litigations/oppositions.
What is material information?
 Material information includes:
 Prior art printed publications (e.g., patent or scientific
publications).
 Prior art cited in search reports of a non-US patent office in
a counterpart application or subject matter related
application
 Information relating to or from a co-pending US Patent
application.
 Related applications by the same applicant or inventors.
 Publications by the inventors.
 Public presentations at conferences or trade shows.
 Offers for sale or public uses of the invention.
 Information from litigations/oppositions.
Aids to comply with the Duty of
Disclosure
 1. Question the inventor about the origin of the invention
and its point of departure from the closest prior art.
 2. Question about possible public uses or sales.
 3. List prior publications, knowledge, patents, non-US
patents.
 4. Inquire as to who is the proper inventor and are there
any inventorship disputes.
 5. Ask if the “best mode” is disclosed.
 6. Remember to cite prior art cited in the specification.
The Duty of Disclosure Applies to:
 Each inventor
 Each attorney or agent who prepares or
prosecutes the application.
 Every other person who is substantively involved
in the preparation or prosecution of the
application and is associated with the inventor,
assignee or anyone who has an obligation to
assign.
The Duty Of Disclosure
 Failure to comply with the duty of disclosure can
result in a finding of inequitable conduct/fraud.
 The patent and related patent applications can be found
unenforceable and potential sanctions for fraud.
The Duty Of Disclosure
 The Duty extends until a patent is physically
granted.
 Thus, the Duty extends after a notice of allowance is
obtained but before grant.
 The soon to issue patent must be withdrawn from
issuance in order to submit the information.
 This is done by a petition and the filing of a request for
continued examination (RCE) or other continuation
application.
The Oath or Declaration
 An oath or declaration must be signed acknowledging this
duty of candor.
 Inventor must be able to understand the oath or declaration
so the oath or declaration may need to be translated.
Foreign Language References
 The duty does not require applicants to translate every
reference, but only for the applicant not to submit partial
translations or explanations that may mislead the USPTO.
 Options:
 Translate the entire reference
 Translate only the relevant part(s) of reference
 Provide a concise summary of the relevant part(s).
 Which one is better?
Inaccurate statements
 Care should be taken to insure that inaccurate statements
or inaccurate experiments are not introduced into the
specification or prosecution..
 `For example, stating that an experiment “was run” or “was
conducted” when it in fact was not run or conducted is a
misrepresentation.
 Caution, such errors can occur during translation.
Information Disclosure Statements
Period 1: Before first office action or within three months after
filing of the application.
Period 2: Before a final office action, notice of allowance or
communication which closes prosecution.
Period 3: After notice of an allowance, but before payment of the
issue fee.
Period 4: After payment of the issue fee.
Information Disclosure Statements
Period 1: Before first office action or within three months
after filing of the application.
Period 2: Before a final office action, notice of allowance or
communication which closes prosecution.
Period 3: After notice of an allowance, but before payment of
issue fee.
Period 4: After payment of issue fee.
Information Disclosure Statements
IDS submitted in Period 1 shall be considered.
No fee.
Information Disclosure Statements
Period 1: Before first office action or within three months after
filing of the application.
Period 2: Before a final office action, notice of allowance
or communication which closes prosecution.
Period 3: After notice of an allowance, but before payment of
issue fee.
Period 4: After payment of issue fee.
Information Disclosure Statements
An IDS submitted in Period 2, will be considered with either of
the following:
1) Statement that each item of information was cited in a
communication from a foreign patent office in a counterpart
foreign application not more than three months before
filing of the information disclosure statement, and that no
item of information was known to any individual with the
duty of disclosure more than three months before filing;
OR
2) an appropriate fee.
Information Disclosure Statements
Period 1: Before first office action or within three months after
filing of the application.
Period 2: Before a final office action, notice of allowance or
communication which closes prosecution.
Period 3: After notice of an allowance, but before payment
of issue fee.
Period 4: After payment of issue fee.
Information Disclosure Statements
Period 3: Submitted after Period 2, but before payment of issue
fee, will be considered with both of the following:
1) Statement that each item of information was cited in a
communication from a foreign patent office in a counterpart
foreign application not more than three months before
filing of the information disclosure statement, and that no
item of information was known to any individual with the
duty of disclosure more than three months before filing;
AND
2) an appropriate fee.
If you cannot make the statement, you must file an RCE or a
continuation.
Information Disclosure Statements
Period 1: Before first office action or within three months after
filing of the application.
Period 2: Before a final office action, notice of allowance or
communication which closes prosecution.
Period 3: After notice of an allowance, but before payment of
issue fee.
Period 4: After payment of issue fee.
Information Disclosure Statements
In Period 4, after you have paid the issue fee, the IDS will not
be considered.
Your only option is to:
(a) withdraw the application from issuance by a petition;
and
(b) file a request for continued examination (RCE) or other
continuation application.
Information Disclosure Statements
What if the patent has granted.
What options do you have?
- Reexamination
- Express abandonment
- Choose not to enforce all or part?
Information Disclosure Statements
Period 1: Before first office action or within three months
after filing of the application.
Period 2: Before a final office action, notice of allowance or
communication which closes prosecution.
Period 3: After notice of an allowance, but before payment of
issue fee.
Period 4: After payment of issue fee.
NOTE: The three month period in Period 1 does not apply to
RCE applications.
Information Disclosure Statements
 Good Practice Tips:
 Check to make sure the USPTO examiner signs off on all
IDS submissions and there are no non-complying IDS’s.
 Don’t forget non-parent or related applications
 Prior art from non-parent or related should also be
considered for submission
 Be careful when submitting only partial translations
 Don’t forget information cited in the Background on the
invention
Information Disclosure Statements
 Good Practice Tips:
 When translating a patent application into English for
submission to the USPTO, be careful of noting the correct
tense (e.g., changing a patent example from prophetic to
past tense can lead to inequitable conduct claims)
 Avoid long IDS lists, as you can be accused of burying
relevant prior art. If long lists are submitted, considering
bringing attention to those which have particular relevance.
 Consider memos to file explaining why a reference was not
submitted.
National Stage Applications
 The USPTO will consider the documents cited in the
international search report in a PCT national stage
application when form PCT/DO/EO/903 indicates that
both the international search report and the copies of the
documents are present in the national stage file.
Information Disclosure Statement
Format
 USPTO provides a form: PTO/SB/08
 Must include a list of all patents, publications, U.S.
applications or other information.
 The US patents and US patent publications are listed
separately.
 The non-US patents and patent publications are listed
separately.
 The non-patent literature is listed separately.
 Do not need to provide copies of US patents or US patent
publications.
QUESTIONS
JGar@novozymes.com