How to Prepare the Information Disclosure Statement. Episode 24

(The original episode aired in 2018, some information may not be up to date.)

Documents to File Along with a Patent Application

So far, we have covered how to prepare utility and design patent applications for submission to the Patent Office.

Before submitting an application, there are additional documents that are either required or strongly recommended:

• Information Disclosure Statement (IDS)

• Application Data Sheet (ADS)

• Declaration

• Power of Attorney (if a patent attorney is filing on your behalf)

In this episode, I will go through the Information Disclosure Statement (IDS), sometimes called an IDS for short.

What Is an Information Disclosure Statement?

If you remember from the episode on patent searches, there is no requirement that you perform a patent search before filing an application.

• The Patent Office conducts its own search.

• However, if you have done a search and are aware of similar inventions that might affect whether your patent can be granted, you must disclose that information to the Patent Office.

• This disclosure is made through the Information Disclosure Statement (IDS).

The Legal Requirement for Disclosure

• The rule states that you must disclose anything material to patentability.

• Courts have determined this to mean:

Any information that a reasonable examiner would be substantially likely to consider important in deciding whether to allow an application to issue as a patent.

If it is later discovered that you knew of relevant prior art and failed to disclose it, your patent can become unenforceable.

Bottom line: Do not hide anything.

• The Patent Office will likely find it anyway, especially if it is a published patent or application.

• Even if the reference is not a patent, list it anyway if it could affect patentability.

How to Fill Out an IDS (USPTO Form SB/08a)

The IDS form is available on the USPTO website.

• Search for “USPTO Information Disclosure Statement Form SB/08a.”

Filling Out the Top Section

• If you are filing the IDS at the same time as your application, you will not yet have:

• An application number

• A filing date

• An examiner name

• An art unit

Leave these boxes blank.

• Fill in the first named inventor’s name.

• There is a box for Attorney Docket Number (optional):

• This is just a tracking number used by attorneys.

• You can create your own (e.g., Smith2018).

• You may also leave it blank.

Citing U.S. Patents in an IDS

If you are citing a U.S. patent (not a patent application), enter:

1. Patent number

2. Kind code (e.g., B2 for a granted patent that was first published as an application; S for a design patent)

3. Issue date (the date the patent was granted)

4. First inventor’s last name (or the applicant’s name)

5. Relevant pages, columns, or figures (optional; most people write “Entire”)

Citing U.S. Patent Applications

If you are citing a U.S. patent application publication (not a granted patent), enter:

1. Publication number (starts with the year followed by seven digits)

• Do not enter the application number (which has a slash in it).

2. Kind code

3. Publication date

4. First inventor’s last name

5. Relevant pages, columns, or figures (optional)

Citing Foreign Patents

If citing a foreign patent or patent application, enter:

1. Patent number

2. Country code (two-letter country code: US = United States, FR = France, BR = Brazil, WO = PCT application)

3. Publication date

4. First inventor’s last name

5. Relevant pages, columns, or figures (optional)

• If citing a foreign patent, you must submit a copy to the USPTO.

• If it is in a foreign language, you must also submit an English translation.

Citing Non-Patent Literature

Non-patent literature includes:

• Scientific journal articles

• Websites

• Technical manuals

The form provides a specific format for citing:

• Author’s name

• Title of the article

• Journal name

• Publication year

• You must also submit a copy of the non-patent literature to the USPTO.

• Check the appropriate box to indicate that you are submitting the reference.

What Not to Fill Out

At the bottom of the IDS form, you will see:

• Examiner signature

• Date considered

Do not fill these out—they are for the examiner only.

The Certification Statement (Page 2 of the IDS Form)

There are rules about when you can submit an IDS and whether you need to pay a fee.

• The easiest and most cost-effective time to file an IDS is when you file your application.

• If filing at the same time as your application, check the box:

• “A certification statement is not submitted herewith.”

Then:

• Print your name.

• Sign and date the form.

• If you are not a patent attorney, leave the registration number blank.

What If You Discover a Reference Later?

• If you discover prior art after filing but before the first Office Action, you can still submit an IDS for free.

• If the Patent Office has already started examining your application, you may:

• Have to certify when you discovered the reference.

• Pay a small fee ($60-$120, depending on income status).

If you need to submit an IDS late in the process, refer to:

• Manual of Patent Examining Procedure (MPEP) Section 609 for exact rules.

Should You File an IDS If You Didn’t Do a Patent Search?

If you never did a patent search and are not aware of any relevant prior art, you do not need to file an IDS.

However, I recommend:

• Doing a simple patent search to find similar inventions.

• Listing at least a couple of relevant references.

Better to err on the side of including a reference rather than excluding one.

Final Thoughts on the IDS

• Do not withhold relevant prior art—it can make your patent unenforceable.

• Only include relevant references—do not try to hide a reference among irrelevant ones.

• Disclose foreign patents and non-patent literature when applicable.

Next Episode: Application Data Sheet (ADS)

In the next episode, I will go over the Application Data Sheet (ADS)—a form that provides basic information about your patent application.

Need Help With Your Patent Application?

If you need help drafting your patent application, connect with me! I'm Adam Diament, and until next time—keep on inventing!