Duty of Disclosure and Information Disclosure Statements

One very important and critical aspect of the patent examination process with the United States Patent and Trademark Office (USPTO) is the Information Disclosure Statement, also known as IDS for short. Most people who are new to the patent world have not heard of an IDS before and do not know the importance of them. Whereas others who are well versed in the patent world are very adamant and aware of the duty to disclose information material to patentability of a patent application to the USPTO by way of an IDS in accordance with 37 CFR § 1.56, 37 CFR § 1.97 and 37 CFR § 1.98. We will discuss how integral an IDS is to the patent process further because it is the applicant’s duty to work in good faith with the USPTO to inform them of any prior art that applicant is aware of up to the issuance of a patent. Prior art is described as any evidence/references/information publicly known before the effective filing date of a patent application, whether it be an already existing product, patent application or publication of the product. The USPTO considers the references disclosed on the IDS when reviewing the filed patent application during examination.

An IDS is a submission that is used regularly with the USPTO. This is where you list out known United States and foreign patents, United States and foreign patent publications and non-patent literature that is related and relevant to your invention and file said document with the USPTO. Examples of non-patent literature are articles that explain and go into detail about an invention that is similar, webpages, YouTube videos, and/or Amazon/Google shop pages that also have similar products listed.

You may be thinking, well how would I know even what to disclose? Let’s start out with how you even get to that point in the first place. First off, a person comes up with an idea/invention/technology for which they would  like to file a patent application. When you are informing your patent attorney about the idea/invention/technology, you would let them know that you were aware of an existing product and where you found it/saw it. That is part of the disclosure process and would be added to the IDS for filing with the USPTO.

Throughout prosecution of the application, if the Applicant or the inventors of the patent application become aware of any other prior art after the initial IDS filing, a supplemental IDS will need to be filed. As mentioned above, you have an ongoing duty to disclose and work in good faith with the USPTO throughout the examination process. If the Applicant, inventors or patent attorneys know of a reference and do not disclose it during the examination phase, any issued patent (thereafter) could become invalid.

If you have any questions about Information Disclosure Statement filings, please contact a patent attorney to seek advice.