TAKEAWAY: An IDS can be filed in various phases of prosecution, but each phase has its own requirements.
Inventors, patent practitioners, and other individuals associated with filing and/or prosecuting a patent application have a duty to disclose to the USPTO all information known to be “material” in determining patentability. This duty is ongoing throughout pendency of the application. The mechanism to submit “material” information to the USPTO is an information disclosure statement (IDS).
An IDS must be timely filed in order for the information to be officially considered by the USPTO. Guidelines for when and how an IDS may be submitted are provided in 37 C.F.R. § 1.97 and identify three different phases of prosecution:
Phase 1
An Applicant may file an IDS within three months after the U.S. filing date, before the mailing of a first office action on the merits, or before the mailing of a first office after the filing of a request for continued examination (RCE). No fees are required.
Phase 2
After phase 1 (e.g., once an office action has issued), an Applicant may file an IDS provided that it is before the mailing of a final office action, a notice of allowance, or an Ex-parte Quayle action. At this phase, the Applicant must pay a fee or submit a statement under 37 C.F.R. § 1.97(e) that the cited information was (1) first cited in a counterpart foreign application not more than three months before filing of the IDS, or (2) not cited in a foreign counterpart application and to the knowledge of the person making the statement, not known to any individual with the duty of disclosure more than three months before filing of the IDS.
Phase 3
After phase 2, an Applicant can only file an IDS before or with the payment of the issue fee together with a fee and a statement under 37 C.F.R. § 1.97(e). If a statement cannot be made, the Applicant must file an RCE to have the information in the IDS considered.
IDS after Payment of Issue Fee
If material information comes to light after the payment of the issue fee, an Applicant may file an IDS under the Quick Path Information Disclosure Statement (QPIDS) program if it is possible to make the statement under 37 C.F.R. § 1.97(e). The QPIDS program allows an Applicant to avoid the delay and cost of a RCE otherwise needed to obtain consideration of an IDS after payment of the issue fee. The QPIDS requirements also include submitting a petition to withdraw the application from issue and a conditional RCE with the associated RCE fee. A conditional RCE means that if the application remains allowable after consideration of the IDS, the examiner will acknowledge consideration of the IDS, and will not enter the RCE and return the RCE fee.
Information that is not material to patentability of the claims and/or cumulative to the information already of record is not required to be submitted to the USPTO.
In all, it is recommended to file an IDS as soon as possible to make sure all information will be considered and to avoid any additional costs.