609.01 Examiner Checklist for Information Disclosure Statements
|
Examiners must check to see if an information disclosure statement (IDS) complies with:
(A) All the time-related requirements of 37 CFR 1.97, which are based on the time of the filing of the IDS.
Time when IDS is filed |
Requirements |
(1)(a) for national applications (not including CPAs), within three months of filing or before first Office action on the merits, whichever is later; (b) for national stage applications, within three months of entry into national stage or before first Office action on the merits, whichever is later; (c) for RCEs and CPAs before the first Office action on the merits; or (d) for international design applications, within three months of the date of publication of the international registration under Hague Agreement Article 10(3) or before first Office action on the merits, whichever is later. |
None |
(2) After (1) but before final action, notice of allowance, or Quayle action |
1.97(e) statement or 1.17(p) fee. |
(3) After (2) and before (or with) payment of issue fee. |
1.97(e) statement, and 1.17(p) fee. |
(4) After payment of issue fee. |
IDS will not be considered. |
(B) All content requirements of 37 CFR 1.98.
(1) Requirements for the IDS listing:
(a) A separate section for citations of U.S. patents and U.S. patent application publications;
(b) The application number of the application in which the IDS is being submitted on each page of the listing, if known;
(c) A column that provides a blank space next to each citation for the examiner’s initials when the examiner considers the cited document; and
(d) A heading on the listing that clearly indicates that the list is an Information Disclosure Statement;
(e) Proper identification of all cited references:
(i) U.S. patents cited by patent number, issue date and inventor(s);
(ii) U.S. patent application publications cited by publication number, publication date and inventor(s);
(iii) Pending U.S. applications cited by application number, filing date and inventor(s);
(iv) Foreign patent documents cited by document number (including kind code), country and publication or issue date; and
(v) Non-patent literature cited by publisher, author (if any), title, relevant pages, and date and place of publication.
(2) The requirement of copies for:
(a) Each cited foreign patent document;
(b) Each cited non-patent literature publication, or the portion therein which caused it to be listed;
(c) Each cited U.S. pending application that is not stored in IFW;
(d) All information cited (e.g., an affidavit or Office action), other than the specification, including claims and drawings, of a pending U.S. application; and
(e) All other cited information or the portion which caused it to be listed.
(3) For non-English documents that are cited, the following must be provided:
(a) A concise explanation of the relevance, as it is presently understood by the individual designated in 37 CFR 1.56(c) most knowledgeable about the content of the information, unless a complete translation is provided; and/or
(b) A written English language translation of a non-English language document, or portion thereof, if it is within the possession, custody or control of, or is readily available to any individual designated in 37 CFR 1.56(c).
» 609.02 Information Disclosure Statements in Continued Examinations or Continuing Applications
