609.04(a) Content Requirements for an Information Disclosure Statement
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I. LIST OF ALL PATENTS, PUBLICATIONS, U.S. APPLICATIONS, OR OTHER INFORMATION
Each information disclosure statement must include a list of all patents, publications, U.S. applications, or other information submitted for consideration by the Office.
37 CFR 1.98(a)(1) requires the following format for an IDS listing:
- A specified format/identification for each page of an IDS, and that U.S. patents and U.S. patent application publications be listed in a section separately from citations of other documents;
- A column that provides a space next to each document listed to permit the examiner’s initials; and
- A heading that identifies the list as an IDS.
U.S. patents and U.S. patent application publications be listed separately from the citations of other documents.
- Each page of the list must clearly identify the application number of the application in which the IDS is being submitted, if known.
- The list must include a column that provides a space next to each document listed in order to permit the examiner to enter his or her initials next to the citations of the documents that have been considered by the examiner.
- Each page of the list include a heading that clearly indicates that the list is an IDS.
Each item of information in an IDS be identified properly.
- U.S. patents must be identified by the inventor, patent number, and issue date.
- U.S. patent application publications must be identified by the applicant, patent application publication number, and publication date.
- U.S. applications must be identified by the inventor, the eight digit application number (the two digit series code and the six digit serial number), and the filing date.
- If a U.S. application being listed in an IDS has been issued as a patent or has been published, the applicant should list the patent or application publication in the IDS instead of the application.
- Each foreign patent or published foreign patent application must be identified by the country or patent office which issued the patent or published the application, an appropriate document number, and the publication date indicated on the patent or published application.
- Each publication must be identified by publisher, author (if any), title, relevant pages of the publication, and date and place of publication.
The list of information complying with the format requirements and the identification requirements may not be incorporated into the specification of the application in which it is being supplied, but must be submitted in a separate paper.
The Office will accept a citation in an IDS where a U.S. patent application publication is identified using the inventor instead of the applicant.
For publications obtained from the Internet, the uniform resource locator (URL) of the Web page that is the source of the publication must be provided for the place of publication (e.g., "www.uspto.gov").
II. LEGIBLE COPIES
In addition to the list of information, each information disclosure statement must also include a legible copy of:
- (A) Each foreign patent;
- (B) Each publication or that portion which caused it to be listed , other than U.S. patents and U.S. patent application publications unless required by the Office;
- (C) For each cited pending unpublished U.S. application, the application specification including the claims, and any drawings of the application, or that portion of the application which caused it to be listed including any claims directed to that portion, unless the cited pending U.S. application is stored in the Image File Wrapper (IFW) system. The requirement for a legible copy of the specification, including the claims, and drawings of each cited pending U.S. patent application (or portion of the application which caused it to be listed) is sua sponte waived where the cited pending application is stored in the USPTO’s IFW system; and
- (D) All other information or that portion which caused it to be listed.
The requirement for a copy of each U.S. patent or U.S. patent application publication listed in an IDS, has been eliminated, unless required by the Office.
37 CFR 1.98(a)(2)(iii) requires a copy of a pending U.S. application that is being cited in an IDS if:
- The cited information is not part of the specification, including the claims, and the drawings (e.g., an Office Action, remarks in an amendment paper, etc.), or
- The cited application is not stored in the USPTO’s IFW system.
A pending U.S. application only identified in the specification’s background information rather than being cited separately on an IDS listing is not part of an IDS submission.
37 CFR 1.98(c) states that when the disclosures of two or more patents or publications listed in an information disclosure statement are substantively cumulative, a copy of one of the patents or publications may be submitted without copies of the other patents or publications provided that a statement is made that these other patents or publications are cumulative.
If a written English language translation of a non-English language document, or portion thereof, is within the possession, custody or control of, or is readily available to any individual designated in 37 CFR 1.56(c), a copy of the translation shall accompany the statement.
III. CONCISE EXPLANATION OF RELEVANCE FOR NON-ENGLISH LANGUAGE INFORMATION
Each information disclosure statement must further include 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 listed that is not in the English language.
- The concise explanation may be either separate from the specification or part of the specification.
- If the concise explanation is part of the specification, the IDS listing should include the page(s) or line(s) numbers where the concise explanation is located in the specification.
The requirement for a concise explanation of relevance is limited to information that is not in the English language.
If information cited or submitted in a prior application was not in English, a concise explanation of the relevance of the information to the new application is not required unless the relevance of the information differs from its relevance as explained in the prior application.
- The concise explanation may indicate that a particular figure or paragraph of the patent or publication is relevant to the claimed invention.
- Although a concise explanation of the relevance of the information is not required for English language information, applicants are encouraged to provide a concise explanation of why the English-language information is being submitted and how it is understood to be relevant.
- There is no requirement that a translation submitted with an information disclosure statement be verified.
An English language equivalent application should be separately listed and identified as an English language equivalent in an information disclosure statement.
» 609.04(b) Timing Requirements for an Information Disclosure Statement
