609.04(b) Timing Requirements for an Information Disclosure Statement
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The procedures and requirements for submitting an information disclosure statement are linked to four stages in the processing of a patent application:
(1)
(a) for national applications (not including CPAs), within three months of filing, or before the mailing of a first Office action on the merits, whichever is later;
(b) for international applications, within three months of the date of entry of the national stage or before the mailing of a first Office action on the merits in the national stage application, whichever is later;
(c) for continued examinations (i.e., RCEs and CPAs, before the mailing of a first Office action on the merits;
(d) for international design applications, within three months of the date of publication of the international registration under Hague Agreement or before first Office action on the merits, whichever is later;
(2) after the period in (1), but prior to the prosecution of the application closes, i.e., before the mailing of a final Office action, a Notice of Allowance, or an Ex parte Quayle action, whichever is earlier;
(3) after the period in (2) but on or before the date the issue fee is paid; and
(4) after the period in (3) and up to the time the patent application can be effectively withdrawn from issue.
I. INFORMATION DISCLOSURE STATEMENT FILED BEFORE FIRST ACTION ON THE MERITS OR WITHIN THREE (3) MONTHS OF ACTUAL FILING DATE, NATIONAL STAGE ENTRY DATE, OR PUBLICATION UNDER ARTICLE 10(3) OF THE HAGUE AGREEMENT (37 CFR 1.97(b))
An information disclosure statement will be considered by the examiner if filed within any one of the following time periods:
- (A) for national applications (not including CPAs), within three months of the filing date of the national application or before the mailing date of a first Office action on the merits;
- (B) for international applications, within three months of the date of entry of the national stage or before the mailing date of a first Office action on the merits;
- (C) for RCEs and CPAs, before the mailing date of a 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 or before first Office action on the merits, whichever is later
An information disclosure statement filed within one of these periods requires neither a fee nor a statement under 37 CFR 1.97(e).
An information disclosure statement will be considered to have been filed on the day it was received in the Office, or on an earlier date of mailing if accompanied by a properly executed certificate of mailing or facsimile transmission, or if it is in compliance with the provisions of Priority Mail Express® delivery.
A. National Applications, International Applications, and International Design
The term “national application” includes continuing applications (continuations, divisions, and continuations-in-part but not CPAs), so three months will be measured from the actual filing date of an application as opposed to the effective filing date of a continuing application.
- For international applications, the three months will be measured from the date of entry of the national stage.
- For international design applications, the three months will be measured from the date of publication of the international registration
B. RCE and CPA
The three-month window as discussed above does not apply to a RCE or a CPA.
- An IDS filed after the filing of a RCE will be considered if the IDS is filed before the mailing date of a first Office action on the merits.
- A RCE is not the filing of an application, but merely the continuation of prosecution in the current application.
- After the mailing of a RCE, such application is treated as an amended application by the examiner and is subject to a short turnover time.
- Therefore, applicants are encouraged to file any IDS with the filing of a RCE.
- Similarly, an IDS filed in a CPA will be considered if the IDS is filed before the mailing date of a first Office action on the merits.
If an IDS cannot be filed before the mailing of a first Office action on the merits (generally within two months from the filing of the RCE or CPA), applicants may request a three-month suspension of action in an application at the time of filing of the RCE, or in a CPA, at the time of filing of the CPA.
- Where an IDS is mailed to the Office shortly before the expiration of a three-month suspension, applicant is requested to make a courtesy call to notify the examiner as to the IDS submission.
II. INFORMATION DISCLOSURE FILED AFTER I. ABOVE BUT BEFORE MAILING OF FINAL ACTION, NOTICE OF ALLOWANCE, OR AN EX PARTE QUAYLE ACTION (37 CFR 1.97(c))
An information disclosure statement will be considered by the examiner if filed after the period specified in subsection I. above, but prior to the date the prosecution of the application closes, i.e., before (not on the same day as the mailing date of any of the following:
- A final action, e.g., final rejection;
- A notice of allowance; or
- An action that closes prosecution in the application, e.g., an Ex parte Quayle action,
whichever occurs first, provided the information disclosure statement is accompanied by either
- A statement as specified in 37 CFR 1.97(e); or
- The fee.
If a final action, notice of allowance, or an Ex parte Quayle action is mailed in an application and later withdrawn, the application will be considered as not having had a final action, notice of allowance, or an Ex parte Quayle action mailed for purposes of considering an information disclosure statement.
- An Ex parte Quayle action is an action that closes the prosecution in the application.
A. Information is Used in a New Ground of Rejection
1. Final Rejection is Not Appropriate
If information submitted during the period set forth in 37 CFR 1.97(c) with a statement under 37 CFR 1.97(e) is used in a new ground of rejection on unamended claims, the next Office action will not be made final since in this situation it is clear that applicant has submitted the information to the Office promptly after it has become known and the information is being submitted prior to a final determination on patentability by the Office.
2. Final Rejection Is Appropriate
The information submitted with a statement under 37 CFR 1.97(e) can be used in a new ground of rejection and the next Office action can be made final, if the new ground of rejection was necessitated by amendment of the application by applicant.
- Where the information is submitted during this period with a fee, the examiner may use the information submitted, and make the next Office action final whether or not the claims have been amended, provided that no other new ground of rejection which was not necessitated by amendment to the claims is introduced by the examiner.
III. INFORMATION DISCLOSURE STATEMENT FILED AFTER II. ABOVE BUT PRIOR TO PAYMENT OF ISSUE FEE (37 CFR 1.97(d))
An information disclosure statement will be considered by the examiner if filed on or after the mailing date of any of the following: a final action under 37 CFR 1.113; a notice of allowance under 37 CFR 1.311; or an action that closes prosecution in the application, e.g., an Ex parte Quayle action, but before or simultaneous with payment of the issue fee, provided the statement is accompanied by:
- (A) a statement as specified in 37 CFR 1.97(e) (see the discussion in subsection V; and
- (B) the fee set forth in 37 CFR 1.17(p).
IV. INFORMATION DISCLOSURE STATEMENT FILED AFTER PAYMENT OF ISSUE FEE
After the issue fee has been paid on an application, it is impractical for the Office to attempt to consider newly submitted information.
- Information disclosure statements filed after payment of the issue fee in an application will not be considered but will merely be placed in the application file.
The application may be withdrawn from issue at this point so that the information can be considered in the application upon the filing of a RCE or in a continuing application filed.
- In this situation, a RCE, or a CPA (if the prior application is a design application), or a continuing application could be filed even though the issue fee had already been paid.
In May of 2012 the Office launched the Quick Path Information Disclosure Statement (QPIDS) Pilot Program.
- This pilot program allows, under specific circumstances, for the submission of an IDS after payment of the issue fee but prior to patent grant.
V. STATEMENT UNDER 37 CFR 1.97(e)
A statement under 37 CFR 1.97(e) must state either
- (1) that each item of information contained in the information disclosure statement was first cited in any communication from a foreign patent office in a counterpart foreign application not more than three months prior to the filing of the statement, or
- (2) that no item of information contained in the information disclosure statement was cited in a communication from a foreign patent office in a counterpart foreign application, and, to the knowledge of the person signing the statement after making reasonable inquiry, no item of information contained in the information disclosure statement was known to any individual designated in 37 CFR 1.56(c) more than three months prior to the filing of the statement.
Compliance with the statement requirement of 37 CFR 1.97(e) does not substitute for compliance with 37 CFR 1.704(d) when attempting to avoid reduction of patent term adjustment.
An international application filed under the Patent Cooperation Treaty, which designates the U.S., is not a counterpart foreign application for purposes of making the statement set forth in 37 CFR 1.97(e) and that applicants should consider the applicability of making the statement in 37 CFR 1.97(e)(2).
37 CFR 1.97(e)(1) is construed to include any information in a foreign patent office communication, including the communication itself, such as an Office action or search report.
While applicants are strongly encouraged to use the exact language of 37 CFR 1.97(e)(1) and/or 37 CFR 1.97(e)(2), it is not required so long as the language used by applicant conveys the exact same meaning.
The applicant may submit a single listing of references in an information disclosure statement along with two statements under 37 CFR 1.97(e).
VI. EXTENSIONS OF TIME (37 CFR 1.97(f))
No extensions of time for filing an information disclosure statement are permitted under 37 CFR 1.136(a) or (b).
- If a bona fide attempt is made to comply with the content requirements of 37 CFR 1.98, but part of the required content is inadvertently omitted, additional time may be given to enable full compliance.
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