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609.05 Examiner Handling of Information Disclosure Statements

MPEP SECTION SUMMARY

Information disclosure statements will be reviewed for compliance with the requirements of 37 CFR 1.97 and 37 CFR 1.98. Applicant will be notified of compliance and noncompliance with the rules.


609.05(a) Noncomplying Information Disclosure Statements

MPEP SECTION SUMMARY

Submitted information, filed before the grant of a patent, which does not comply with 37 CFR 1.97 and 37 CFR 1.98 will be placed in the file, but will not be considered by the Office. If an information disclosure statement does not comply with the requirements based on the time of filing of the IDS, including the requirements for fees and/or statement, the IDS will be placed in the application file, but none of the information will be considered by the examiner.



609.05(b) Complying Information Disclosure Statements

MPEP SECTION SUMMARY

The information contained in information disclosure statements which comply with both the content requirements and the requirements, based on the time of filing the statement, will be considered by the examiner. Consideration by the examiner of the information submitted in an IDS means that the examiner will consider the documents in the same manner as other documents in Office search files are considered by the examiner while conducting a search of the prior art in a proper field of search.


Information which complies with requirements as discussed in this section but which is in a non-English language will be considered in view of the concise explanation submitted and insofar as it is understood on its face, e.g., drawings, chemical formulas, in the same manner that non-English language information in Office search files is considered by examiners in conducting searches.

 

609.05(c) Documents Submitted as Part of Applicant’s Reply to Office Action

MPEP SECTION SUMMARY

Occasionally, documents are submitted and relied on by an applicant when replying to an Office action. These documents may be relied on by an applicant, for example, to show that an element recited in the claim is operative or that a term used in the claim has a recognized meaning in the art. Further information on these documents is covered here.


To the extent that a document is submitted as evidence directed to an issue of patentability raised in an Office action, and the evidence is timely presented, applicant need not satisfy the requirements of 37 CFR 1.97 and 37 CFR 1.98 in order to have the examiner consider the information contained in the document relied on by applicant.

  • In other words, compliance with the information disclosure rules is not a threshold requirement to have information considered when submitted by applicant to support an argument being made in a reply to an Office action.
  • However, consideration by the examiner of the document submitted as evidence directed to an issue of patentability raised in the Office action is limited to the portion of the document relied upon as rebuttal evidence; the entirety of the document may not necessarily be considered by the examiner.

 

» 609.07 IDSs Electronically Submitted (e-IDS) Using EFS-Web