Ten Mistakes to Avoid When Drafting Information Disclosure Statements

Preparing an Information Disclosure Statement (IDS) can be stressful. The United States Patent and Trademark Office (USPTO) has very strict guidelines which must be followed precisely to avoid errors. Failure to adhere to these guidelines will result in additional costs and time spent in filing the Information Disclosure Statement (IDS). Often, errors are made due to changes in requirements made by the USPTO, failing to adhere to deadlines, and lack of providing adequate reference materials. While these mistakes can happen frequently, there are steps patent filers and intellectual property (IP) professionals can take to avoid errors. Below are some of the most common IDS-related mistakes made by patent filers and practitioners.

1. Failing to stay current with the USPTO’s IDS requirements – The USPTO constantly updates its processes and fees. The office has implemented the Quick Path Information Disclosure Statement (QPIDS) process to eliminate the requirement for processing of a request for continued examination (RCE) with an IDS filed after payment of the issue fee in order for the IDS to be considered by the examiner. Where the examiner determines that no item in the IDS necessitates reopening prosecution, the USPTO will issue a corrected notice of allowance. Check the USPTO site to see if you need to certify your IDS and pay a fee. Though staying up to date on changes can be challenging, any attempt to streamline IDS forms will have a positive effect. This will likely reduce delays and speed the patent application process.
2. Failing to update an IDS after discovering previously unknown prior art – Applicants must continue to share prior art references throughout the patent application process. A supplemental IDS must be submitted if prior art is discovered through a foreign patent application or an International Patent Search, or a related application.
3. Not filing an IDS on time, thus incurring fees – An IDS can be filed without payment of a fee if filed within three months from the original USPTO filing date or before a first Office Action is issued, or if prior art was first revealed in a counterpart foreign application less than three months prior; IDS can be filed with payment of a fee if filed before the mailing of a final Office action, a Notice of Allowance, or an Ex parte Quayle action.
4. Failing to date the IDS form properly before submitting – Care must be taken to follow date format requirements exactly.
5. Failing to submit copies of foreign references and non-patent literature with an IDS in USPTO acceptable format and forgetting to attach translation of non-English references – The USPTO has specific format requirements for foreign references and non-patent literature. Do not rely on computer translation for non-English references, as machine translation is not completely accurate.
6. Not labelling reference documents as per cite numbers.
7. Issues related to human error – U.S., foreign and non-patent literature information needs to be searched and entered on the IDS forms manually. Most patent professionals use spreadsheets to handle IDS reference management, resulting in human errors.
8. Duplicate submission – Cross-checking all the references identified during the search with previously submitted ones to identify new and uncited prior art is repetitive and error prone.
9. Failing to submit an IDS with references that are mentioned in the body of the application – only references cited in an IDS are considered by the Examiner.
10. Failing to resubmit a corrected IDS – if an initial submission of an IDS is deemed non-compliant, it will typically not be considered by the Examiner.

There are steps patent filers and IP professionals can take to minimize the potential for error. Keeping current on all USPTO IDS requirements can be of great help. Often, just double checking the work before filing helps to identify errors or omissions. Some organizations have implemented a detailed workflow which involves having multiple levels of professionals within the organization review the IDS file before filing. Having several different sets of eyes can be extremely useful in catching errors and omissions prior to actually filing. It takes a bit of extra time but results in far less time having to correct errors. IP professionals may also wish to consider a software solution to automate some or all of the process, such as automatically checking for prior art, searching foreign references, auditing payments, and providing deadline alerts directly from the USPTO.

Keeping these simple steps in mind, organizations of all sizes can eliminate errors and remove much of the frustration inherent in the IDS process.

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