What is an information disclosure statement to the U.S. patent office?

An information disclosure statement (IDS) refers to a submission of known references that are considered material/relevant to an inventor’s patent application to the patent office. During the process of obtaining a patent, there is a duty for attorneys, inventors, assignees to disclose references such as other patents or articles that may be material or relevant to the invention. An IDS may be filed at any time during patent prosecution up until an issue fee has been paid for a patent application. However, there are additional costs associated with filing an IDS if there is a lapse of time greater than 3 months from when the information contained in the IDS was known by the inventors or patent attorney.

There is no duty of disclosure for an Applicant to search the internet or library to determine all references associated with a patent application. However, inventors and patent attorneys must disclose what is known to them and if an attorney, inventor, etc. fails to disclose a reference that is considered material to the subject matter of the patent application, a granted patent may be invalidated and declared unenforceable.

Material that is commonly cited in IDSs is art that is 1) cited in publications made by the inventors, 2) art that is discovered during a patentability opinion, 3) art that is cited in related patent applications, 4) art that inventors email their patent attorney’s asking if this art is relevant. Because art could be considered material in hindsight and attorneys do not want to be held liable for a lawsuit associated with an invalidated patent for a failing to disclose a material reference, patent attorneys should file IDS forms with all art that could be considered material, and not try to make a determination if the art is material.

Filing an IDS can be beneficial to patent attorneys, inventors and examiners. An IDS can help a patent examiner by limiting the amount of time the examiner is required to perform a search. Thus, the examiner can focus Office Actions to generate better office actions to speed up the process to obtain a patent. An IDS can help a patent attorney to amend claims around what is already known so an Applicant can obtain the broadest possible patent protection. An IDS helps an Applicant because if the patent is ever litigated, another company is likely to find the references that should have been cited in an IDS to invalidate the patent. If the references were considered by the patent office, then a jury may be more likely to give deference to the patent office which could save the patent from being invalidated due to obviousness.

By | 2013-01-07T11:03:32+00:00 January 7th, 2013|Patent Basics|Comments Off on What is an information disclosure statement to the U.S. patent office?