8.2 Information Disclosure Statements (IDS) Requirements

To satisfy the duty of disclosure set forth in 37 C.F.R. § 1.56, applicants submit prior art and material information to the USPTO through an Information Disclosure Statement (IDS). Submitting an IDS is an administrative procedure governed strictly by two regulations: 37 C.F.R. § 1.98 (which dictates what must be submitted) and 37 C.F.R. § 1.97 (which dictates when and under what conditions it must be submitted). Understanding the interplay between timing tiers, fee requirements, and certification statements is one of the most frequently tested areas on the Patent Bar examination.

Content Requirements: 37 C.F.R. § 1.98

Under 37 C.F.R. § 1.98(a), a complete and compliant Information Disclosure Statement must include four distinct items:

1. Itemized Listing (Form PTO/SB/08a/08b): A list of all patents, publications, applications, or other information submitted for consideration. Standard forms PTO/SB/08a (for U.S. patents and application publications) and PTO/SB/08b (for foreign documents and non-patent literature) or their electronic equivalents (e-IDS) must be used.
2. Legible Copies of References: A legible copy of:
   • Each foreign patent document listed.
   • Each non-patent literature (NPL) item listed (e.g., journal articles, conference papers, website printouts).
   • Crucial Exception: Under 37 C.F.R. § 1.98(a)(2)(iii), copies of U.S. patents and U.S. patent application publications do not need to be submitted unless specifically requested by the examiner, as the USPTO maintains internal electronic access to U.S. patent records.
3. Concise Explanation of Relevance: For each cited foreign document or NPL item that is not in the English language, the applicant must provide either:
   • A complete English translation, OR
   • A concise explanation of the relevance of the document (e.g., an English-language abstract or a statement indicating which specific claims or disclosure passages relate to the claimed invention) under 37 C.F.R. § 1.98(a)(3).
4. Compliance with Timing and Fee Provisions: Submission of appropriate fees or certifications as mandated by 37 C.F.R. § 1.97.

If an IDS fails to comply with any requirement of § 1.98, the examiner will place the submission in the File Wrapper but will not initial or consider the non-compliant references, and the applicant will be notified of the defect.

The Three Timing Tiers: 37 C.F.R. § 1.97

The procedural obligations associated with filing an IDS depend entirely on when during examination the statement is filed. Section 1.97 divides application prosecution into three distinct timing periods or "tiers":

The 37 C.F.R. § 1.97(e) Certification Statement

When filing an IDS under Tier 2 (to avoid paying a fee) or Tier 3 (where certification is mandatory alongside the fee), the applicant must include a formal certification signed by an authorized individual (inventor, practitioner of record, or assignee). Under 37 C.F.R. § 1.97(e), the statement must certify to either of the following two provisions:

• 37 C.F.R. § 1.97(e)(1): That each item of information contained in the IDS was first cited in a communication from a foreign patent office in a counterpart foreign application not more than three months prior to the filing of the IDS; OR
• 37 C.F.R. § 1.97(e)(2): That no item of information contained in the IDS was cited in a communication from a foreign patent office, and to the knowledge of the person signing the certification after reasonable inquiry, no item of information contained in the IDS was known to any individual designated in § 1.56(c) more than three months prior to the filing of the IDS.

Essential Exam Rules for § 1.97(e) Certifications:

1. Strict 3-Month Window: The 3-month period runs from the date of the foreign office communication or the date the reference was first known to a Rule 56(c) individual to the date of filing the IDS.
2. No Extensions of Time: The 3-month time period in § 1.97(e) cannot be extended under 37 C.F.R. § 1.136(a) or (b).
3. Cannot Combine Tiers: If an applicant misses the 3-month window under § 1.97(e) in Tier 3 (after Notice of Allowance), the IDS cannot be considered by the examiner under § 1.97(d). The applicant must instead file a Petition to Withdraw the Application from Issue under 37 C.F.R. § 1.313 or file a Request for Continued Examination (RCE) under 37 C.F.R. § 1.114.

Submissions After Payment of Issue Fee

Once the Issue Fee has been paid, the USPTO will not consider any Information Disclosure Statement filed under 37 C.F.R. § 1.97. An IDS submitted after issue fee payment will simply be placed in the file wrapper unconsidered.

To have prior art considered after issue fee payment, the applicant must successfully petition to withdraw the application from issue under 37 C.F.R. § 1.313(c)(2) for the purpose of filing an RCE and submitting the IDS, or participate in special USPTO programs such as the Quick Path Information Disclosure Statement (QPIDS) program.