Examiners must check to see if an information disclosure statement (IDS) complies with:
· (A) All the time-related requirements of 37 CFR 1.97, which are based on the time of the filing of the IDS. See MPEP § 609.04(b) for more information.
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Time when IDS is filed |
37 CFR 1.97 Requirements |
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(1)(a) for national applications (not including CPAs), within three months of filing or before first Office action on the merits, whichever is later; (b) for national stage applications, within three months of entry into national stage or before first Office action on the merits, whichever is later; (c) for RCEs and CPAs before the 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 Article 10(3) or before first Office action on the merits, whichever is later. |
None |
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(2) After (1) but before final action, notice of allowance, or Quayle action |
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(3) After (2) and before (or with) payment of issue fee. |
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(4) After payment of issue fee. |
IDS will not be considered. |
· (B) All content requirements of 37 CFR 1.98. See MPEP § 609.04(a) for more information.
· (1) Requirements for the IDS listing:
· (a) A separate section for citations of U.S. patents and U.S. patent application publications;
· (b) The application number of the application in which the IDS is being submitted on each page of the listing, if known;
· (c) A column that provides a blank space next to each citation for the examiner’s initials when the examiner considers the cited document; and
· (d) A heading on the listing that clearly indicates that the list is an Information Disclosure Statement;
· (e) Proper identification of all cited references:
· (i) U.S. patents cited by patent number, issue date and inventor(s);
· (ii) U.S. patent application publications cited by publication number, publication date and inventor(s);
· (iii) Pending U.S. applications cited by application number, filing date and inventor(s);
· (iv) Foreign patent documents cited by document number, country and publication or issue date; and
· (v) Non-patent literature cited by publisher, author (if any), title, relevant pages (when no page numbers are supplied, it is understood that all of the pages of the publication are the relevant pages), and date and place of publication.
· (2) The requirement of copies for:
· (a) Each cited foreign patent document;
· (b) Each cited non-patent literature publication, or the portion therein which caused it to be listed;
· (c) Each cited U.S. pending application that is not stored in IFW;
· (d) All information cited (e.g., an affidavit or Office action), other than the specification, including claims and drawings, of a pending U.S. application; and
· (e) All other cited information or the portion which caused it to be listed.
· (3) For non-English documents that are cited, the following must be provided:
· (a) A concise explanation of the relevance, as it is presently understood by the individual designated in 37 CFR 1.56(c) most knowledgeable about the content of the information, unless a complete translation is provided; and/or
· (b) A written English language translation of a non-English language document, or portion thereof, if it is within the possession, custody or control of, or is readily available to any individual designated in 37 CFR 1.56(c).
After the examiner reviews the IDS for compliance with 37 CFR 1.97 and 1.98 (see MPEP § 609.05), the examiner should:
· (A) Consider the information properly submitted in an IDS in the same manner that the examiner considers other documents in Office search files while conducting a search of the prior art in a proper field of search.
· (1) For e-IDS, use the e-IDS icon on examiner’s workstation to consider cited U.S. patents and U.S. patent application publications. See MPEP § 609.07 for more information on e-IDS.
· (2) Initial the blank column next to the citation to indicate that the information has been considered by the examiner, or use the alternative electronic signature method by inserting on each page of reference citations the phrase "All references considered except where lined through" along with the examiner’s electronic initials, and providing the examiner’s electronic signature on the final page of reference citations.
· (B) Draw a line through the citation to show that it has not been considered if the citation fails to comply with all the requirements of 37 CFR 1.97 and 37 CFR 1.98. The examiner should inform applicant the reasons why a citation was not considered. 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 pursuant to 37 CFR 1.97(f). See MPEP § 609.04(b), subsection VI and form paragraph 6.51.
· (C) Write "not considered" on an information disclosure statement if none of the information listed complies with the requirements of 37 CFR 1.97 and 37 CFR 1.98. The examiner will inform applicant the reasons why the IDS was not considered by using form paragraphs 6.49 through 6.49.10.
· (D) Sign and date the bottom of the IDS listing, or use the alternative electronic signature method noted in item (A)(2) above.
· (E) Ensure that a copy of the IDS listing that is signed and dated by the examiner is entered into the file and mailed to applicant.
For discussion of electronic processing of IDS, see MPEP § 609.08.
When filing a continuing application that claims benefit under 35 U.S.C. 120 to a parent application (other than an international application that designated the U.S.), it will not be necessary for the applicant to submit an information disclosure statement in the continuing application that lists the prior art cited by the examiner in the parent application unless the applicant desires the information to be printed on the patent issuing from the continuing application (for continued prosecution applications filed under 37 CFR 1.53(d), see subsection A.1. below). The examiner of the continuing application will consider information which has been considered by the Office in the parent application.
When filing a continuing application that claims benefit under 35 U.S.C. 120 to an international application that designated the U.S. (see MPEP § 1895), it will be necessary for the applicant to submit an information disclosure statement complying with 37 CFR 1.97 and 1.98 in the continuing application listing the documents cited in the international search report and/or the international preliminary examination report of the international application if applicant wishes to ensure that the information is considered by the examiner in the continuing application.
See MPEP § 609.03 for consideration of documents cited in the international search report in a PCT national stage application.
Information which has been considered by the Office in the parent application of a continued prosecution application (CPA) filed under 37 CFR 1.53(d) will be part of the file before the examiner and need not be resubmitted in the continuing application to have the information considered and listed on the patent.
The examiner will consider information which has been considered by the Office in a parent application (other than an international application; see subsection I., above) when examining: (A) a continuation application filed under 37 CFR 1.53(b), (B) a divisional application filed under 37 CFR 1.53(b), or (C) a continuation-in-part application filed under 37 CFR 1.53(b). A listing of the information need not be resubmitted in the continuing application unless the applicant desires the information to be printed on the patent.
If resubmitting a listing of the information, applicant should submit a new listing that complies with the format requirements in 37 CFR 1.98(a)(1) and the timing requirements of 37 CFR 1.97. Applicants are strongly discouraged from submitting a list that includes copies of PTO/SB/08 or PTO-892 forms from other applications. A completed PTO/SB/08 form from another application may already have initials of an examiner and the application number of another application. This information will likely confuse the record. Furthermore, when the spaces provided on the form have initials of an examiner, there are no spaces available next to the documents listed for the examiner of the subsequent application to provide his or her initials, and the previously relevant initials may be erroneously construed as being applied for the current application.
Information which has been considered by the Office in the application before the filing of a RCE will be part of the file before the examiner and need not be resubmitted to have the information considered by the examiner and listed on the patent.
Information filed in the parent application that complies with the content requirements of 37 CFR 1.98 will be considered by the examiner in the CPA. No specific request from the applicant that the previously submitted information be considered by the examiner is required.
For these types of applications, in order to ensure consideration of information previously submitted, but not considered, in a parent application, applicant must resubmit the information in the continuing application in compliance with 37 CFR 1.97 and 37 CFR 1.98. Pursuant to 37 CFR 1.98(d), if the IDS submitted in the parent application complies with 37 CFR 1.98(a) to (c), copies of the patents, publications, pending U.S. applications, or other information submitted in the parent application need not be resubmitted in the continuing application.
When resubmitting a listing of the information, applicant should submit a new listing that complies with the format requirements in 37 CFR 1.98(a)(1). Applicants are strongly discouraged from submitting a list that includes copies of PTO/SB/08 or PTO-892 forms from other applications. A PTO/SB/08 form from another application may already have the application number of another application. This information will likely confuse the record.
Information filed in the application in compliance with the content requirements of 37 CFR 1.98 before the filing of a RCE will be considered by the examiner after the filing of the RCE. For example, an applicant filed an IDS in compliance with 37 CFR 1.98 after the mailing of a final Office action, but the IDS did not comply with the requirements of 37 CFR 1.97(d)(1) and (d)(2) and therefore, the IDS was not considered by the examiner. After applicant files a RCE, the examiner will consider the IDS filed prior to the filing of the RCE. For more details on RCE, see MPEP § 706.07(h).
When examining a PCT national stage application, the examiner will consider all U.S. patents, U.S. patent application publications, and U.S. pending applications cited in the international search report that are stored electronically in the USPTO’s Image File Wrapper (IFW) system. The examiner will consider other documents cited in the international search report when the Form PCT/DO/EO/903 in the national stage application indicates that both the international search report and the copies of the documents are present in the national stage file. In such a case, the examiner should consider the documents from the international search report and indicate by a statement in the first Office action that the information has been considered. There is no requirement that the examiner list the documents on a PTO-892 form and there is no requirement for the applicant to provide a separate listing of the references. However, the citations will not be printed on the face of the patent unless listed on a list that lends itself to easy capture of the necessary information by the Office printing contractor. See MPEP § 609.06.
In a national stage application, the following form paragraphs may be used where appropriate to notify applicant regarding references listed in the search report of the international application:
The references cited in the PCT international search report by the [1] have been considered, but will not be listed on any patent resulting from this application because they were not provided on a separate list in compliance with 37 CFR 1.98(a)(1). In order to have the references printed on such resulting patent, a separate listing, preferably on a PTO/SB/08 form, must be filed within the set period for reply to this Office action.
1. In bracket [1], identify the office (e.g., JPO, EPO, etc.) that issued the international search report and the date it issued.
2. This form paragraph may be used for national stage applications under 35 U.S.C. 371 where the examiner has obtained copies of the cited references or where copies of such references are not required under 37 CFR 1.98. If receipt of copies of references required under 37 CFR 1.98 is not indicated on the PCT/DO/EO/903 form in the file, burden is on the applicant to supply such copies for consideration. See MPEP § 1893.03(g).
3. Instead of using this form paragraph, the examiner may list the references on a PTO-892, thereby notifying the applicant that the references have been considered and will be printed on any patent resulting from this application.
4. This form paragraph should only be used prior to allowance when a statutory period for reply is being set in the Office action.
5. If the application is being allowed, form paragraph 6.54 should be used with the Notice of Allowability instead of this form paragraph.
The references cited in the PCT international search report by the [1] have been considered, but will not be listed on any patent resulting from this application because they were not provided on a separate list in compliance with 37 CFR 1.98(a)(1). In order to have the references printed on such resulting patent, a separate listing, preferably on a PTO/SB/08 form, must be filed within ONE MONTH of the mailing date of this communication. NO EXTENSION OF TIME WILL BE GRANTED UNDER EITHER 37 CFR 1.136(a) OR (b) to comply with this requirement.
1. In bracket [1], identify the office (e.g., JPO, EPO, etc.) that issued the international search report and the date it issued.
2. This form paragraph may be used for national stage applications under 35 U.S.C. 371 where the examiner has obtained copies of the cited references or where copies of such references are not required under 37 CFR 1.98. If receipt of copies of references required under 37 CFR 1.98 is not indicated on the PCT/DO/EO/903 form in the file, burden is on the applicant to supply such copies for consideration. See MPEP § 1893.03(g).
3. Instead of using this form paragraph, the examiner may list the references on a PTO-892, thereby notifying the applicant that the references have been considered and will be printed on any patent resulting from this application.
The listing of references in the PCT international search report is not considered to be an information disclosure statement (IDS) complying with 37 CFR 1.98. 37 CFR 1.98(a)(2) requires a legible copy of: (1) each foreign patent; (2) each publication or that portion which caused it to be listed; (3) for each cited pending U.S. application, the application specification including claims, and any drawing of the application, or that portion of the application which caused it to be listed including any claims directed to that portion, unless the cited pending U.S. application is stored in the Image File Wrapper (IFW) system; and (4) all other information, or that portion which caused it to be listed. In addition, each IDS must include a list of all patents, publications, applications, or other information submitted for consideration by the Office (see 37 CFR 1.98(a)(1) and (b) ), and MPEP § 609.04(a), subsection I. states, "the list ... must be submitted on a separate paper." Therefore, the references cited in the international search report have not been considered. Applicant is advised that the date of submission of any item of information or any missing element(s) will be the date of submission for purposes of determining compliance with the requirements based on the time of filing the IDS, including all "statement" requirements of 37 CFR 1.97(e). See MPEP § 609.05(a).
1. This form paragraph may be used in national stage applications under 35 U.S.C. 371.
2. Do not use this form paragraph when the missing references are U.S. patents, U.S. patent application publications, or U.S. pending applications that are stored in IFW.
An information disclosure statement (IDS) must comply with the provisions of 37 CFR 1.98 as to content for the information listed in the IDS to be considered by the Office. Each information disclosure statement must comply with the applicable provisions of subsection I., II., and III. below. 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 pursuant to 37 CFR 1.97(f). See MPEP § 609.04(b), subsection VI and form paragraph 6.51.
Each information disclosure statement must include a list of all patents, publications, U.S. applications, or other information submitted for consideration by the Office.
37 CFR 1.98(a)(1) requires the following format for an IDS listing: (A) a specified format/identification for each page of an IDS, and that U.S. patents and U.S. patent application publications be listed in a section separately from citations of other documents; (B) a column that provides a space next to each document listed to permit the examiner’s initials; and (C) a heading that identifies the list as an IDS.
37 CFR 1.98(a)(1) specifically requires that U.S. patents and U.S. patent application publications be listed separately from the citations of other documents. The separation of citations will permit the Office to obtain the U.S. patent numbers and the U.S. patent application publication numbers by optical character recognition (OCR) from the scanned documents such that the documents can be made available electronically to the examiner to facilitate searching and retrieval of the cited U.S. patents and U.S. patent application publications from the Office’s search databases. Applicants will comply with this requirement if they use forms PTO/SB/08, which provide a separate section for listing U.S. patents and U.S. patent application publications. Applicants who do not use these forms for submitting an IDS must make sure that the U.S. patents and U.S. patent application publications are listed in a separate section from citations of other documents.
37 CFR 1.98(a)(1) also requires that each page of the list must clearly identify the application number of the application in which the IDS is being submitted, if known. In the past, the Office has experienced problems associated with lists that do not properly identify the application in which the IDS is being submitted (e.g., when applicants submit a list that includes copies of PTO/SB/08 or PTO-892 forms from other applications). Even though the IDS cover sheet had the proper application number, each page of the list did not include the proper application number, but instead had the application numbers of the other applications. If the pages of the list became separated, the Office could not associate the pages with the proper application.
In addition, 37 CFR 1.98(a)(1) requires that the list must include a column that provides a space next to each document listed in order to permit the examiner to enter their initials next to the citations of the documents that have been considered by the examiner. This provides a notification to the applicant and a clear record in the application to indicate which documents have been considered by the examiner in the application. Applicants are strongly discouraged from submitting a list that includes copies of PTO/SB/08 or PTO-892 forms from other applications. A completed PTO/SB/08 form from another application may already have initials of an examiner and the application number of another application. This information will likely confuse the record. Furthermore, when the spaces provided on the form have initials of an examiner, there are no spaces available next to the documents listed for the examiner of the subsequent application to provide their initials, and the previously relevant initials may be erroneously construed as being applied for the current application.
37 CFR 1.98(a)(1) also requires that each page of the list include a heading that clearly indicates that the list is an IDS. Since the Office treats an IDS submitted by the applicant differently than information submitted by a third party, a heading on each page of the list to indicate that the list is an IDS would promote proper treatment of the IDS submitted by the applicant and reduce handling errors.
37 CFR 1.98(b) requires that each item of information in an IDS be identified properly. U.S. patents must be identified by the inventor, patent number, and issue date. U.S. patent application publications must be identified by the applicant, patent application publication number, and publication date. The Office will also accept a citation in an IDS where a U.S. patent application publication is identified using the inventor instead of the applicant. U.S. applications must be identified by the inventor, the eight digit application number (the two digit series code and the six digit serial number), and the filing date. If a U.S. application being listed in an IDS has been issued as a patent or has been published, the applicant should list the patent or application publication in the IDS instead of the application. Each foreign patent or published foreign patent application must be identified by the country or patent office which issued the patent or published the application, an appropriate document number, and the publication date indicated on the patent or published application. Each publication must be identified by publisher, author (if any), title, relevant pages of the publication, and date and place of publication. When no page numbers are supplied, it is understood that all of the pages of the publication are the relevant pages. The date of publication supplied must include at least the month and year of publication, except that the year of publication (without the month) will be accepted if the applicant points out in the information disclosure statement that the year of publication is sufficiently earlier than the effective U.S. filing date and any foreign priority date so that the particular month of publication is not in issue. The place of publication refers to the name of the journal, magazine, or other publication in which the information being submitted was published. See MPEP § 707.05(e), for more information on data that should be used when citing publications and electronic documents.
Pending U.S. applications that are being cited can be listed under the non-patent literature section or in a new section appropriately labeled. If applicant seeks consideration of documents other than the specification (including the claims) and drawings of an application, for example, Office actions, applicant must list such documents separately under the non-patent literature section or in a new section appropriately labeled. The USPTO would be understood to be the publisher/place of publication for a listed U.S. Office action or a U.S. application. Similarly, the foreign or international entity (e.g., WIPO, EPO) would be understood to be the publisher/place of publication for a listed foreign or international search report.
For publications obtained from the internet, the uniform resource locator (URL) of the webpage that is the source of the publication must be provided for the place of publication (e.g., "www.uspto.gov"). The publisher may be evident from the URL of the webpage. See MPEP § 707.05(e) for examples on listing documents retrieved from the internet, including social media posts and screen shots from videos. In particular, see examples 17 and 18. Further, for an internet publication obtained from a website that archives webpages, both the URL of the archived webpage submitted for consideration and the URL of the website from which the archived copy of the webpage was obtained should be provided on the document listing (e.g., "Hand Tools," webpage <http://www.farmshopstore.com/handtools.html>, 1 page, August 18, 2009, retrieved from Internet Archive Wayback Machine <http://web.archive.org/web/20090818144217/ http://www.farmshopstore.com/handtools.html> on December 20, 2012). Where the actual publication date of a non-patent document is not known, the applicant must, at a minimum, provide a date of retrieval (e.g., the date a webpage was retrieved) or a time frame (e.g., a year, a month and year, a certain period of time ) when the document was available as a publication.
The list of information complying with the format requirements of 37 CFR 1.98(a)(1) and the identification requirements of 37 CFR 1.98(b) may not be incorporated into the specification of the application in which it is being supplied, but must be submitted in a separate paper. A separate list is required so that it is easy to confirm that applicant intends to submit an information disclosure statement and because it provides a readily available checklist for the examiner to indicate which identified documents have been considered. A separate list will also provide a simple means of communication to applicant to indicate the listed documents that have been considered and those listed documents that have not been considered. Use of form PTO/SB/08, Information Disclosure Statement, to list the documents is encouraged.
In addition to the list of information, each information disclosure statement must also include a legible copy of:
· (A) Each foreign patent;
· (B) Each publication or that portion which caused it to be listed , other than U.S. patents and U.S. patent application publications unless required by the Office;
· (C) For each cited pending unpublished U.S. application, the application specification including the claims, and any drawings of the application, or that portion of the application which caused it to be listed including any claims directed to that portion, unless the cited pending U.S. application is stored in the Image File Wrapper (IFW) system. The requirement in 37 CFR 1.98(a)(2)(iii) for a legible copy of the specification, including the claims, and drawings of each cited pending U.S. patent application (or portion of the application which caused it to be listed) is sua sponte waived where the cited pending application is stored in the USPTO’s IFW system. See Waiver of the Copy Requirement in 37 CFR 1.98 for Cited Pending U.S. Patent Applications, 1287 OG 163 (October 19, 2004); and
· (D) All other information or that portion which caused it to be listed.
There is no requirement for a copy of each U.S. patent or U.S. patent application publication listed in an IDS unless required by the Office. 37 CFR 1.98(a)(2).
37 CFR 1.98(a)(2)(iii) requires a copy of a pending U.S. application that is being cited in an IDS if (A) the cited information is not part of the specification, including the claims, and the drawings (e.g., an Office Action, remarks in an amendment paper, etc.), or (B) the cited application is not stored in the USPTO’s IFW system. The requirement in 37 CFR 1.98(a)(2)(iii) for a legible copy of the specification, including the claims, and drawings of each cited pending U.S. patent application (or portion of the application which caused it to be listed) is sua sponte waived where the cited pending application is stored in the USPTO’s IFW system. This waiver is limited to the specification, including the claims, and drawings in the U.S. application (or portion of the application). If material other than the specification, including the claims, and drawings in the file of a U.S. patent application is being cited in an IDS, the IDS must contain a legible copy of such material.
A pending U.S. application only identified in the specification’s background information rather than being cited separately on an IDS listing is not part of an IDS submission. Therefore, the requirements of 37 CFR 1.98(a)(2)(iii) of supplying a copy of the pending application is not applicable. Pursuant to 37 CFR 1.98(a)(2)(iii), applicant may choose to cite only a portion of a pending application including any claims directed to that portion rather than the entire application. There are exceptions to this requirement that a copy of the information must be provided. First, 37 CFR 1.98(d) states that a copy of any patent, publication, pending U.S. application, or other information listed in an information disclosure statement is not required to be provided if: (A) the information was previously cited by or submitted to, the Office in a prior application, provided that the prior application is properly identified in the IDS and is relied on for an earlier filing date under 35 U.S.C. 120; and (B) the IDS submitted in the earlier application complies with 37 CFR 1.98(a)-(c). If both of these conditions are met, the examiner will consider the information previously cited or submitted to the Office and considered by the Office in a prior application relied on under 35 U.S.C. 120. This exception to the requirement for copies of information does not apply to information which was cited in an international application under the Patent Cooperation Treaty. If the information cited or submitted in the prior application was not in English, a concise explanation of the relevance of the information to the new application is not required unless the relevance of the information differs from its relevance as explained in the prior application. See subsection III. below.
Second, 37 CFR 1.98(c) states that when the disclosures of two or more patents or publications listed in an information disclosure statement are substantively cumulative, a copy of one of the patents or publications may be submitted without copies of the other patents or publications provided that a statement is made that these other patents or publications are cumulative. The examiner will then consider only the patent or publication of which a copy is submitted and will so indicate on the list, form PTO/SB/08, submitted, e.g., by crossing out the listing of the cumulative information. But see Semiconductor Energy Laboratory Co. v. Samsung Electronics Co., 204 F.3d 1368, 1374, 54 USPQ2d 1001, 1005 (Fed. Cir. 2000) (Reference was not cumulative since it contained a more complete combination of the claimed elements than any other reference before the examiner. "A withheld reference may be highly material when it discloses a more complete combination of relevant features, even if those features are before the patent examiner in other references." (citations omitted).).
37 CFR 1.98(a)(3)(ii) states that if a written English language translation of a non-English language document, or portion thereof, is within the possession, custody or control of, or is readily available to any individual designated in 37 CFR 1.56(c), a copy of the translation shall accompany the statement. Translations are not required to be filed unless they have been reduced to writing and are actually translations of what is contained in the non-English language information. If no translation is submitted, the examiner will consider the information in view of the concise explanation and insofar as it is understood on its face, e.g., drawings, chemical formulas, English language abstracts, in the same manner that non-English language information in Office search files is considered by examiners in conducting searches.
Electronic means or medium for filing IDSs are not permitted except for: (A) IDSs electronically submitted using the USPTO patent electronic filing system (see MPEP § 609.07); or (B) copies of large tables, computer program listings, and sequence listings submitted as a PDF file and a "Sequence Listing XML" submitted as an XML file on a read-only optical disc in compliance with 37 CFR 1.52(e)(2) and (3) which are cited in a paper IDS. A read-only optical disc cannot be used to submit an IDS listing or copies of the documents cited in the IDS (except for large tables, a computer program listing, a sequence listing, and a "Sequence Listing XML", discussed above). For example, published information, such as the visual output of a software program or a video, may be submitted only if reduced to writing, such as in the form of screen shots and/or a transcript.
Each information disclosure statement must further include a concise explanation of the relevance, as it is presently understood by the individual designated in 37 CFR 1.56(c) most knowledgeable about the content of the information listed that is not in the English language. The concise explanation may be either separate from the specification or part of the specification. If the concise explanation is part of the specification, the IDS listing should include the page(s) or line(s) numbers where the concise explanation is located in the specification.
The requirement for a concise explanation of relevance is limited to information that is not in the English language. The explanation required is limited to the relevance as understood by the individual designated in 37 CFR 1.56(c) most knowledgeable about the content of the information at the time the information is submitted to the Office. If a complete translation of the information into English is submitted with the non-English language information, no concise explanation is required. There is no requirement for the translation to be verified, including reliable machine translations. An English-language equivalent application may be submitted to fulfill this requirement if it is, in fact, a translation of a foreign language application being listed in an information disclosure statement. The English language equivalent application should be separately listed and identified as an English language equivalent in the information disclosure statement. Submission of an English language abstract of a reference, such as one generated by a foreign patent office, may fulfill the requirement for a concise explanation. Where the information listed is not in the English language, but was cited in a search report or other action by a foreign patent office in a counterpart foreign application, the requirement for a concise explanation of relevance can be satisfied by submitting an English-language version of the search report or action which indicates the degree of relevance found by the foreign office. This may be an explanation of which portion of the reference is particularly relevant, to which claims it applies, or merely an "X", "Y", or "A" indication on a search report. The requirement for a concise explanation of non-English language information would not be satisfied by a statement that a reference was cited in the prosecution of a United States application which is not relied on under 35 U.S.C. 120.
If information cited or submitted in a prior application relied on under 35 U.S.C. 120 was not in English, a concise explanation of the relevance of the information to the new application is not required unless the relevance of the information differs from its relevance as explained in the prior application.
The concise explanation may indicate that a particular figure or paragraph of the patent or publication is relevant to the claimed invention. It might be a simple statement pointing to similarities between the item of information and the claimed invention. It is permissible but not necessary to discuss differences between the cited information and the claims. However, see Semiconductor Energy Laboratory Co. v. Samsung Electronics Co., 204 F.3d 1368, 1376, 54 USPQ2d 1001, 1007 (Fed. Cir. 2000) ("[A]lthough MPEP Section 609A(3) allows the applicant some discretion in the manner in which it phrases its concise explanation, it nowhere authorizes the applicant to intentionally omit altogether key teachings of the reference.").
In Semiconductor Energy Laboratory, patentee during prosecution submitted an untranslated 29-page Japanese reference as well as a concise explanation of its relevance and an existing one-page partial English translation, both of which were directed to less material portions of the reference. The untranslated portions of the Japanese reference "contained a more complete combination of the elements claimed [in the patent] than anything else before the PTO." 204 F.3d at 1376, 54 USPQ2d at 1005. The patentee, whose native language was Japanese, was held to have understood the materiality of the reference. "The duty of candor does not require that the applicant translate every foreign reference, but only that the applicant refrain from submitting partial translations and concise explanations that it knows will misdirect the examiner’s attention from the reference’s relevant teaching." 204 F.3d at 1378, 54 USPQ2d at 1008.
Although a concise explanation of the relevance of the information is not required for English language information, applicants are encouraged to provide a concise explanation of why the English-language information is being submitted and how it is understood to be relevant. Concise explanations (especially those which point out the relevant pages and lines) are helpful to the Office, particularly where documents are lengthy and complex and applicant is aware of a section that is highly relevant to patentability or where a large number of documents are submitted and applicant is aware that one or more are highly relevant to patentability.
The procedures and requirements under 37 CFR 1.97 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 as set forth in 37 CFR 1.491 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 filed under 37 CFR 1.114 ) and CPAs filed under 37 CFR 1.53(d), 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 Article 10(3) 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 under 37 CFR 1.313(c).
These procedures and requirements apply to applications filed under 35 U.S.C. 111(a) (utility), 161 (plants), 171 (designs), and 251 (reissue), as well as international applications entering the national stage under 35 U.S.C. 371.
The requirements based on the time when the information disclosure statement is filed are summarized in MPEP § 609.01.
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 as set forth in 37 CFR 1.491 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 Article 10(3) 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 under 37 CFR 1.8, or if it is in compliance with the provisions of Priority Mail Express® delivery under 37 CFR 1.10. If the last day of the three months period set forth in 37 CFR 1.97(b)(1) and (b)(2) falls on a Saturday, Sunday, or a federal holiday within the District of Columbia, the IDS may be timely filed on the next succeeding business day which is not a Saturday, Sunday, or a federal holiday. See 37 CFR 1.7(a). An Office action is mailed on the date indicated in the Office action.
It would not be proper to make final a first Office action in a continuing application or in an application after the filing of an RCE if the information submitted in the IDS during the time period set forth in
