2003 Disclosure __ When Made [R-07.2022]
37 CFR 1.97 Filing of information disclosure statement.
- (a) In order for an applicant for a patent or for a reissue of a patent to have an information disclosure statement in compliance with § 1.98 considered by the Office during the pendency of the application, the information disclosure statement must satisfy one of paragraphs (b), (c), or (d) of this section.
- (b) An information disclosure statement shall be considered by the Office if filed by the applicant within any one of the following time periods:
- (1) Within three months of the filing date of a national application other than a continued prosecution application under § 1.53(d);
- (2) Within three months of the date of entry of the national stage as set forth in § 1.491 in an international application;
- (3) Before the mailing of a first Office action on the merits;
- (4) Before the mailing of a first Office action after the filing of a request for continued examination under § 1.114; or
- (5) Within three months of the date of publication of the international registration under Hague Agreement Article 10(3) in an international design application.
- (c) An information disclosure statement shall be considered by the Office if filed after the, period specified in paragraph (b) of this section, provided that the information disclosure statement is filed before the mailing date of any of a final action under § 1.113, a notice of allowance under § 1.311, or an action that otherwise closes prosecution in the application, and it is accompanied by one of:
- (1) The statement specified in paragraph (e) of this section; or
- (2) The fee set forth in § 1.17(p).
- (d) An information disclosure statement shall be considered by the Office if filed by the applicant after the period specified in paragraph (c) of this section, provided that the information disclosure statement is filed on or before payment of the issue fee and is accompanied by:
- (1) The statement specified in paragraph (e) of this section; and
- (2) The fee set forth in § 1.17(p).
- (e) A statement under this section must state either:
- (1) That each item of information contained in the information disclosure statement was first cited in any communication from a foreign patent office in a counterpart foreign application not more than three months prior to the filing of the information disclosure statement; or
- (2) That no item of information contained in the information disclosure statement was cited in a communication from a foreign patent office in a counterpart foreign application, and, to the knowledge of the person signing the certification after making reasonable inquiry, no item of information contained in the information disclosure statement was known to any individual designated in § 1.56(c) more than three months prior to the filing of the information disclosure statement.
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The provisions of 37 CFR 1.97 specify when an information disclosure statement will be considered as a matter of right and when a certification must be made and/or fee submitted in order to have the information disclosure statement considered. In any circumstance, information should be submitted promptly.
An applicant, attorney, or agent who is aware of material prior art or other information and its significance should submit the information as early as possible in prosecution, e.g., before the first Office action, and not wait until after allowance. However, potentially material information discovered late in the prosecution should be promptly submitted. That the issue fee has been paid is no reason or excuse for failing to submit information. See MPEP § 609.04(b). Additionally, applicant should be mindful of the incentives of prompt filing of information as set forth in 37 CFR 1.704(d)(1).
Likewise, material prior art or other information and its significance should be submitted as soon as possible for reissue applications, and reexamination proceedings.
The presumption of validity is generally strong when prior art was before and considered by the Office and weak when it was not. See Bolkcom v. Carborundum Co., 523 F.2d 492, 498, 186 USPQ 466, 471 (6th Cir. 1975).