609.01 Examiner Checklist for Information Disclosure Statements [R-07.2022]

Created On
byChhabra Law Firm

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.
Time when IDS is filed 37 CFR 1.97Requirements
(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
(2) After (1) but before final action, notice of allowance, or Quayle action 1.97(e) statement or 1.17(p) fee.
(3) After (2) and before (or with) payment of issue fee. 1.97(e) statement, and 1.17(p) fee.
(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.