609.03 Information Disclosure Statements in National Stage Applications [R-07.2022]

Created On
byChhabra Law Firm

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:

¶ 6.53 References Considered in 35 U.S.C. 371 Application Based Upon Search Report – Prior to Allowance

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.

Examiner Note:

  • 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.

¶ 6.54 References Considered in 35 U.S.C. 371 Application Based Upon Search Report – Ready for Allowance

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.

Examiner Note:

  • 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.

¶ 6.55 References Not Considered in 35 U.S.C. 371 Application Based Upon Search Report

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).

Examiner Note:

  • 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.