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From the basics of the US Patent Information Disclosure Requirement (IDS) to practical strategies

Pine IP Firm
April 15, 2025

Securing patents targeting the U.S. market is one of the goals of many innovative companies and inventors. While cutting-edge technology and clear design of rights scopes are important, the U.S. patent process carries a crucial obligation that can determine the life and death of patent rights while remaining discreet. Namely, the 'Duty of Disclosure' and the procedures to fulfill it, Submission of the 'Information Disclosure Statement (IDS)'That's it.

Neglecting this obligation can lead to the trap of 'Inequitable Conduct,' where a hard-earned patent can become invalid in an instant. In this column, we will delve deeply into the Disclosure Requirement (IDS), which is essential for the success of U.S. patent applications and securing rights stability, from its basic concepts to practical response strategies.

What is the Disclosure Obligation (IDS)?

  1. Definition and legal basis:
    • The U.S. Patent Act (37 CFR 1.56) provides a legal basis for all individuals substantially involved in the patent application process. The duty of candor and good faith to disclose 'material to patentability' information to the United States Patent and Trademark Office (USPTO)is imposed.
    • The IDS (Information Disclosure Statement) is an official document submitted to the USPTO to list the relevant information you know to fulfill this obligation.
  2. Who bears the duty? (Rule 1.56(c))
    • All Inventors
    • Any lawyer or agent representing the application (Attorney/Agent)
    • Applicants (Assignee) and anyone substantially involved in preparing/conducting the application process
    • In other words, almost all stakeholders involved in the patent application and registration process are subject to this obligation.
  3. Why is it important? - Risk of 'unfair practices':
    • Inequitable Conduct: This refers to the act of failing to disclose material information to the USPTO or submitting false information with intentional intent to deceive.
    • Fatal consequences: If the court finds unfair practices, the patent becomes unenforceable. This has effects similar to patent invalidation and can also affect other related patents. Additional disadvantages such as litigation costs may arise.

Key Points

  1. What should be started? - Criteria for 'Material Information' (Rule 1.56(b))
    • Information is considered 'material' if it falls under any of the following:
      • Establishing a prima facie case of unpatentability, either alone or in combination with other information.
      • Contradictions with the applicant's position during the application process, Inconsistent In that case.
    • Examples of key disclosure target information:
      • Prior art literature: U.S./International Patents and Published Publications, Papers, Academic Materials, Technical Publications, Website Publications, Product Catalogs, etc.
      • Information on Supported Foreign Applications: Office Action Notices from Foreign Patent Offices, especially cited prior art literature, International Search Reports (ISR), International Preliminary Examination Reports (IPER), etc.
      • Related litigation/dispute information: Information related to litigation, oppositions, trials, and related submitted materials related to the invention
      • Notice/Common/Sales Information: Information on public use or sale of inventions, actual sales, trade show exhibits, conference presentations, etc. (especially information occurring outside the United States that is difficult for examiners to access)
      • Others: The closest prior art known to the inventor, related technical standard documents, etc.
    • Core principle: "When in doubt, disclose." Judgments on the importance of information can be highly subjective, and the judge or court may make different judgments. Therefore, if you believe it may affect patentability even slightly, it is safe to submit it first.
  2. When should you start? - IDS submission date (37 CFR 1.97)
    • Depending on when the IDS is submitted, whether fees or additional documents are required may vary. The sooner, the better.
    • (Most advantageous) Tier 1: Within 3 months from the filing date or before the first notice of examination action on the Merits (FAOM) → No fees or additional documents required.
    • Tier 2: After the FAOM dispatch date ~ Before the date the Final Examination Opinion (OA) or Notice of Allowance (NOA) is sent→ Payment of Fees or Statement under 1.97(e)) Submission required.
    • Tier 3: After the final OA or NOA issuance date ~ before patent fee payment→ Payment of Fees and Statement under 1.97(e)) All are necessary.
    • Tier 4: In principle, → after the patent fee is paid, it is not considered, but in exceptional cases, it may be submitted together with the resumption of examination procedures (such as RCE: Request for Continued Examination). 
  3. How should you start? - IDS submission method (37 CFR 1.98)
    • Required documents:
      • IDS forms (PTO/SB/08a, 08b, etc.): List of information (distinguishing between US patents/publications, foreign patents, and non-patent documents)
      • Copy of the document subject to disclosure (foreign patent and non-patent documents required; US patents/publications are not required)
      • (If necessary) English translation: For non-English literature, provide an English summary or full translation of relevant parts (note that summary alone may be insufficient)
      • (If necessary) Fee and/or statement (see submission date above)
    • Information list: Bibliographic information for each document (number, date, inventor/author, etc.) must be accurately recorded.
    • Examiner's consideration: Examiners review submitted IDS and sign off on the literature considered. This is the formal confirmation process that the information has been considered during the screening process.

IDS Practical Strategy

  1. Systematic internal system construction:
    • Clarifying information collection channels: From the research and development stage, procedures are established to collect relevant information recognized by inventors, researchers, and technical marketing personnel (prior art search results, competitor products, conference presentation materials, sales/disclosure information, etc.).
    • Centralized management: It utilizes systems (databases, shared folders, etc.) that can manage and track all application-related information in one place.
    • Regular Inspections: Regularly check and update any new information during the application process.
  2. Transparent and prompt communication with agents:
    • Sharing all information: All potentially relevant information internally recognized is fully communicated to U.S. agents (attorneys/patent attorneys). The final judgment on the importance of information should be made in consultation with a representative, but basic information should be provided as much as possible.
    • Instant delivery of overseas application information: The examination results (especially cited literature) for ongoing counter-filings in other countries such as Korea, Europe, Japan, and China are immediately communicated to the U.S. agent for timely submission of the IDS. Delays may result in additional costs and disadvantages.
  3. Developing an IDS submission strategy:
    • Early submission principles: Submit your IDS as soon as possible (within the Tier 1 period) to reduce costs and procedural complexity.
    • Utilizing cumulative submissions: Ideally, you should submit information immediately whenever it arises, but for management efficiency, it is also possible to collect and submit it over a certain period (e.g., before FAOM is sent). However, be careful not to miss the deadline.
    • 'Leaving it aside' is a no-go: You should not intentionally omit information that seems unfavorable. This can be interpreted as a core requirement of 'deceptive intent,' which is a key requirement for unfair practices.
  4. Education and awareness-raising:
    • Inventors, researchers, and applicants are regularly educated on the importance of disclosure obligations and the risks of non-compliance.
    • Clarify internal processes related to IDS and share responsibilities and roles.

IV. Conclusion

The Disclosure Duty (IDS) is a matter of trust that forms the foundation of U.S. patent proceedings. Neglecting this obligation to avoid immediate inconvenience or costs is like carrying a time bomb that could lead to a greater risk of patent invalidation in the future. To successfully secure U.S. patents and ensure stable enforcement of rights, it is crucial to accurately understand, systematically manage, and faithfully fulfill IDS obligations.

If you are struggling to manage and develop strategies for managing such complex and significant Information Disclosure Obligations (IDS), or if you want to secure U.S. patents safely without potential risks, it is essential to work with a partner with extensive experience and expertise. 

Pine IP FirmBased on in-depth knowledge and practical experience related to U.S. patent applications and IDS, we provide optimal strategies and customized solutions to ensure your valuable invention can lead to solid rights without the risk of inequitable conduct. If you have any inquiries about IDS or need in-depth consultation on U.S. patent strategies, please contact us right now. Pine IP FirmConsult with an expert. Together, we will find the safest and most effective way to protect your idea.