During the patent prosecution process in the US, a patent applicant/inventor must disclose all the known prior art references to the USPTO. These include references from the beginning of the patent prosecution process till the date of patent grant. This prior art information is disclosed in a set format known as the information disclosure statement (IDS). An IDS can include references to existing relevant patents, patent applications, and other published materials (37 CFR 1.56).
An information disclosure statement filing should include:
Certifications (37 C.F.R. § 1.97(e)) and/or PTA safe harbor statements (37 C.F.R. § 1.704(d));
Filing an information disclosure statement is an effective method of citing prior art references. It plays a crucial role in determining the success of a patent application. Any reasonable patent examiner would lay emphasis on IDS to decide whether to approve the application or not.
On the contrary, if one does not abide by the duty of disclosure, it can later result in the ruling of inequitable conduct, and even action for damages against the patentee.
An applicant can file the IDS with the USPTO using the Form PTO/SB/08a and/or PTO/SB/08b. Quite often, businesses join hands with outsourcing firms for assistance in critical processes like IDS filing. Sagacious IP’s comprehensive IDS filing services are designed to adequately handle applications and ensure that it adheres to the USPTO norms.
While preparing an IDS, an applicant should include relevant and material patents and published material. If the information is in any language other than English, its translation should also be included. This aspect is vital for patent applications filed on the behalf of foreign players.