Content Requirements for an Information Disclosure Statement

An information disclosure statement (IDS) must comply with the

provisions of

37

CFR 1.98

as to content for the information listed in the IDS to

be considered by the Office. Each information disclosure statement must comply with

the applicable provisions of subsection I., II., and III. below. 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

.

I.

LIST OF ALL PATENTS, PUBLICATIONS, U.S. APPLICATIONS, OR OTHER

INFORMATION

Each information disclosure statement must include a list of all

patents, publications, U.S. applications, or other information submitted for

consideration by the Office.

37 CFR

1.98(a)(1)

requires the following format for an IDS listing:

(A) a specified format/identification for each page of an IDS, and that U.S.

patents and U.S. patent application publications be listed in a section separately

from citations of other documents; (B) a column that provides a space next to each

document listed to permit the examiner’s initials; and (C) a heading that

identifies the list as an IDS.

37 CFR

1.98(a)(1)

specifically requires that U.S. patents and U.S.

patent application publications be listed separately from the citations of other

documents. The separation of citations will permit the Office to obtain the U.S.

patent numbers and the U.S. patent application publication numbers by optical

character recognition (OCR) from the scanned documents such that the documents can

be made available electronically to the examiner to facilitate searching and

retrieval of the cited U.S. patents and U.S. patent application publications from

the Office’s search databases. Applicants will comply with this requirement if

they use forms PTO/SB/08, which provide a separate section for listing U.S.

patents and U.S. patent application publications

documents such that the documents can

be made available electronically to the examiner to facilitate searching and

retrieval of the cited U.S. patents and U.S. patent application publications from

the Office’s search databases. Applicants will comply with this requirement if

they use forms PTO/SB/08, which provide a separate section for listing U.S.

patents and U.S. patent application publications. Applicants who do not use these

forms for submitting an IDS must make sure that the U.S. patents and U.S. patent

application publications are listed in a separate section from citations of other

documents.

37 CFR

1.98(a)(1)

also requires that each page of the list must

clearly identify the application number of the application in which the IDS is

being submitted, if known. In the past, the Office has experienced problems

associated with lists that do not properly identify the application in which the

IDS is being submitted (e.g., when applicants submit a list that includes copies

of PTO/SB/08 or PTO-892 forms from other applications). Even though the IDS cover

sheet had the proper application number, each page of the list did not include the

proper application number, but instead had the application numbers of the other

applications. If the pages of the list became separated, the Office could not

associate the pages with the proper application.

In addition,

37 CFR 1.98(a)(1)

requires

that the list must include a column that provides a space next to each document

listed in order to permit the examiner to enter their initials next to the

citations of the documents that have been considered by the examiner. This

provides a notification to the applicant and a clear record in the application to

indicate which documents have been considered by the examiner in the application.

Applicants are strongly discouraged from submitting a list that includes copies of

PTO/SB/08 or PTO-892 forms from other applications

their initials next to the

citations of the documents that have been considered by the examiner. This

provides a notification to the applicant and a clear record in the application to

indicate which documents have been considered by the examiner in the application.

Applicants are strongly discouraged from submitting a list that includes copies of

PTO/SB/08 or PTO-892 forms from other applications. A completed PTO/SB/08 form

from another application may already have initials of an examiner and the

application number of another application. This information will likely confuse

the record. Furthermore, when the spaces provided on the form have initials of an

examiner, there are no spaces available next to the documents listed for the

examiner of the subsequent application to provide their initials, and the

previously relevant initials may be erroneously construed as being applied for the

current application.

37 CFR

1.98(a)(1)

also requires that each page of the list include

a heading that clearly indicates that the list is an IDS. Since the Office treats

an IDS submitted by the applicant differently than information submitted by a

third party, a heading on each page of the list to indicate that the list is an

IDS would promote proper treatment of the IDS submitted by the applicant and

reduce handling errors.

37 CFR

1.98(b)

requires that each item of information in an IDS be

identified properly. U.S. patents must be identified by the inventor, patent

number, and issue date. U.S. patent application publications must be identified by

the applicant, patent application publication number, and publication date. The

Office will also accept a citation in an IDS where a U.S. patent application

publication is identified using the inventor instead of the applicant. U.S.

applications must be identified by the inventor, the eight digit application

number (the two digit series code and the six digit serial number), and the filing

date. If a U.S

licant, patent application publication number, and publication date. The

Office will also accept a citation in an IDS where a U.S. patent application

publication is identified using the inventor instead of the applicant. U.S.

applications must be identified by the inventor, the eight digit application

number (the two digit series code and the six digit serial number), and the filing

date. If a U.S. application being listed in an IDS has been issued as a patent or

has been published, the applicant should list the patent or application

publication in the IDS instead of the application. Each foreign patent or

published foreign patent application must be identified by the country or patent

office which issued the patent or published the application, an appropriate

document number, and the publication date indicated on the patent or published

application. Each publication must be identified by publisher, author (if any),

title, relevant pages of the publication, and date and place of publication. When

no page numbers are supplied, it is understood that all of the pages of the

publication are the relevant pages. The date of publication supplied must include

at least the month and year of publication, except that the year of publication

(without the month) will be accepted if the applicant points out in the

information disclosure statement that the year of publication is sufficiently

earlier than the effective U.S. filing date and any foreign priority date so that

the particular month of publication is not in issue. The place of publication

refers to the name of the journal, magazine, or other publication in which the

information being submitted was published. See

MPEP §

707.05(e)

, for more information on data that should be used

when citing publications and electronic documents.

Pending U.S. applications that are being cited can

be listed under the non-patent literature section or in a new section

appropriately labeled

publication

refers to the name of the journal, magazine, or other publication in which the

information being submitted was published. See

MPEP §

707.05(e)

, for more information on data that should be used

when citing publications and electronic documents.

Pending U.S. applications that are being cited can

be listed under the non-patent literature section or in a new section

appropriately labeled. If applicant seeks consideration of documents other than

the specification (including the claims) and drawings of an application, for

example, Office actions, applicant must list such documents separately under the

non-patent literature section or in a new section appropriately labeled. The USPTO

would be understood to be the publisher/place of publication for a listed U.S.

Office action or a U.S. application. Similarly, the foreign or international

entity (

e.g.,

WIPO, EPO) would be understood to be the

publisher/place of publication for a listed foreign or international search

report.

For publications obtained from the internet, the

uniform resource locator (URL) of the webpage that is the source of the

publication must be provided for the place of publication (e.g., "www.uspto.gov").

The publisher may be evident from the URL of the webpage. See

MPEP §

707.05(e)

for examples on listing documents retrieved

from the internet, including social media posts and screen shots from videos. In

particular, see examples 17 and 18. Further, for an internet publication obtained

from a website that archives webpages, both the URL of the archived webpage

submitted for consideration and the URL of the website from which the archived

copy of the webpage was obtained should be provided on the document listing (e.g.,

"Hand Tools," webpage <http://www.farmshopstore.com/handtools.html>, 1 page,

August 18, 2009, retrieved from Internet Archive Wayback Machine

<http://web.archive.org/web/20090818144217/

http://www.farmshopstore.com/handtools.html> on December 20, 2012)

consideration and the URL of the website from which the archived

copy of the webpage was obtained should be provided on the document listing (e.g.,

"Hand Tools," webpage <http://www.farmshopstore.com/handtools.html>, 1 page,

August 18, 2009, retrieved from Internet Archive Wayback Machine

<http://web.archive.org/web/20090818144217/

http://www.farmshopstore.com/handtools.html> on December 20, 2012). Where the

actual publication date of a non-patent document is not known, the applicant must,

at a minimum, provide a date of retrieval (e.g., the date a webpage was retrieved)

or a time frame (e.g., a year, a month and year, a certain period of time ) when

the document was available as a publication.

The list of information complying with the format requirements of

37 CFR

1.98(a)(1)

and the identification requirements of

37 CFR

1.98(b)

may not be incorporated into the specification of

the application in which it is being supplied, but must be submitted in a separate

paper. A separate list is required so that it is easy to confirm that applicant

intends to submit an information disclosure statement and because it provides a

readily available checklist for the examiner to indicate which identified

documents have been considered. A separate list will also provide a simple means

of communication to applicant to indicate the listed documents that have been

considered and those listed documents that have not been considered. Use of form

PTO/SB/08, Information Disclosure Statement, to list the documents is encouraged.

II.

LEGIBLE COPIES

In addition to the list of information, each information

disclosure statement must also include a legible copy of:

(A) Each foreign patent;

(B) Each publication or that portion which caused it to be

listed , other than U.S. patents and U.S. patent application publications

unless required by the Office;

(C) For each cited pending unpublished U.S

list the documents is encouraged.

II.

LEGIBLE COPIES

In addition to the list of information, each information

disclosure statement must also include a legible copy of:

(A) Each foreign patent;

(B) Each publication or that portion which caused it to be

listed , other than U.S. patents and U.S. patent application publications

unless required by the Office;

(C) For each cited pending unpublished U.S. application, the

application specification including the claims, and any drawings 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. The

requirement in

37 CFR 1.98(a)(2)(iii)

for a legible copy of the specification, including the claims, and drawings

of each cited pending U.S. patent application (or portion of the application

which caused it to be listed) is

sua sponte

waived where

the cited pending application is stored in the USPTO’s IFW system.

See Waiver of the Copy Requirement in 37 CFR 1.98 for Cited

Pending U.S. Patent Applications,

1287 OG 163 (October 19,

2004); and

(D) All other information or that portion which caused it to be

listed.

There is no requirement for a copy of each U.S. patent or U.S.

patent application publication listed in an IDS unless required by the Office.

37 CFR

1.98(a)(2)

.

37 CFR

1.98(a)(2)(iii)

requires a copy of a pending U.S.

application that is being cited in an IDS if (A) the cited information is not part

of the specification, including the claims, and the drawings (e.g., an Office

Action, remarks in an amendment paper, etc.), or (B) the cited application is not

stored in the USPTO’s IFW system. The requirement in

37 CFR

1.98(a)(2)(iii)

for a legible copy of the specification,

including the claims, and drawings of each cited pending U.S. patent application

(or portion of the application which caused it to be listed) is

sua

sponte

waived where the cited pending application is stored in the

USPTO’s IFW system

aper, etc.), or (B) the cited application is not

stored in the USPTO’s IFW system. The requirement in

37 CFR

1.98(a)(2)(iii)

for a legible copy of the specification,

including the claims, and drawings of each cited pending U.S. patent application

(or portion of the application which caused it to be listed) is

sua

sponte

waived where the cited pending application is stored in the

USPTO’s IFW system. This waiver is limited to the specification, including the

claims, and drawings in the U.S. application (or portion of the application). If

material other than the specification, including the claims, and drawings in the

file of a U.S. patent application is being cited in an IDS, the IDS must contain a

legible copy of such material.

A pending U.S. application only identified in the specification’s

background information rather than being cited separately on an IDS listing is not

part of an IDS submission. Therefore, the requirements of

37 CFR

1.98(a)(2)(iii)

of supplying a copy of the pending

application is not applicable. Pursuant to

37 CFR 1.98(a)(2)(iii)

,

applicant may choose to cite only a portion of a pending application including any

claims directed to that portion rather than the entire application. There are

exceptions to this requirement that a copy of the information must be provided.

First,

37 CFR

1.98(d)

states that a copy of any patent, publication,

pending U.S. application, or other information listed in an information disclosure

statement is not required to be provided if: (A) the information was previously

cited by or submitted to, the Office in a prior application, provided that the

prior application is properly identified in the IDS and is relied on for an

earlier filing date under

35 U.S.C. 120

; and (B) the IDS

submitted in the earlier application complies with

37 CFR

1.98(a)-(c)

. If both of these conditions are met, the

examiner will consider the information previously cited or submitted to the Office

and considered by the Office in a prior application relied on under

35 U.S.C.

120

ation is properly identified in the IDS and is relied on for an

earlier filing date under

35 U.S.C. 120

; and (B) the IDS

submitted in the earlier application complies with

37 CFR

1.98(a)-(c)

. If both of these conditions are met, the

examiner will consider the information previously cited or submitted to the Office

and considered by the Office in a prior application relied on under

35 U.S.C.

120

. This exception to the requirement for copies of

information does not apply to information which was cited in an international

application under the Patent Cooperation Treaty. If the information cited or

submitted in the prior application was not in English, a concise explanation of

the relevance of the information to the new application is not required unless the

relevance of the information differs from its relevance as explained in the prior

application. See subsection III. below.

Second,

37 CFR 1.98(c)

states that

when the disclosures of two or more patents or publications listed in an

information disclosure statement are substantively cumulative, a copy of one of

the patents or publications may be submitted without copies of the other patents

or publications provided that a statement is made that these other patents or

publications are cumulative. The examiner will then consider only the patent or

publication of which a copy is submitted and will so indicate on the list, form

PTO/SB/08, submitted, e.g., by crossing out the listing of the cumulative

information. But see

Semiconductor Energy Laboratory Co. v. Samsung

Electronics Co.,

204 F.3d 1368, 1374, 54 USPQ2d 1001, 1005 (Fed. Cir.

2000) (Reference was not cumulative since it contained a more complete combination

of the claimed elements than any other reference before the examiner. “A withheld

reference may be highly material when it discloses a more complete combination of

relevant features, even if those features are before the patent examiner in other

references.” (citations omitted).)

374, 54 USPQ2d 1001, 1005 (Fed. Cir.

2000) (Reference was not cumulative since it contained a more complete combination

of the claimed elements than any other reference before the examiner. “A withheld

reference may be highly material when it discloses a more complete combination of

relevant features, even if those features are before the patent examiner in other

references.” (citations omitted).).

37 CFR

1.98(a)(3)(ii)

states that if a written English language

translation of a non-English language document, or portion thereof, is within the

possession, custody or control of, or is readily available to any individual

designated in

37

CFR 1.56(c)

, a copy of the translation shall accompany the

statement. Translations are not required to be filed unless they have been reduced

to writing and are actually translations of what is contained in the non-English

language information. If no translation is submitted, the examiner will consider

the information in view of the concise explanation and insofar as it is understood

on its face, e.g., drawings, chemical formulas, English language abstracts, in the

same manner that non-English language information in Office search files is

considered by examiners in conducting searches.

Electronic means or medium for filing IDSs are not permitted

except for: (A) IDSs electronically submitted using the USPTO patent electronic

filing system (see

MPEP § 609.07

); or (B) copies of large tables, computer

program listings, and sequence listings submitted as a PDF file and a “Sequence

Listing XML” submitted as an XML file on a read-only optical disc in compliance

with

37 CFR

1.52(e)(2)

and

ctronic means or medium for filing IDSs are not permitted

except for: (A) IDSs electronically submitted using the USPTO patent electronic

filing system (see

MPEP § 609.07

); or (B) copies of large tables, computer

program listings, and sequence listings submitted as a PDF file and a “Sequence

Listing XML” submitted as an XML file on a read-only optical disc in compliance

with

37 CFR

1.52(e)(2)

and

(3)

which are cited in a paper

IDS. A read-only optical disc cannot be used to submit an IDS listing or copies of

the documents cited in the IDS (except for large tables, a computer program

listing, a sequence listing, and a “Sequence Listing XML”, discussed above). For

example, published information, such as the visual output of a software program or

a video, may be submitted only if reduced to writing, such as in the form of

screen shots and/or a transcript.

III.

CONCISE EXPLANATION OF RELEVANCE FOR NON-ENGLISH LANGUAGE

INFORMATION

Each information disclosure statement must further include 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 listed that is

not

in the English language

. The concise explanation may be either

separate from the specification or part of the specification. If the concise

explanation is part of the specification, the IDS listing should include the

page(s) or line(s) numbers where the concise explanation is located in the

specification.

The requirement for a concise explanation of relevance is limited

to information that is not in the English language. The explanation required is

limited to the relevance as understood by the individual designated in

37 CFR

1.56(c)

most knowledgeable about the content of the

information at the time the information is submitted to the Office. If a complete

translation of the information into English is submitted with the non-English

language information, no concise explanation is required

in the English language. The explanation required is

limited to the relevance as understood by the individual designated in

37 CFR

1.56(c)

most knowledgeable about the content of the

information at the time the information is submitted to the Office. If a complete

translation of the information into English is submitted with the non-English

language information, no concise explanation is required. There is no requirement

for the translation to be verified, including reliable machine translations. An

English-language equivalent application may be submitted to fulfill this

requirement if it is, in fact, a translation of a foreign language application

being listed in an information disclosure statement. The English language

equivalent application should be separately listed and identified as an English

language equivalent in the information disclosure statement. Submission of an

English language abstract of a reference, such as one generated by a foreign

patent office, may fulfill the requirement for a concise explanation. Where the

information listed is not in the English language, but was cited in a search

report or other action by a foreign patent office in a counterpart foreign

application, the requirement for a concise explanation of relevance can be

satisfied by submitting an English-language version of the search report or action

which indicates the degree of relevance found by the foreign office. This may be

an explanation of which portion of the reference is particularly relevant, to

which claims it applies, or merely an “X”, “Y”, or “A” indication on a search

report. The requirement for a concise explanation of non-English language

information would not be satisfied by a statement that a reference was cited in

the prosecution of a United States application which is not relied on under

35 U.S.C.

120

.

If information cited or submitted in a prior application relied on

under

35

U.S.C

claims it applies, or merely an “X”, “Y”, or “A” indication on a search

report. The requirement for a concise explanation of non-English language

information would not be satisfied by a statement that a reference was cited in

the prosecution of a United States application which is not relied on under

35 U.S.C.

120

.

If information cited or submitted in a prior application relied on

under

35

U.S.C. 120

was not in English, a concise explanation of the

relevance of the information to the new application is not required unless the

relevance of the information differs from its relevance as explained in the prior

application.

The concise explanation may indicate that a particular figure or

paragraph of the patent or publication is relevant to the claimed invention. It

might be a simple statement pointing to similarities between the item of

information and the claimed invention. It is permissible but not necessary to

discuss differences between the cited information and the claims. However, see

Semiconductor Energy Laboratory Co. v. Samsung Electronics

Co.,

204 F.3d 1368, 1376, 54 USPQ2d 1001, 1007 (Fed. Cir. 2000)

(“[A]lthough MPEP Section 609A(3) allows the applicant some discretion in the

manner in which it phrases its concise explanation, it nowhere authorizes the

applicant to intentionally omit altogether key teachings of the reference.”).

In

Semiconductor Energy Laboratory,

patentee

during prosecution submitted an untranslated 29-page Japanese reference as well as

a concise explanation of its relevance and an existing one-page partial English

translation, both of which were directed to less material portions of the

reference. The untranslated portions of the Japanese reference “contained a more

complete combination of the elements claimed [in the patent] than anything else

before the PTO.” 204 F.3d at 1376, 54 USPQ2d at 1005. The patentee, whose native

language was Japanese, was held to have understood the materiality of the

reference

translation, both of which were directed to less material portions of the

reference. The untranslated portions of the Japanese reference “contained a more

complete combination of the elements claimed [in the patent] than anything else

before the PTO.” 204 F.3d at 1376, 54 USPQ2d at 1005. The patentee, whose native

language was Japanese, was held to have understood the materiality of the

reference. “The duty of candor does not require that the applicant translate every

foreign reference, but only that the applicant refrain from submitting partial

translations and concise explanations that it knows will misdirect the examiner’s

attention from the reference’s relevant teaching.” 204 F.3d at 1378, 54 USPQ2d at

1008.

Although a concise explanation of the relevance of the information

is not required for English language information, applicants are encouraged to

provide a concise explanation of why the English-language information is being

submitted and how it is understood to be relevant. Concise explanations

(especially those which point out the relevant pages and lines) are helpful to the

Office, particularly where documents are lengthy and complex and applicant is

aware of a section that is highly relevant to patentability or where a large

number of documents are submitted and applicant is aware that one or more are

highly relevant to patentability.