Do I have an obligation to disclose prior art to the US Patent Office?

When you file a patent application in the United States, you must submit any known relevant information (e.g., prior art) to the Patent Office. This duty extends for the entirety of the examination. However, you are not required to actively search for prior art.

What is an information disclosure statement (IDS)?

An information disclosure statement (IDS) is a form utilized to submit information to the U.S. Patent and Trademark Office (USPTO) during the examination process. The IDS can include any pertinent information, but most often includes a list of prior art that existed before the filing date of your patent application. Submitting the IDS can fulfill your duty under U.S. patent law to disclose to the USPTO all information known to be material to patentability.

Who actually has the duty to disclose this information?

In U.S. patent practice, all individuals associated with the filing and prosecution of a patent application have a duty of candor and good faith in dealing with the Office. These individuals include the following:

each inventor named in the patent application;
each attorney or agent who prepares or prosecutes the application; and
any other person who is substantively involved in the preparation or prosecution of the application and who is associated with the inventor, the applicant, an assignee, or anyone to whom there is an obligation to assign the application

Every time a patent application is filed with the USPTO, each inventor is required to make a formal declaration that he or she is aware of this duty to disclose information material to patentability.

An IDS is normally prepared and submitted by your patent attorney or patent firm.

What information should be disclosed in the IDS?

The duty applies only to relevant information defined as “material to the patentability” of the invention claimed in your patent application. You may think of this as information that is relevant for the Examiner to determine whether your claimed invention is novel and/or nonobvious.

The following information should be included in an IDS:

Any prior art known by an individual listed above;
Any prior art found in a patentability search;
The prior art cited in Office actions in related U.S. patent application(s);
The prior art cited in Office actions of related non-U.S. patent applications.

For non-English documents and literature, a copy of the original document and an English translation of the entire document (or an English summary of the pertinent information) needs to be submitted along with the IDS. U.S. patent documents can simply be listed (no copies needed).

When should the IDS be filed, and how long does the duty of the disclosure last?

The duty of disclosure exists until a patent is granted on that application. Accordingly, you may end up filing more than one IDS.

There are three defined periods to file an IDS for the prior art to be considered. These are explained (slightly simplified) below:

First Period: Within three months of the U.S. filing date of a patent application, or before the mailing of a first Office action on the merits (whichever is later). When the IDS is filed within the First Period, no government fee is required.
Second Period: After the First Period and before the mailing of a final Office action or a Notice of Allowance. When the IDS is filed within the Second Period, the IDS must be accompanied by either a government fee or a formal statement that (1) the information contained in the IDS was first cited in a foreign patent office not more than three months prior, or (2) the information was not known to any individual more than three months prior.
Third Period: After the Second Period, but before payment of the issue fee. When the IDS is filed in the Third Period, the IDS must be accompanied by both the government fee and a formal statement as described above. If the statement cannot be made, an RCE must be filed (with an additional fee) for the prior art in the IDS to be considered by the Examiner. Note: There are currently some special procedures you can follow to have an IDS considered after the issue fee is paid, but you should discuss this with your patent attorney.

Are we required to search for Prior Art?

No, you are not required to conduct a search for prior art before filing a patent application or before completing an IDS. The IDS should only include prior art known to you.

What is the consequence of not disclosing known prior art that is material to patentability?

If it is found that your duty of disclosure was violated through bad faith or intentional misconduct, then your patent may be considered unenforceable because of inequitable conduct.

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DISCLAIMER: This article is intended to give the reader an overview of the topic, and does not constitute legal advice as to any particular fact situation. Facts matter, and every situation is different. In addition, laws and their interpretations change over time and the contents of this article may not reflect these changes. You are strongly advised to consult competent legal counsel regarding your particular situation.

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