Applicants and other individuals substantively involved with the preparation and/or prosecution of a nonprovisional application have a duty to submit to the USPTO information that is material to patentability. Such information may be submitted via an Information Disclosure Statement (IDS). IDSs are not permitted in provisional applications because no substantive examination is given in provisional applications.See, e.g., MPEP § 609; see also 37 C.F. R. § 1.97(a)-(e).
There are various permitted time periods for filing an IDS. To file an IDS without paying a fee, the IDS must be submitted: (1) within three months of the filing date of a national application other than a continued prosecution application; (2) within three months of the date of entry of the national stage in an international application; (3) before the mailing of a first Office action on the merits; or (4) before the mailing of a first Office action after the filing of a request for continued examination. If the aforementioned time periods have passed, an IDS may be filed at any time prior to payment of the issue fee provided a fee and a statement pursuant to 37 C.F.R. 1.97(e) is also filed therewith. The statement pursuant to 37 C.F.R. 1.97(e) must specify:
- that each item of information contained in the IDS was first cited, in any communication from a foreign patent office in a counterpart foreign application, not more than three months prior to the filing of the information disclosure statement; or
- that no item of information contained in the IDS was cited in a communication from a foreign patent office in a counterpart foreign application, and, to the knowledge of the person signing the certification after making reasonable inquiry, no item of information contained in the IDS was known more than three months prior to the filing of the information disclosure statement.See, Id.
The specific content required in an IDS is specified in 37 C.F.R. 1.98, which you are encouraged to review.