Your Duty to Disclose: The USPTO’s Information Disclosure Statement Requirement

The United States Patent and Trademark Office (USPTO) requires inventors to identify any prior art they are aware of at the time of filing. This may seem like doing the examiner’s job for them. However, strategic use of the information disclosure statement (IDS) can enhance the value of your IP assets. With the USPTO's recent fee changes taking effect on January 19, 2025, now is a great time to review these obligations and procedures.

Duty of Disclosure Fundamentals

The duty of disclosure under 37 CFR 1.56 establishes that each individual associated with filing and prosecuting a patent application has an affirmative duty of candor and good faith in dealing with the USPTO. [1]. An affirmative duty requires proactive behavior. In this case, 37 CFR 1.56 requires applicants to submit an IDS. The IDS discloses all information known to be material to patentability. This duty exists for each pending claim in the application and persists until the application is issued or abandoned.  

Who bears the duty?

The duty applies broadly to "each individual associated with the filing and prosecution of a patent application". This includes:

• Inventors

• Patent attorneys or agents representing the applicant

• Other individuals substantially involved in preparing or prosecuting the application.

• Anyone who is associated with the inventor, assignee, or anyone to whom there is an obligation to assign the application

It's important to note that this duty extends beyond the applicant themselves to encompass all individuals involved in the patent process who may possess material information.

IDS Requirements

The IDS is the formal mechanism by which applicants fulfill their duty of disclosure. An IDS must comply with specific content and timing requirements to be considered by the USPTO. [2].

Under 37 CFR 1.98, an IDS must include:

1. A list of all patents, publications, applications, or other information submitted for consideration.

2. A concise explanation of the relevance of each patent submitted for consideration.

3. Copies of cited foreign patent documents and non-patent literature. An English language translation for non-English language documents.

4. As of January 19, 2025, all IDSs will also require an "IDS size fee assertion" statement.

Benefits of submitting a detailed IDS

There are practical benefits to filing a detailed IDS. By reviewing prior art, practitioners gain a more holistic understanding of the invention’s unique features. Detailed IDS submissions enable the examiner to get to substantive examination without sifting through irrelevant prior art.

Strategic IDS documentation can ensure that all allowed claims are examined in light of the most relevant prior art. Robust prosecution is particularly important for patent owners in markets where competitors seek to invalidate their patent through post-grant proceedings at the Patent Trial and Appeal Board (PTAB) and the Court of Appeals for the Federal Circuit (CAFC). With PTAB invalidation rates reaching 71% in early 2024 and CAFC affirmance rates exceeding 80%, patent holders face heightened risks that demand proactive prosecution strategies. [3].

New IDS Size Fee Requirement

Effective January 19, 2025, the USPTO will implement a tiered "IDS size fee" that increases based on the number of items included. [4]. This new fee is separate from and in addition to the existing IDS timing fee. Both fees may be required for a single IDS submission. Under 37 CFR 1.17(v) the tiers include:

1. First tier (§1.17(v)(1)): More than 50 items but not more than 100 items

2. Second tier (§1.17(v)(2)): More than 100 items but not more than 200 items

3. Third tier (§1.17(v)(3)): More than 200 items

An "IDS size fee assertion" is required for IDS filings on or after January 19, 2025. The assertion indicates that either:

• The appropriate IDS size fee accompanies the IDS, or

• No IDS size fee is required.

Failure to comply

The consequences for failing to comply with the IDS requirement can render an entire patent unenforceable. Additional disciplinary action may be taken against practitioners who fail to comply.  

Conclusion:

The duty to disclose is fundamental to the USPTO’s mission to foster innovation for the public good. Ensuring compliance with IDS submission requirements necessitates that all individuals involved in patent prosecution remain vigilant throughout patent pendency. With the new IDS size fee requirement taking effect on January 19, 2025, practitioners should review their procedures to ensure continued compliance.

While the requirements for the duty to disclose seem burdensome in the short term, the added value of a stronger patent, refined through robust examination, extends throughout the patent’s lifespan and may be the difference-maker in invalidity proceedings.

At Bright-Line IP, we helped clients maximize the benefits gained during patent prosecution and maintain their valuable intellectual property rights.

Whether you're looking to file a new patent application or to update your disclosure filing strategically, we're here to guide you every step of the way.

Ready to protect your patent portfolio? Contact Bright-Line IP today to discuss developing a winning patent strategy.

Sources:

1. MPEP § 2001Manual of Patent Examining Procedure § 2001 (9th ed., Rev. 08.2017, Jan. 2018), https://www.uspto.gov/web/offices/pac/mpep/s2001.html  (last visited Apr. 25, 2025).

2. MPEP § 609Manual of Patent Examining Procedure § 609 (9th ed., Rev. 01.2024, Jan. 2024), https://www.uspto.gov/web/offices/pac/mpep/s609.html (last visited Apr. 25, 2025).

3. PTAB StatisticsU.S. Patent & Trademark Office, Patent Trial & Appeal Board Statistics, https://www.uspto.gov/patents/ptab/statistics (last visited Apr. 25, 2025).

4. IDS Quick Reference GuideU.S. Patent & Trademark Office, Quick Reference Guide to the Information Disclosure Statement (IDS) (PDF), https://www.uspto.gov/sites/default/files/documents/quick-reference-guide-to-the-information-disclosure-statement-ids.pdf (last visited Apr. 25, 2025).