Duty of disclosure, IDS and third-party submissions

Everyone substantively involved in an application owes the Office candor until the patent issues. Information disclosure statements carry the duty out, under a three-tier timing scheme; third parties have their own routes in, through preissuance submissions and protests.

Examination and prosecution2 min read4 sections

Must-know for the exam

Duty of candor: inventors, practitioners, and others substantively involved and linked to the inventor or assignee (37 CFR 1.56(c))
The duty lasts until the claim is cancelled, the application is abandoned, or the patent issues (MPEP 2001.04)
There is no duty to search (MPEP 2001.06)
Material = not cumulative and makes a prima facie case or contradicts the applicant's position (37 CFR 1.56(b))
IDS tier 1 (no fee or statement): within 3 months of filing or national stage entry, or before the first action or first action after an RCE (37 CFR 1.97(b))
IDS tier 2: before final or allowance, with the 1.97(e) statement or the fee (37 CFR 1.97(c))
IDS tier 3: after final or allowance, by issue fee payment, with both statement and fee (37 CFR 1.97(d))
Copies of foreign and non-patent items are needed, not of U.S. patents or publications (37 CFR 1.98(a))
An IDS is not an admission of materiality (37 CFR 1.97(h))
Preissuance submissions: before allowance and before the later of 6 months after publication or the first rejection (37 CFR 1.290(b))
First submission of three or fewer items, with a statement, needs no fee (37 CFR 1.290(g))
Protests after publication need the applicant's written consent (37 CFR 1.291(b))

On this page · 4 sections

Traps that cost marks

Thinking an IDS is free until a final rejection.
Confusing the 'either' tier with the 'both' tier.
Ignoring the three-month window in the 1.97(e) statement.
Limiting the duty to the signing attorney.
Thinking the duty ends with allowance.
Sending copies of U.S. patents and forgetting non-English explanations.
Taking the earlier of the six-month date and the first rejection.
Confusing preissuance submissions with protests.

The 1.97(e) statement

Either every item was first cited by a foreign office in a counterpart application not more than three months before the IDS, or no item was cited by a foreign office and none was known to any 1.56(c) individual more than three months before. If neither can be said after final, file an RCE: the IDS then falls in tier 1.

Where to look

When a question turns on a detail you are unsure of, search these sources on the exam computer:

•MPEP 609, 1134, 1901, 2001-2016 (9th ed., Rev. 01.2024)
•35 U.S.C. 122(c), (e)
•37 CFR 1.56, 1.97, 1.98, 1.290, 1.291

Premium

Every note. Every question. One pass.

2 more sections of this note are part of Premium.

Every section of every study note
650+ original questions across every outline topic
Full timed practice exams
A worked explanation on every question
Your full mistake bank and weak-area review

Unlock with Premium

From about US$14.92/mo on the Until-you-pass pass (12 months)

Exam-style questions

← Previous note: Restriction and double patenting All study notes