Patent bar Duty of disclosure, IDS and third-party submissions question: applicant files an IDS citing references

Patent barDuty of disclosure, IDS and third-party submissions

An application was filed on January 12, 2026. The first Office action on the merits, a non-final rejection, was mailed on June 3, 2026. On July 10, 2026, the applicant files an IDS citing references it learned of in May. What must accompany the IDS for it to be considered?

A A petition to the Director showing good cause
B A request for continued examination
C Both the 1.97(e) statement and the 1.17(p) fee
D Nothing, because it was filed before a final action
E The 1.97(e) statement or the 1.17(p) fee

Show the answer and explanation

Answer: E. The 1.97(e) statement or the 1.17(p) fee

Answer: The 1.97(e) statement or the 1.17(p) fee. The IDS is later than three months from filing and after the first action on the merits, so 1.97(b) does not apply. It is before a final action or notice of allowance, so 1.97(c) applies: it will be considered if accompanied by either the statement in 1.97(e) or the fee in 1.17(p) (MPEP 609.04(b)). Because the references were first known in May, less than three months before the July 10 IDS, the 1.97(e)(2) statement may be available as an alternative to the fee. Why not the others: - Nothing: the 1.97(b) window has closed. - Both: both are required only after a final action or allowance, under 1.97(d). - A petition or RCE: not needed at this stage. - An RCE: needed only after prosecution closes and the issue fee route is unavailable. Rule: IDS after the first action but before final or allowance: statement or fee. Source: MPEP § 609.04(b) (9th ed., Rev. 01.2024); 37 CFR 1.97(b)-(e); as at Oct 2026

Common mistake

Thinking an IDS is free until a final rejection.

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Original study material written from the MPEP; not a question from the current exam.Independent. Not affiliated with or endorsed by the USPTO. Verify figures and rules against current guidance before relying on them.