Patent bar Duty of disclosure, IDS and third-party submissions question: applicant make the 1.97(e)(1)

Patent barDuty of disclosure, IDS and third-party submissions

On September 1, 2026, after a final rejection, an applicant wants to file an IDS citing a reference first cited in a European search report on April 15, 2026 in the counterpart application. Can the applicant make the 1.97(e)(1) statement?

A Yes, because the IDS is filed before the issue fee
B Yes, because the reference was cited by a foreign office
C No, because 1.97(e) statements apply only to U.S. references
D Yes, if the applicant pays a double fee
E No; it was first cited over three months before

Show the answer and explanation

Answer: E. No; it was first cited over three months before

Answer: No; it was first cited over three months before. The 1.97(e)(1) statement must say each item was first cited in a communication from a foreign office in a counterpart application not more than three months before the IDS is filed. April 15, 2026 to September 1, 2026 is more than three months. Without the statement, the applicant would need an RCE (MPEP 609.04(b)). Why not the others: - Cited by a foreign office: the timing condition must also be met. - Before the issue fee: timing of the IDS is one condition; the statement is another. - U.S. references only: the statement concerns items cited by foreign offices. - A double fee: no fee substitutes for a statement the applicant cannot truthfully make. Rule: The 1.97(e) statement covers items first cited abroad within three months, or not known for more than three months. Source: MPEP § 609.04(b) (9th ed., Rev. 01.2024); 37 CFR 1.97(e); as at Oct 2026

Common mistake

Ignoring the three-month window in the 1.97(e) statement.

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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.