Everyone involved with filing a U.S. patent application has a duty of candor and good faith with the United States Patent and Trademark Office (USPTO). The duty applies to the inventor, the patent owner (if different) and the patent attorney assisting the inventor (hereinafter “the Patent Team”). Part of complying with the duty of candor involves filing an Information Disclosure Statement after filing a patent application if there is information that the Patent Office should know.
Information that Triggers Need to File Information Disclosure Statement
An Information Disclosure Statement (IDS) is a form filed with the Patent Office that lists all known, relevant subject matter that would qualify as “prior art.”Prior art generally means subject matter relevant to an invention that existed before an inventor filed a patent application. Prior art can include documents, patent filings, webpages, commercial activity, and public disclosures.
The prior art does not have to match your invention 100% to trigger the need to file an information disclosure statement. Instead, the need to file an IDS could be triggered when you become aware of information that has similarities to your claims or only a few claims in your application.
Timing for Filing Information Disclosure Statement
If not filed at the time of submitting the application, it is best to file the IDS at least three months after the application has been filed to avoid potential additional fees. The IDS should be filed before the first Office Action is sent from the Patent Office whenever possible.
No Duty to Search for Prior Art
The Patent Team is not required to search for prior art beyond which it already knows. However, if a member of the Patent Team obtains information that might qualify as prior art, they have a duty to disclose the information to the Patent Office.
It is also important for the Patent Team to remain alert for possible sources of prior art, such as international search results or information cited in related patent applications associated with the Patent Team. Failing to report prior art can result in the application not being issued or held unenforceable by a court if the patent has already issued.
If you have questions about patents or the Information Disclosure Statements, contact one of our patent attorneys for answers to your specific circumstances.