Information disclosure statement (IDS) is a list of all patents, publications, U.S. applications, or other information submitted for consideration by the United States Patent and Trademark Office (USPTO) in a non-provisional patent application filed under 35 U.S.C. S 111(a) to comply with applicant’s duty to submit to the office information which is substantial to the patentability of the invention.
There are multiple sources for prior art, such as – a search report on a patent family member, references cited by Examiner in an Office action of a family member, etc. Such references are deemed to be known to the applicants. The duty of disclosure is continuing and obligates the disclosure of known art not only at the time of filing the application, but also during the prosecution. After a certain time, it becomes complicated and expensive for the inventors / applicants to track such prior art.
Information disclosure management provides features for uploading different types of references/citations, linking references to multiple patent applications and patents and workflow to manage cross-referencing review and approval processes.
Benefits of IDS management are:
- Reduce the risk of not citing references
When using another author’s intellectual property (from primary or secondary source material), it is essential that you properly cite your source. Giving credit not only benefits your credibility as an author, but will also help you avoid infringement. Be sure to carefully document all the necessary citation information while researching to make the process much easier.
- To show that a patent is valid and enforceable
- A patent is basically a government awarded monopoly for an invention. The patent grants what’s known as a negative right (or right to exclude)—no one else can create, use, sell, or import your invention for any purpose without your consent.
Once a patent is granted, no other party can even legally argue that they independently created it. If anyone violates the patent, you can bring an enforcement action and a court can issue an injunction preventing the other party from continuing their actions.
Disclose all prior art, or information, that pertains to the patentability of the idea or invention: A characteristic of a strong patent is that it is clearly novel and inventive over prior art. A list of prior art need to be submitted when the Patent Office requisitions prior art. The requisition is mainly limited to require the applicant to provide prior art cited in corresponding to patent applications filed in the U.S. and Europe. If the applicant fails to make a good faith response by submitting all the requisitioned prior art within the time allowed, the Patent Office will – i) deem the application abandoned and ii) send the applicant a notice that there is a one-year period to satisfy the requisition