In the last blog we talked about requirements for information and I promised then to contrast that procedure with an information disclosure statements (IDS).

Requirements for Information come from the examiner. Information disclosure statements come from the applicant.

The information disclosure statement is rooted in the duty of every applicant to disclose information material to patentability, as embodied in 37 CFR 1.56. The duty is mandatory; the form of complying with the duty is not. Nonetheless, the Office really encourages compliance using IDSs. Moreover, to make the examiner’s job efficient, the Office encourages early submission of these papers, in effect fining the applicant for late submission.

An IDS is timely filed if submitted within three months of filing or before a first official action on the merits is mailed by the Office, whichever happens last. Since we have no idea when that first action will get sent out, most patent attorneys docket three months as the deadline to get an IDS on file. If you fail to file an IDS before that first action on the merits, but you get it in before appeal or a final rejection is mailed, then the Office requires either a statement that what you are submitting has just recently been found, or a fee, a fine in essence. After appeal is pursued or a final rejection is mailed, the Office will accept an IDS only by both establishing it could not have been filed earlier and paying a fee. If you can’t make that statement, then your only practical alternative is to file a continuing application or an RCE, in both instances postponing the issuance of the patent and likely shortening its term

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