Patent Information Disclosure Statements: What Must Be Disclosed to the USPTO?
Patent applicants often hear two phrases that sound interchangeable: “duty of disclosure” and “Information Disclosure Statement.” They are related, but they are not the same thing. The duty of disclosure is an ongoing obligation owed to the U.S. Patent and Trademark Office. An Information Disclosure Statement, usually called an IDS, is the principal procedure for placing patents, publications, and other potentially relevant information before the examiner.
Understanding the distinction matters. An IDS is not merely a paperwork formality, and filing one does not automatically resolve every disclosure issue. Applicants need a repeatable process for identifying potentially material information, communicating it to patent counsel, and submitting it at the right stage of prosecution.
What is the USPTO duty of disclosure?
37 C.F.R. § 1.56 imposes a duty of candor and good faith on each individual associated with the filing and prosecution of a patent application. That duty includes disclosing to the USPTO all information known to that individual to be material to patentability.
The obligation is claim-specific and continues while claims remain pending. Information that matters to a claim still under examination should not be ignored merely because it became known after the application was filed or after the examiner issued an Office Action.
Under the rule, information is material when it is not cumulative of information already of record and either establishes, by itself or with other information, a prima facie case that a claim is unpatentable or refutes—or is inconsistent with—a position taken in asserting patentability or opposing an argument of unpatentability. The USPTO’s detailed discussion appears in MPEP § 2001.
That definition reaches beyond a document that anticipates every limitation of a claim. Information may matter because it bears on obviousness, enablement, written description, inventorship, priority, public use, an offer for sale, or a factual representation made during prosecution.
Who owes the duty?
The duty does not belong only to the patent attorney. Rule 56 identifies three groups:
- each inventor named in the application;
- each attorney or patent agent who prepares or prosecutes the application; and
- every other person who is substantively involved in preparing or prosecuting the application and is associated with the inventor, applicant, assignee, or a person obligated to receive an assignment.
The third category can include company personnel who are meaningfully involved in prosecution, depending on what they do and what they know. A project manager who only processes invoices is situated differently from an engineer or in-house patent manager who selects claim features, evaluates prior art, or directs prosecution strategy.
People other than the attorney, agent, or inventor may comply by disclosing relevant information to the attorney, agent, or inventor. That makes internal communication important. A company cannot assume patent counsel knows what its engineers, executives, or foreign counsel have learned.
What is an Information Disclosure Statement?
An IDS is a submission that asks the examiner to consider identified information during examination. Its contents and timing are governed principally by 37 C.F.R. § 1.97 and § 1.98.
A compliant IDS ordinarily identifies U.S. patents and published applications, foreign patent documents, and non-patent literature in the prescribed format. Copies are generally required for foreign patents and non-patent literature, while copies of U.S. patents and U.S. published applications ordinarily are not. Non-English references require a concise explanation of relevance, and an available English-language translation must be provided as the rule directs.
The examiner indicates which submitted items were considered. That considered-reference record can become important in later prosecution, licensing, diligence, and litigation.
Filing an IDS does not represent that the applicant performed a prior-art search. The USPTO expressly states that applicants are not required to conduct a search. Nor does listing a reference amount to an admission that the reference is legally material. Those protections appear in Rule 1.97(g) and (h). But they do not excuse withholding information that is actually known and material.
What information should be evaluated for disclosure?
The analysis should focus on substance, not labels. A patent, paper, product manual, video, email, test report, litigation document, or commercial activity may require attention if it bears materially on a pending claim or a prosecution position.
Common sources include prior-art searches, inventor files, competitor products, academic literature, standards documents, sales materials, crowdfunding pages, demonstrations, and technical reports. References cited by a foreign patent office in a counterpart application also deserve prompt review. Rule 56 specifically encourages applicants to examine foreign search reports and the closest information over which they believe the pending claims are patentable.
Related U.S. applications are another frequent source. MPEP § 2001.06(b) explains that information about a copending application may be material to another application, including applications with overlapping inventors, common ownership, or similar subject matter. Different prosecution teams working on the same portfolio need a way to exchange search reports, Office Actions, claim changes, and inconsistent factual positions.
Information does not become irrelevant because the applicant believes it can be distinguished. The examiner, not the applicant, decides how a submitted reference affects patentability. Counsel can present a reasoned response where appropriate, but the disclosure decision should not be based solely on confidence that the applicant will prevail.
When should an IDS be filed?
Earlier is usually simpler and less expensive. The procedural requirements become more demanding as prosecution advances.
| Stage of prosecution | General Rule 1.97 treatment |
|---|---|
| Within the early filing window or before the first Office Action on the merits | No Rule 1.97 timing statement or timing fee is ordinarily required, although the IDS must satisfy the content rules and any applicable size-fee requirements. |
| After the early window but before final action, a notice of allowance, or another action closing prosecution | The IDS generally must include either the Rule 1.97(e) statement or the Rule 1.17(p) timing fee. |
| After that stage but on or before payment of the issue fee | Both the Rule 1.97(e) statement and the Rule 1.17(p) timing fee generally are required. |
| After payment of the issue fee | An IDS will not be considered under Rule 1.97. Immediate advice is needed regarding the available procedural options. |
The Rule 1.97(e) statement is narrow. It addresses information recently cited by a foreign patent office or information that, after reasonable inquiry, was not known to a covered individual more than three months before the IDS filing. It should not be treated as a generic certification that can be signed whenever a late reference surfaces.
The USPTO’s MPEP § 609 provides the detailed IDS timing and content framework. The practical lesson is simple: send potentially relevant information to patent counsel when it is discovered. Waiting until allowance can increase fees, complicate prosecution, and narrow the available options.
The IDS size fee changed the mechanics of large submissions
Since January 19, 2025, every IDS must include a clear written assertion stating whether an IDS size fee is required. The fee depends on the cumulative number of applicant- or patent-owner-provided items submitted during the proceeding.
Under the current version of 37 C.F.R. § 1.17(v), the tiered totals are $200 when the cumulative count exceeds 50 but not 100 items, $500 when it exceeds 100 but not 200, and $800 when it exceeds 200, with credit for an IDS size fee already paid at a lower tier. These size fees are separate from a timing fee that may be required for a later-filed IDS.
The USPTO’s IDS Size Fee Quick Reference Guide explains how cumulative counting and written assertions work. A request for continued examination does not reset the count because it does not create a new application.
The rule makes orderly portfolio management even more valuable. Applicants should not suppress known material information to avoid a fee. At the same time, indiscriminately submitting every document collected across a large portfolio can increase cost and obscure the record. The answer is a documented review process—not underdisclosure or an unexamined data dump.
Foreign prosecution and related applications need a shared workflow
International families create recurring disclosure issues because relevant information may arrive from several directions. A PCT search report, European search opinion, foreign Office Action, opposition filing, or reference found by local counsel may become relevant to a related U.S. application. The three-month period used by Rule 1.97(e) can also make the date of the foreign communication important.
Businesses with multiple applications should maintain a family map showing priority relationships, related subject matter, pending claims, and the people responsible for each case. When one office cites a new reference or when claims change in one application, counsel should consider whether the information matters elsewhere.
This coordination belongs within the broader patent-application strategy. Drafting, searching, prosecution, and disclosure should operate as one process rather than separate tasks.
An IDS is not the same as an inequitable-conduct finding
Applicants sometimes assume that any missed reference automatically makes a patent unenforceable. That is not the law. Inequitable conduct is a litigation defense with demanding proof requirements. Under the Federal Circuit’s en banc decision in Therasense, Inc. v. Becton, Dickinson & Co., a challenger ordinarily must prove but-for materiality and a specific intent to deceive the USPTO by clear and convincing evidence, subject to the doctrine’s treatment of affirmative egregious misconduct. Materiality and intent are separate requirements, and intent should not be inferred merely because a reference was not submitted.
That litigation standard should not be confused with the disclosure obligations the USPTO applies while an application is pending. The sound approach is not to predict whether a future accused infringer could prove inequitable conduct. It is to comply with Rule 56, submit known material information in a procedurally proper IDS, and preserve a clear record.
If a patent later becomes involved in enforcement, the prosecution record may receive close scrutiny. Tucker Law’s patent-litigation practice considers how claim scope, prior art, prosecution history, and enforceability issues affect the dispute.
A practical disclosure process for inventors and businesses
A workable system should identify who reports information, where it goes, and when counsel reviews it. At the beginning of a matter, inventors and relevant company personnel should receive a concise explanation of the duty. The team should then maintain a shared channel for new references and preserve the date and source of each item.
Before filing, counsel should discuss known searches, publications, commercial activity, related applications, and foreign filings. During prosecution, the same questions should be revisited after Office Actions, foreign search reports, claim amendments, and significant product or technical developments. Before paying an issue fee, the team should conduct a final disclosure check rather than assuming the record is complete.
A patentability search can help shape an application, but a search is not a guarantee that every relevant reference will be found. Likewise, discovering a similar patent does not by itself answer whether the pending claims are patentable. Tucker Law’s guidance on evaluating a patent that resembles an invention explains why the claims and the specific differences matter.
The bottom line
The duty of disclosure is ongoing, shared, and broader than filling out an IDS form. A strong process gets potentially material information from inventors, company personnel, foreign counsel, and related matters to U.S. patent counsel early enough for proper evaluation and submission. It also keeps the prosecution record organized as the claims and business strategy evolve.
If you are preparing a patent application, responding to an Office Action, managing related U.S. and foreign filings, or have discovered a reference late in prosecution, contact Tucker Law to assess the information, the applicable IDS requirements, and the next procedural step.
