One of our more popular blog posts concerns Information Disclosure Statements (IDSes). Meanwhile, a recurring topic at Takumi Legal Community relates to providing relevant information and instructions to US patent agents and attorneys. So, what information and instructions do US patent attorneys and agents want for filing an IDS?
Applicants can begin by explaining to the US patent attorney why an IDS might be merited. Maybe the specification cites documents in the Related Art section. Perhaps an International Search Report (ISR) cites some documents. In an extreme example, maybe a few documents were cited in a Decision to Grant by a non-US patent office in a divisional application of an unrelated application assigned to the same Applicant. The Applicant might not need to spend the time and money for filing an IDS, depending on why an IDS is believed to be merited.
Next, the Applicant should explain to the US patent attorney which documents should be cited. Should all documents in the specification be cited or only the documents in the Related Art section? Should the IDS cite every document in the ISR or just the X and Y references (i.e., not the A references)? Should all of the foreign family member documents in the ISR be cited or only the family members in the IP5 offices? Should the IDS include any of the references cited in the unrelated, co-assigned foreign divisional Decision to Grant? Should the IDS include the ISR and Decision to Grant themselves?
Ideally, the Applicant should inform the US patent attorney when they first became aware of the information. Was the Applicant first made aware of this information in the last 29 days? Or was the Applicant first made aware of this information in the last 3 months? Was the Applicant made aware of this information years ago, although the Applicant neglected to file an IDS until reminded by a recent non-US Office Action?
Next, the Applicant should discuss whether they have preferred copies of the references. For example, some Japanese patents merely show amendments relative to their application publications. If citing such a Japanese patent, does the Applicant prefer submitting the application publication and the patent, or does the Applicant prefer submitting only the patent? Does the Applicant have a preferred translation of the document, such as from an IP5 office, Google Patents, or DeepL Translator? If any of these documents are in PDF format, are there any non-embedded fonts in the PDF?
Finally, the Applicant should inform their representative of any other considerations. For example, maybe the Applicant is considering abandoning the application. Maybe the Applicant is awaiting the Examiner’s consideration of arguments presented after a final Office Action. Maybe the Applicant believes a competitor’s product might infringe the claims.
So, please provide as much information as possible when considering filing an IDS. And if Modal can assist you with an IDS, please contact us.