Information disclosure statement

Last updated

An information disclosure statement (often abbreviated as IDS) refers to a submission of relevant background art or information to the United States Patent and Trademark Office (USPTO) by an applicant for a patent during the patent prosecution process. There is a duty on all patent applicants to disclose relevant art or background information that the applicant is aware of and that may be relevant to the patentability of the applicant's invention, as established by the United States Code title 35 and related sections of 37 CFR and the Manual of Patent Examining Procedure (MPEP). If a patent applicant, with deceptive intent for art known to the applicant, fails to submit material prior art to the USPTO, then any patent that later issues from the patent application may be declared unenforceable because of inequitable conduct. Furthermore, the duty to submit such relevant information to the USPTO lies not only on the applicant or inventor, but also on any patent attorney or other legal staff employed by the applicant.

United States Patent and Trademark Office agency in the United States Department of Commerce

The United States Patent and Trademark Office (USPTO) is an agency in the U.S. Department of Commerce that issues patents to inventors and businesses for their inventions, and trademark registration for product and intellectual property identification.

Patent set of exclusive rights granted by a sovereign state to an inventor or their assignee so that he has a temporary monopoly

A patent is a form of intellectual property. A patent gives its owner the right to exclude others from making, using, selling, and importing an invention for a limited period of time, usually twenty years. The patent rights are granted in exchange for an enabling public disclosure of the invention. In most countries patent rights fall under civil law and the patent holder needs to sue someone infringing the patent in order to enforce his or her rights. In some industries patents are an essential form of competitive advantage; in others they are irrelevant.

Patent prosecution describes the interaction between applicants and their representatives, and a patent office with regard to a patent, or an application for a patent. Broadly, patent prosecution can be split into pre-grant prosecution, which involves negotiation with a patent office for the grant of a patent, and post-grant prosecution, which involves issues such as post-grant amendment and opposition.

Contents

Art listed on an IDS, on its own, is not automatically considered prior art. "Mere listing of a reference in an information disclosure statement is not taken as an admission that the reference is prior art against the claims." [1]

Prior art, in most systems of patent law, is constituted by all information that has been made available to the public in any form before a given date that might be relevant to a patent's claims of originality. If an invention has been described in the prior art or would have been obvious over what has been described in the prior art, a patent on that invention is not valid.

Contents

The information submitted in an IDS typically includes other issued patents, published patent applications, scientific journal articles, books, magazine articles, or any other published material that is relevant to the invention disclosed in the applicant's own patent application, irrespective of the country or language in which the published material was made.

Scientific journal periodical journal publishing scientific research

In academic publishing, a scientific journal is a periodical publication intended to further the progress of science, usually by reporting new research.

Art listed on an IDS is typically broken up into three categories: U.S. patent literature, foreign patent literature, and non-patent literature (NPL). US patent literature consists of issued U.S. patents and U.S. patent application publications. Copies of listed U.S. patent literature do not need to be submitted along with the IDS as USPTO examiners have access to all U.S. patent literature. Foreign patent literature consists of patents issued in foreign countries, foreign application publications if they exist, and PCT international application publications. Non-patent literature consists of any publication that is not a U.S. or foreign patent publication, such as magazine articles or research journals. Copies of listed non-patent literature (NPL) and foreign patent publications need to be submitted along with the IDS or they will not be considered by USPTO examiners. If the copies of NPL or foreign patent publications are not in the English language, the applicant must also submit an English translation or a summary of relevancy in the English language in order for the piece of art to be considered by the examiner.

The Patent Cooperation Treaty (PCT) is an international patent law treaty, concluded in 1970. It provides a unified procedure for filing patent applications to protect inventions in each of its contracting states. A patent application filed under the PCT is called an international application, or PCT application.

The content requirements of an IDS are defined in 37 CFR 1.98, which can be found in the MPEP.

Submission requirements

The submission requirements of an IDS are defined in 37 CFR 1.97, also found in the MPEP, and include when and how the applicant is allowed to submit information disclosure statements. An IDS is not permitted in a provisional application. [2] As of October 2006, relevant art may be submitted on paper using a USPTO-issued form, or electronically using the USPTO's electronic filing system.

Under United States patent law, a provisional application is a legal document filed in the United States Patent and Trademark Office (USPTO), that establishes an early filing date, but does not mature into an issued patent unless the applicant files a regular non-provisional patent application within one year. There is no such thing as a "provisional patent".

See also

Related Research Articles

In United States patent law, a petition to make special (PTMS) is a formal request submitted to the United States Patent and Trademark Office (USPTO) asking that a patent application be examined ahead of the other pending applications in the same technological art.

Under United States patent law, a continuing patent application is a patent application that follows, and claims priority to, an earlier-filed patent application.

In the United States, under current patent law, the term of patent, provided that maintenance fees are paid on time, is 20 years from the filing date of the earliest U.S. or international (PCT) application to which priority is claimed.

Sufficiency of disclosure or enablement is a patent law requirement according to which a patent application must disclose a claimed invention in sufficient detail for the notional person skilled in the art to carry out that claimed invention. The requirement is fundamental to patent law: a monopoly is granted for a given period of time in exchange for a disclosure to the public how to make or practice the invention.

Under United States law, a patent is a right granted to the inventor of a (1) process, machine, article of manufacture, or composition of matter, (2) that is new, useful, and non-obvious. A patent is the right to exclude others from using a new technology. Specifically, it is the right to exclude others from making, using, selling, offering for sale, importing, inducing others to infringe, and/or offering a product specially adapted for practice of the patent.

In United States patent law, a reexamination is a process whereby anyone—third party or inventor—can have a U.S. patent reexamined by a patent examiner to verify that the subject matter it claims is patentable. To have a patent reexamined, an interested party must submit prior art, in the form of patents or printed publications, that raises a "substantial new question of patentability". The Leahy-Smith America Invents Act makes substantial changes to the U.S. patent system, including new mechanisms for challenging patents at the U.S. Patent and Trademark Office. One of the new mechanisms is a post-grant review proceeding, which will provide patent challengers expanded bases on which to attack patents.

The Manual of Patent Examining Procedure (MPEP) is published by the United States Patent and Trademark Office (USPTO) for use by patent attorneys and agents and patent examiners. It describes all of the laws and regulations that must be followed in the examination of U.S. patent applications, and articulates their application to an enormous variety of different situations. The MPEP is based on Title 37 of the Code of Federal Regulations, which derives its authority from Title 35 of the United States Code, as well as on case law arising under those titles. The first version of the MPEP was published in 1920 by the Patent and Trademark Office Society.

In United States patent law, inequitable conduct is a breach of the applicant's duty of candor and good faith during patent prosecution or similar proceedings. A claim of inequitable conduct is a defense to allegations of patent infringement. Even in an instance when a valid patent suffers infringement, a court ruling on an allegation of infringement may exercise its power of equitable discretion not to enforce the patent if the patentee has engaged in inequitable conduct.

A patent application is a request pending at a patent office for the grant of a patent for an invention described in the patent specification and a set of one or more claims stated in a formal document, including necessary official forms and related correspondence. It is the combination of the document and its processing within the administrative and legal framework of the patent office.

This is a list of legal terms relating to patents. A patent is not a right to practice or use the invention, but a territorial right to exclude others from commercially exploiting the invention, granted to an inventor or his successor in rights in exchange to a public disclosure of the invention.

In former United States patent law, a statutory invention registration (SIR) was a publication of an invention by the United States Patent and Trademark Office (USPTO). The publication was made at the request of the applicant. In order for an applicant to have a patent application published as an SIR, the following conditions had to be met:

  1. The application must disclose the invention in sufficient detail that another person of ordinary skill in the art can make and use the invention without undue experimentation ;
  2. The application complies with the requirements for printing, as set forth in regulations of the Director of the patent office;
  3. The applicant waives the right to receive a patent on the invention within such period as may be prescribed by the Director; and
  4. The applicant pays application, publication, and other processing fees established by the Director.

In the United States, an Office action is a document written by an examiner in a patent or trademark examination procedure and mailed to an applicant for a patent or trademark. The expression is used in many jurisdictions.

In order to be registered as a patent agent or patent attorney in the United States, one must pass the United States Patent and Trademark Office (USPTO) registration examination, officially called the Examination for Registration to Practice in Patent Cases Before the United States Patent and Trademark Office and known informally as the patent bar.

The involvement of the public in patent examination is used in some forms to help identifying relevant prior art and, more generally, to help assessing whether patent applications and inventions meet the requirements of patent law, such as novelty, inventive step or non-obviousness, and sufficiency of disclosure.

Title 35 of the United States Code is a title of United States Code regarding patent law. The sections of Title 35 govern all aspects of patent law in the United States. There are currently 37 chapters, which include 376 sections, in Title 35.

The copyright status of the content of patent applications and patents may vary from one legal system to another. Whether scientific literature can be freely copied for the purpose of patent prosecution is also a matter for discussion.

The Peer To Patent project is an initiative that seeks to assist patent offices in improving patent quality by gathering public input in a structured, productive manner. Peer To Patent is the first social-software project directly linked to decision-making by the federal government.

References

  1. ↑ MPEP 2129 IV, citing Riverwood Int'l Corp. v. R.A. Jones & Co., 324 F.3d 1346, 1354-55, 66 USPQ2d 1331, 1337-38 (Fed Cir. 2003) and 37 CFR 1.97(h).
  2. ↑ 37 CFR §1.51

Further reading

This page is based on this Wikipedia article
Text is available under the CC BY-SA 4.0 license; additional terms may apply.
Images, videos and audio are available under their respective licenses.