Providing information for an IDS

The duty to disclose information to the USPTO

While your US patent application is pending, information material to patentability must be disclosed to the United States Patent and Trademark Office (USPTO). This duty applies to each named inventor, the attorneys or agents involved, and other individuals substantively involved in preparing or prosecuting the application.

AOMB forwards relevant prior art known to us to the US patent attorney. This includes, for example, documents cited in an earlier search report. We also forward relevant documents subsequently cited by patent offices in other countries.

The US patent attorney submits this information to the USPTO through an Information Disclosure Statement (IDS). This involves costs.

Do you know of information that may be relevant to your US patent application? Send it to AOMB as soon as possible. The deadlines and requirements for submitting this information to the USPTO depend on the stage of the procedure. Together with the US patent attorney, we assess which steps are needed.

Potential consequences of failing to disclose information

Deliberately withholding information material to the assessment of your patent application can have serious consequences. Under certain circumstances, a court may find the US patent unenforceable. Please therefore send us any potentially relevant information, even if you are unsure whether it is relevant.

What information may be relevant?

Examples of potentially relevant information include:

• Earlier publications: documents published before the patent application was filed that you, as an applicant or inventor, know about or encounter. You are not required to conduct your own prior art search, but known material information must be disclosed.
• Other earlier public disclosures: for example, presentations or brochures made publicly available before the filing date.
• Earlier patent applications concerning the same subject: for example, applications filed by you, an inventor, or another patent attorney acting on your behalf.
• Earlier public use or sales: information about the use or sale of a product or process before the patent application was filed.

The format of the information does not matter. It may include books, articles, posters, web pages, photographs, videos, or conference handouts. Information about the use or sale of a product closely resembling the product claimed in the patent application may also be relevant.

Want to know more?

If you have questions about the duty of disclosure or are unsure what information to provide, contact us.