An Information Disclosure Statement, or IDS, is the form a patent applicant files with the United States Patent and Trademark Office to disclose prior art and other references that could affect whether the claimed invention is patentable. Filing one is not optional. Everyone substantively involved in a patent application owes the USPTO a duty of candor, and the IDS is how you meet it.1eCFR. 37 CFR 1.56 – Duty to Disclose Information Material to Patentability What follows is what has to go on the form, when to file it, what it costs, and what happens if you get it wrong.
Who Has to Disclose, and for How Long
The duty of candor runs to each named inventor, every patent attorney or agent involved in preparing or prosecuting the application, and anyone else substantively involved in the filing.1eCFR. 37 CFR 1.56 – Duty to Disclose Information Material to Patentability You disclose anything you know that could be material to patentability. Information is material if it could establish that a claim is unpatentable, either on its own or in combination with other references already in the record. A reference doesn’t need to defeat a claim to qualify. If a reasonable examiner would want to see it, it’s material.
The obligation runs from the moment you file until every pending claim is canceled, withdrawn, or the application is abandoned.1eCFR. 37 CFR 1.56 – Duty to Disclose Information Material to Patentability That can be years. The USPTO specifically expects applicants to review prior art cited in foreign counterpart applications and disclose anything material that turns up there.2United States Patent and Trademark Office. MPEP 2001 Duty of Disclosure, Candor, and Good Faith
What to List on the Form
The regulations split references into three categories, each with its own identification and document-supply requirements.3eCFR. 37 CFR 1.98 – Content of Information Disclosure Statement
U.S. Patents and Published U.S. Applications
For each U.S. patent, list the inventor’s name, patent number, and issue date. For published U.S. applications, list the publication number and date. These go in their own section on the form, separate from the other categories. You don’t have to provide copies; the examiner already has internal access.4United States Patent and Trademark Office. MPEP 609 – Information Disclosure Statement
Foreign Patent Documents
Identify the issuing country or patent office, the document number, and the publication date. You must also submit a legible copy of each foreign document. If the document is not in English, include a concise explanation of its relevance. If an English translation exists and is in your possession or readily available, provide that too.3eCFR. 37 CFR 1.98 – Content of Information Disclosure Statement
Non-Patent Literature
Journal articles, conference papers, technical manuals, product datasheets, and similar publications belong here. Each entry needs the publisher, author (if any), title, relevant pages, date of publication, and place of publication.4United States Patent and Trademark Office. MPEP 609 – Information Disclosure Statement Provide a legible copy of each item, or at least the portion that caused you to list it. Foreign-language items need a relevance explanation and any available translation.
How to Fill Out and File the Form
Use the USPTO’s standardized form, “Information Disclosure Statement by Applicant” (Form SB/08a), available as a fillable PDF on the USPTO website.5United States Patent and Trademark Office. Form-Fillable PDFs Available Enter the applicant’s name, application number, and filing date at the top, then list each reference in the correct section. Match every entry against its supporting document. A typo in a patent number or a wrong publication date can cause the examiner to strike the citation rather than consider it. Submit the completed form through Patent Center, the USPTO’s online filing portal.6United States Patent and Trademark Office. Patent Center
When the examiner reviews the IDS, they initial each citation they considered. A line drawn through a citation means it didn’t comply with the formatting rules and was not reviewed.7U.S. Patent and Trademark Office. Information Disclosure Statement by Applicant You can refile the same reference with corrected formatting. The examiner may also issue a new office action based on what the IDS revealed.
When to File: Three Windows and the Fees
Timing matters more than most applicants expect. The regulations create three windows, each with escalating requirements.8eCFR. 37 CFR 1.97 – Filing of Information Disclosure Statement
- Before the first office action on the merits, or within three months of the filing date, whichever is later: no fee and no certification statement required. Aim for this window whenever possible.
- After the first office action but before a final action or notice of allowance: you need either a certification statement or payment of the IDS fee. The certification declares that each item was first cited by a foreign patent office within three months of filing, or that no item was known to anyone with a disclosure duty more than three months before filing.
- After a final action or notice of allowance, but before paying the issue fee: you need both the certification statement and the fee. Missing either one means the IDS won’t be considered.
The IDS fee under 37 CFR 1.17(p) is $280 for a standard (large) entity, $112 for a small entity, and $56 for a micro entity.9United States Patent and Trademark Office. USPTO Fee Schedule These fees apply only in the second and third windows.
Filing After the Issue Fee: QPIDS
If you discover a relevant reference after paying the issue fee, the examiner won’t consider a new IDS under normal procedures. One option is a Request for Continued Examination (RCE), which is expensive and restarts the examination clock. The Quick Path Information Disclosure Statement program is the faster alternative.10United States Patent and Trademark Office. Quick Path Information Disclosure Statement
Under QPIDS, you file the IDS with Form SB/09, a certification and request specific to the program. The examiner reviews the new references, and if none require reopening prosecution, the USPTO issues a corrected notice of allowability instead of forcing you into an RCE. If the examiner concludes the new references do require further examination, prosecution reopens. The program is permanently available.
What Happens If You Don’t Disclose
The USPTO will not grant a patent where the duty of disclosure was violated through bad faith or intentional misconduct.1eCFR. 37 CFR 1.56 – Duty to Disclose Information Material to Patentability The larger risk comes later. In infringement litigation, a defendant can raise inequitable conduct as a defense, arguing that the applicant deliberately withheld material information from the examiner.
The Federal Circuit’s standard requires the accused infringer to prove two things by clear and convincing evidence. The withheld reference must meet “but-for materiality,” meaning the USPTO would not have allowed the claim if it had seen the reference. And the applicant must have acted with specific intent to deceive: knowing about the reference, knowing it was material, and deliberately choosing to withhold it. Intent to deceive must be the single most reasonable inference from the evidence.
If both elements are established, the remedy is severe. The entire patent is rendered unenforceable, not just the claims affected by the withheld reference. A patent that cost hundreds of thousands of dollars to obtain and enforce can become worthless because someone decided a borderline reference wasn’t worth listing. When in doubt, disclose.
Mistakes That Trip Up Filers
The most common IDS error is procrastination. Applicants sit on references they already know about, plan to file them later, and miss the free window before the first office action. What could have been a no-cost submission then requires a certification statement, a fee, or both.
Incomplete non-patent literature citations are close behind. Listing a journal article without the publication date, page numbers, or publisher can lead the examiner to refuse consideration. The same applies to foreign patent documents submitted without copies or without a relevance explanation for non-English references. These aren’t substantive rejections; they’re formatting failures that force you to refile.
Applicants also treat the IDS as a one-time event. It isn’t. The duty runs throughout prosecution, and new references discovered later require a supplemental IDS. Foreign counterpart search reports that arrive months or years into U.S. prosecution are a frequent source of new material.
Finally, avoid over-curating. Some applicants worry that disclosing too many references hands the examiner ammunition. In practice, the examiner decides independently what matters. An IDS with fifty citations is far less dangerous than one that omitted the reference later used to invalidate the patent in court.