# Presentation: 699988

## Application Prosecution Timeline 

- Changes to Information Disclosure Statement (IDS) Requirements Notice of Proposed Rulemaking (NPR)
- 71 FR 38808 (2006)
- XX *Off. Gaz. *YY* (2006)*

## Time Periods 1- 4

- Time Periods 1- 4

**Application Prosecution Timeline**
**and corresponding IDS requirements**

**Application **
**Filed**

**First Office Action **
**on the Merits (FAOM)**

**Allowance of **
**Application**

**Payment of**
**Issue Fee**

**             **_**First Period**_
- Up to 20 citations permitted
- w/o any *explanation* req’d.
* **Explanations* req’d for:
-  each ref. >25 pages, or in
-  non-English language, or for
-  all refs when more than 20

_**Second Period**_
* **Explanation*, and
* **Non-cumulative*
*description*

**        **_**Third Period**_
-  Timeliness cert., and
* **Patentability Justification *which includes:*  Explanation,*
*   **Non-cumulative description, *and either:
- (A) Patentability reasons
- for unamended claims; or
- (B)(1) Statement of unpatentable claims,
- (B)(2) Amendment, and
- (B)(3) Patentability reasons for amended claim(s)

**   **_**Fourth Period**_
- Timeliness cert.;
*Patentability Justification *which includes:
*   **Explanation,*
*   **Non-cumulative description,*
-    Statement of unpatentable claims,
-    Amendment, and
-    Patentability reasons for amended claim(s); and
- Petition to w/d from allowance

**Patent**

**Time Sufficient for Consideration**

**Notes:**
1st period: All documents when cites exceed 20 (cumulatively)*.
*Exceptions during first period: cites submitted with a §1.97(e)(1) timeliness certification and copy of foreign search report, or cites responsive to an Office § 1.105 requirement.

2nd Period: No timeliness certification per § 1.97(e)(1) or (2) , or fee, is required.
What is the “non-cumulative description” that would also be required for any IDS submitted after a 1st action?
A description of how each document is not merely cumulative of any other document. 
**Exceptions during second period:  A certification that each document in the IDS is being filed within three months of the date it was first cited by any foreign patent office in a counterpart foreign application and an accompanying search report, or cites responsive to an Office § 1.105 requirement. 

3rd Period: An IDS may be submitted, but only with a § 1.97(e)(1) or (2) timeliness certification (a certification that each document in the IDS is being filed within three months of the date it: (a) was first cited by any foreign patent office in a counterpart foreign application), or (b) first became known to the applicant, and one of the 2 permitted “patentability justifications.”

4th Period:  An IDS may be submitted, but only with a § 1.97(e)(1) or (2) timeliness certification (a certification that each document in the IDS is being filed within three months of the date it: (a) was first cited by any foreign patent office in a counterpart foreign application), or (b) first became known to the applicant, a petition to withdraw the application from issue, an amendment to the claims admitted to be unpatentable, and the “patentability justification” for the amendment. 

## More Information

- The below listed documents may be accessed via the “More Information” hyperlink associated with the Notice’s title at the following USPTO webpage: _[http://www](http://www.uspto.gov/)__[.uspto.](http://www.uspto.gov/)__gov/web/offices/pac/dapp/ogsheet.html_
- Executive Summary – IDS NPR,
- Detailed Summary – IDS NPR,
- Charts of:  “The Four Time Periods for Submitting an IDS and Their Corresponding Requirements,” and
- Application Prosecution Timeline.
- For more information, please contact the **Office of Patent Legal Administration** at (571) 272-7701 or e-mail to _PatentPractice@USPTO.gov_, or contact one of the following:
- Hiram Bernstein 		571-272-7707
- Brian Hanlon		571-272-5407
- Robert J. Spar  		571-272-7700