MPEP § 2003 — MPEP § 2003
Current through: 2022-07-01

2003-Disclosure __ When Made 
 
 

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Manual of Patent Examining Procedure 

 Chapter 2000 

 Section 2003 
 

 
 
 
 
 
 2003 Disclosure __ When Made [R-07.2022]
 

 
 37 CFR 1.97 Filing of information disclosure
 statement. 

 
 (a) In order for an applicant for a patent or for a
 reissue of a patent to have an information disclosure statement in compliance with
 § 1.98 considered by the Office during the pendency of the application, the
 information disclosure statement must satisfy one of paragraphs (b), (c), or (d)
 of this section. 
 

 (b) An information disclosure statement shall be
 considered by the Office if filed by the applicant within any one of the following
 time periods: 
 
 (1) Within three months of the filing date of a
 national application other than a continued prosecution application under §
 1.53(d); 
 

 (2) Within three months of the date of entry of
 the national stage as set forth in § 1.491 in an international application;
 
 

 (3) Before the mailing of a first Office action
 on the merits; 
 

 (4) Before the mailing of a first Office action
 after the filing of a request for continued examination under § 1.114; or
 
 

 (5) Within three months of the date of
 publication of the international registration under Hague Agreement Article
 10(3) in an international design application. 
 

 
 

 
 
 (c) An information disclosure statement shall be
 considered by the Office if filed after the, period specified in paragraph (b) of
 this section, provided that the information disclosure statement is filed before
 the mailing date of any of a final action under § 1.113, a notice of allowance
 under § 1.311, or an action that otherwise closes prosecution in the application,
 and it is accompanied by one of:
 
 (1) The statement specified in paragraph (e) of
 this section; or 
 

 (2) The fee set forth in § 1.17(p). 

 
 

 
 
 (d) An information disclosure statement shall be
 considered by the Office if filed by the applicant after the period specified in
 paragraph (c) of this section, provided that the information disclosure statement
 is filed on or before payment of the issue fee and is accompanied by: 
 
 (1) The statement specified in paragraph (e) of
 this section; and 
 

 (2) The fee set forth in § 1.17(p). 

 
 

 
 
 (e) A statement under this section must state either: 
 
 (1) That each item of information contained in
 the information disclosure statement was first cited in any communication
 from a foreign patent office in a counterpart foreign application not more
 than three months prior to the filing of the information disclosure
 statement; or 
 

 
 
 (2) That no item of information contained in the
 information disclosure statement was cited in a communication from a foreign
 patent office in a counterpart foreign application, and, to the knowledge of
 the person signing the certification after making reasonable inquiry, no
 item of information contained in the information disclosure statement was
 known to any individual designated in § 1.56(c) more than three months prior
 to the filing of the information disclosure statement. 
 

 
 

 
 *****

 

 The provisions of 37 CFR 1.97 specify when an information
 disclosure statement will be considered as a matter of right and when a certification must
 be made and/or fee submitted in order to have the information disclosure statement
 considered. In any circumstance, information should be submitted promptly.
 

 An applicant, attorney, or agent who is aware of material
 prior art or other information and its significance should submit the information as early
 as possible in prosecution, e.g., before the first Office action, and not wait until after
 allowance. However, potentially material information discovered late in the prosecution
 should be promptly submitted. That the issue fee has been paid is no reason or excuse for
 failing to submit information. See MPEP § 609.04(b) . Additionally, applicant
 should be mindful of the incentives of prompt filing of information as set forth in
 37 CFR 1.704(d)(1) .
 

 Likewise, material prior art or other information and its
 significance should be submitted as soon as possible for reissue applications, and
 reexamination proceedings.
 

 The presumption of validity is generally strong when prior art was before
 and considered by the Office and weak when it was not. See Bolkcom v. Carborundum
 Co. , 523 F.2d 492, 498, 186 USPQ 466, 471 (6th Cir. 1975).
 

 
 2003.01 Disclosure After Patent Is Granted [R-07.2022]
 I. BY CITATIONS OF PRIOR ART AND WRITTEN STATEMENTS UNDER 37 CFR 1.501 Where a patentee or any member of the public (including private
 persons, corporate entities, and government agencies) has certain information which
 they desire to have made of record in the patent file, they may file a citation of
 such information with the Office pursuant to 35 U.S.C.
 301 and 37 CFR 1.501 . Such citations
 will be entered in the patent file without comment by the Office. Information which
 may be filed under 37 CFR 1.501 is limited to prior art patents, printed
 publications or written statements of the patent owner filed by the patent owner in a
 proceeding before a federal court or the Office in which the patent owner took a
 position on the scope of any patent claim. Any citations which include items other
 than those items expressly enumerated in 37 CFR 1.501 will not be entered
 in the patent file. See MPEP § 2202 through
 §
 2208 .
 

 II. BY EX PARTE REEXAMINATION Where any person, including patentee, has prior art patents and/or
 printed publications which the person desires to have the U.S. Patent and Trademark
 Office consider after a patent has issued, such person may file a request for
 ex parte reexamination of the patent (see 37 CFR 1.510 
 and MPEP §
 2209 through § 2220 ). Patent owners or third
 party requesters may bring information, including prior art and incorrect or
 inconsistent positions, to the attention of the USPTO through ex
 parte reexamination.
 

 III. BY SUPPLEMENTAL
 EXAMINATION Where a patent owner desires that the Office
 consider, reconsider, or correct information, including prior art and incorrect or
 inconsistent positions, believed to be relevant to the patent, the patent owner may
 file a request for supplemental examination. See 37 CFR
 1.601 - 1.625 and MPEP Chapter
 2800 . Supplemental examination became available on
 September 16, 2012, as a result of section 257 
 of Title 35, United States Code, which was added by Public Law 112-29, enacted on
 September 16, 2011, known as the Leahy-Smith America Invents Act (AIA). In
 particular, 35 U.S.C. 257(c)(1) states that
 “[a] patent shall not be held unenforceable on the basis of conduct relating to
 information that had not been considered, was inadequately considered, or was
 incorrect in a prior examination of the patent if the information was considered,
 reconsidered, or corrected during a supplemental examination of the patent.”
 Therefore, a patent owner may insulate the patent from being held unenforceable based
 on information submitted in a properly filed supplemental examination request.
 

 Unlike ex parte reexamination
 practice, the information that the patent owner may request to be considered,
 reconsidered, or corrected in a supplemental examination proceeding is not limited to
 patents, printed publications, and patent owner written statements under
 35
 U.S.C. 301 . The “information” may include any information that
 the patent owner believes to be relevant to the patent. For example, the information
 may include not only a patent or a journal article, but also a sales invoice, or a
 transcript of an audio or video recording. In addition, the information submitted as
 part of a request for supplemental examination may involve any ground of
 patentability, such as, for example, patent eligible subject matter, anticipation,
 public use or sale, obviousness, written description, enablement, and
 indefiniteness.
 

 IV. REISSUE Patent owners may bring information, including prior
 art and incorrect or inconsistent positions, to the attention of the USPTO through
 reissue applications. If any reviewed document is material to the patentability
 (i.e., those submitted to another Government entity) of a pending matter before the
 Office, such as reissue application, there is a duty to submit the information to the
 USPTO. 37 CFR
 1.56 and 11.18(b)(2) . See
 MPEP
 § 2015 .
 

 

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 2000-Duty of Disclosure 
 2000.01-Introduction 

 
 

 2001-Duty of Disclosure, Candor, and Good Faith 
 2001.01-Who Has Duty To Disclose 

 2001.02-[Reserved] 

 2001.03-To Whom Duty of Disclosure Is Owed 

 2001.04-Information Under 37 CFR 1.56(a) 

 2001.05-Materiality Under 37 CFR 1.56(b) 

 2001.06-Sources of Information under 37 CFR 1.56 
 2001.06(a)-Prior Art Cited in Related Foreign Applications 

 2001.06(b)-Information Relating to or From Copending United States Patent Applications 

 2001.06(c)-Information From Related Litigation and/or Trial Proceedings 

 2001.06(d)-Information Relating to Claims Copied From a Patent 

 2001.06(e)-Information Relating to Regulatory Review 

 
 

 
 

 2002-Disclosure — By Whom and How Made 
 2002.01-By Whom Made 

 2002.02-Must be in Writing 

 
 

 2003-Disclosure __ When Made 
 2003.01-Disclosure After Patent Is Granted 

 
 

 2004-Aids to Compliance With Duty of Disclosure 

 2005-Comparison to Requirements for Information 

 2006‑2009-[Reserved] 

 2010-Office Handling of Duty of Disclosure/Inequitable Conduct Issues 

 2011-Correction of Errors in Application 

 2012-Reissue Applications Involving Issues of Fraud, Inequitable Conduct, and/or Violation of Duty of Disclosure 
 2012.01-Collateral Estoppel 

 
 

 2013-Protests Involving Issues of Fraud, Inequitable Conduct, and/or Violation of Duty of Disclosure 

 2014-Duty of Disclosure in Reexamination Proceedings and Supplemental Examination 

 2015-Duties of Disclosure and Reasonable Inquiry Arise in Dealings With Other Government Agencies 

 2016-Fraud, Inequitable Conduct, or Violation of Duty of Disclosure Affects All Claims 

 2017‑2022-[Reserved] 

 

 

 
 

 
 
 

 
 

 

 
 
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 Last Modified: 
 
 03/09/2026 20:49:31