MPEP § 609 — MPEP § 609
Current through: 2022-07-01

609-Information Disclosure Statement 
 
 

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

 Skip over navigation 
 
 
 
 
 
 
 
 search for patents | search for trademarks 

 
 
 
 
 
 
 
 
 
 
 
 Search 
 
 
 

 
 

 
 
 
 
 
 PATENTS 
 
 Patent Search 

 
 Patent Process 

 
 Patent Classification 

 
 Patent Forms 

 
 Statistics 

 
 Electronic Business Center 

 
 Patent Laws, Regulations, Policies & Procedures 

 
 Resources and Guidance 

 
 Office of Data Management 

 
 Announcements 

 
 Initiatives & Events 

 
 International Protection 

 
 Employee Locator 

 
 Contact Patents 

 

 

 
 TRADEMARKS 
 
 Trademark Search 

 
 Trademarks Process 

 
 News & Notices 

 
 Manuals, Guides, Official Gazette 

 
 Laws & Regulations 

 
 Online Filing 

 
 Contact Trademarks 

 

 

 
 IP LAW & POLICY 
 
 Rulemaking 

 
 IP Policy and Enforcement 

 
 Protecting IP Overseas 

 
 Training and Education 

 
 Training Programs & Conferences 

 
 Office of Governmental Affairs 

 
 Office of Chief Economist 

 
 Boards and Counsel 

 

 

 
 PRODUCTS & SERVICES 
 
 Electronic Data Products 

 
 XML Resources 

 
 XML Resources - Retrospective 

 
 USPTO Contact Center Order Form 

 
 Services 

 
 Locate Libraries 

 
 Training/Events 

 
 Online Services Hub 

 

 

 
 INVENTORS 
 
 Patents for Inventors 

 
 Trademarks for Inventors 

 
 Inventors Assistance 

 
 Education and Information 

 
 Scam Prevention 

 
 Pro Se and Pro Bono 

 
 Current Events 

 
 State Resources 

 
 InventorsEye Newsletter 

 

 

 
 NEWS & NOTICES 
 
 Subscription Center 

 
 Press Releases 

 
 Testimony and Speeches 

 
 Director's Forum 

 
 Systems Status 

 
 Emergency Notices 

 
 USPTO Videos 

 
 Official Gazette 

 
 Federal Register Notices 

 
 Event Calendar 

 

 

 
 FAQs 
 
 Patents FAQs 

 
 Trademarks FAQs 

 
 Assignments 

 
 Security 

 
 Musicians and Artists 

 
 Browser Plugins 

 
 Other Web Resources 

 

 

 
 ABOUT US 
 
 USPTO Leadership 

 
 USPTO Organization 

 
 USPTO Offices 

 
 Careers 

 
 Budget, Performance, and Planning 

 
 Statistics 

 
 Vendor Information 

 
 Public Advisory Committees 

 
 National Medal of Technology and Innovation 

 
 IP in Motion 

 
 Contact Us 

 

 

 
 
 

 

 
 

 
 
 
 
 Home Page 

 
 Patents 

 
 Patent Laws, Regulations, Policies & Procedures 

 
 Manual of Patent Examining Procedure 

 Chapter 0600 

 Section 609 
 

 
 
 
 
 
 609 Information Disclosure Statement [R-01.2024]

 
 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.
 

 
 

 (f) No extensions of time for filing an information disclosure
 statement are permitted under § 1.136 . If a bona
 fide attempt is made to comply with § 1.98 , but
 part of the required content is inadvertently omitted, additional time may be
 given to enable full compliance.
 

 (g) An information disclosure statement filed in accordance with this
 section shall not be construed as a representation that a search has been
 made.
 

 (h) The filing of an information disclosure statement shall not be
 construed to be an admission that the information cited in the statement is, or is
 considered to be, material to patentability as defined in §
 1.56(b) .
 

 (i) If an information disclosure statement does not comply with either
 this section or § 1.98 , it will be placed in the file but will not be
 considered by the Office.
 

 
 

 
 37 CFR 1.98 Content of information disclosure statement. 

 
 (a) Any information disclosure statement filed under § 1.97 shall
 include the items listed in paragraphs (a)(1), (a)(2) and (a)(3) of this
 section.
 
 (1) A list of all patents, publications, applications, or other
 information submitted for consideration by the Office. U.S. patents and U.S.
 patent application publications must be listed in a section separately from
 citations of other documents. Each page of the list must include:
 
 (i) The application number of the application in which the
 information disclosure statement is being submitted;
 

 (ii) A column that provides a space, next to each document
 to be considered, for the examiner’s initials; and
 

 (iii) A heading that clearly indicates that the list is an
 information disclosure statement.
 

 
 

 (2) A legible copy of:
 
 (i) Each foreign patent;

 (ii) Each publication or that portion which caused it to be
 listed, other than U.S. patents and U.S. patent application
 publications unless required by the Office;
 

 (iii) For each cited pending unpublished U.S. application,
 the application specification including the claims, and any drawing of
 the application, or that portion of the application which caused it to
 be listed including any claims directed to that portion; and
 

 (iv) All other information or that portion which caused it
 to be listed.
 

 
 

 (3)
 
 (i) A concise explanation of the relevance, as it is
 presently understood by the individual designated in §
 1.56(c) most knowledgeable about the content of
 the information, of each patent, publication, or other information
 listed that is not in the English language. The concise explanation
 may be either separate from applicant’s specification or incorporated
 therein.
 

 (ii) A copy of the translation if a written
 English-language translation of a non-English-language document, or
 portion thereof, is within the possession, custody, or control of, or
 is readily available to any individual designated in §
 1.56(c) . 
 

 
 

 
 

 (b)
 
 (1) Each U.S. patent listed in an information disclosure
 statement must be identified by inventor, patent number, and issue date.
 

 (2) Each U.S. patent application publication listed in an
 information disclosure statement shall be identified by applicant, patent
 application publication number, and publication date.
 

 (3) Each U.S. application listed in an information disclosure
 statement must be identified by the inventor, application number, and filing
 date.
 

 (4) Each foreign patent or published foreign patent application
 listed in an information disclosure statement must be identified by the
 country or patent office which issued the patent or published the
 application, an appropriate document number, and the publication date
 indicated on the patent or published application.
 

 (5) Each publication listed in an information disclosure
 statement must be identified by publisher, author (if any), title, relevant
 pages of the publication, date, and place of publication.
 

 
 

 (c) When the disclosures of two or more patents or publications listed
 in an information disclosure statement are substantively cumulative, a copy of one
 of the patents or publications as specified in paragraph (a) of this section may
 be submitted without copies of the other patents or publications, provided that it
 is stated that these other patents or publications are cumulative.
 

 (d) A copy of any patent, publication, pending U.S. application or
 other information, as specified in paragraph (a) of this section, listed in an
 information disclosure statement is required to be provided, even if the patent,
 publication, pending U.S. application or other information was previously
 submitted to, or cited by, the Office in an earlier application, unless:
 
 (1) The earlier application is properly identified in the
 information disclosure statement and is relied on for an earlier effective
 filing date under 35 U.S.C. 120 ; and 
 

 (2) The information disclosure statement submitted in the
 earlier application complies with paragraphs (a) through (c) of this
 section.
 

 
 

 
 

 

 Information Disclosure Statements (IDSs) are not permitted in provisional
 applications filed under 35 U.S.C. 111(b) . See 37 CFR 1.51(d) . Since no substantive
 examination is given in provisional applications, a disclosure of information is
 unnecessary. Any such statement filed in a provisional application will be returned or
 destroyed at the option of the Office.
 

 In nonprovisional applications, applicants and other individuals
 substantively involved with the preparation and/or prosecution of the application have a
 duty to submit to the Office information which is material to patentability as defined in
 37 CFR
 1.56 . The provisions of 37 CFR 1.97 and 37 CFR 1.98 provide a
 mechanism by which patent applicants may comply with the duty of disclosure provided in
 37 CFR
 1.56 using an IDS. The IDS may be filed using form PTO/SB/08.
 Applicants and other individuals substantively involved with the preparation and/or
 prosecution of the patent application also may want the Office to consider information for
 a variety of other reasons; e.g., to make sure that the examiner has an opportunity to
 consider the same information that was considered by these individuals, or by another
 patent office in a counterpart or related patent application filed in another country.
 

 Third parties (individuals not covered by 37 CFR 1.56(c) )
 cannot file information disclosure statements under 37 CFR 1.97 and 37 CFR 1.98 . Third
 parties may only submit patents and publications in compliance with 37 CFR 1.290 
 in applications published under 35 U.S.C. 122(b) . See
 MPEP §
 1134.01 . For unpublished, pending applications, any member of the
 public, including private persons, corporate entities, and government agencies, may file a
 protest under 37 CFR
 1.291 prior to the mailing of a notice of allowance under
 37 CFR
 1.311 . See MPEP Chapter 1900 . Alternatively, third
 parties may provide information to the applicant who may submit the information to the
 Office in an IDS. See 37
 CFR 1.56(d) . The Office will review any submission in an application
 filed by a third party to determine whether the submission is in compliance with
 37 CFR
 1.290 or 1.291 . Any third-party submission that
 does not comply with the requirements of 37 CFR 1.290 or 37 CFR 1.291 will not
 be entered into the application file and will be discarded. Office personnel (including the
 Patent Examining Corps) are instructed to: (1) not reply to or act upon any third-party
 inquiry or other submission in an application, except those in compliance with
 37 CFR
 1.290 or 37 CFR 1.291 ; and (2) decline to accept
 oral or telephone comments or submissions about applications from third parties. See
 MPEP §
 1134.01 .
 

 An information disclosure statement filed in accordance with the provisions
 of 37 CFR
 1.97 and 37 CFR 1.98 will be considered by the
 examiner assigned to the application. Individuals associated in a substantive way with the
 filing and prosecution of a patent application are encouraged to submit information to the
 Office so the examiner can evaluate its relevance to the claimed invention. The procedures
 for submitting an information disclosure statement under the rules are designed to
 encourage individuals to submit information to the Office promptly and in a uniform manner.
 These rules provide certainty for the public by defining the requirements for submitting
 information disclosure statements to the Office so that the Office will consider
 information contained therein before a patent is granted.
 

 The filing of an information disclosure statement shall not be construed as
 a representation that a search has been made. 37 CFR 1.97(g) . There is no requirement
 that an applicant for a patent make a patentability search. Further, the filing of an
 information disclosure statement shall not be construed to be an admission that the
 information cited in the statement is, or is considered to be, material to patentability as
 defined in 37 CFR
 1.56(b) . 37 CFR 1.97(h) . See
 MPEP §
 2129 regarding admissions by applicant.
 

 In order to have information considered by the Office during the pendency
 of a patent application, an information disclosure statement must be (1) in compliance with
 the content requirements of 37 CFR 1.98 , (2) filed in accordance
 with the procedural requirements of 37 CFR 1.97 and (3) signed in
 compliance with 37
 CFR 1.33(b) (e.g., a separate signed page which references and
 accompanies the IDS). An eIDS submission in compliance with the Legal Framework for Patent
 Electronic System ( MPEP §
 502.03 ) would satisfy the signature requirement. The requirements
 as to content are discussed in MPEP § 609.04(a) . The requirements based
 on the time of filing the statement are discussed in MPEP § 609.04(b) . Examiner handling of
 information disclosure statements is discussed in MPEP § 609.05 . For discussion of IDS filed
 electronically (eIDS) via the USPTO patent electronic filing system, see
 MPEP §
 609.07 . For discussion of electronic processing of IDS, see
 MPEP §
 609.08 .
 

 Once the minimum requirements of 37 CFR 1.97 , 37 CFR 1.98 , and
 37 CFR
 1.33(b) are met, the examiner has an obligation to consider the
 information. There is no requirement that the information must be prior art references in
 order to be considered by the examiner. Consideration by the examiner of the information
 submitted in an IDS means nothing more than considering the documents in the same manner as
 other documents in Office search files are considered by the examiner while conducting a
 search of the prior art in a proper field of search. The initials of the examiner placed
 adjacent to the citations on the PTO/SB/08 or its equivalent mean that the information has
 been considered by the examiner to the extent noted above. In addition, the following
 alternative electronic signature method may be used by examiners in information disclosure
 statements to indicate whether the information has been considered. Examiners will no
 longer initial each reference citation considered, but will continue to strikethrough each
 citation not considered. Each page of reference citations will be stamped by the examiner
 with the phrase “All references considered except where lined through” along with the
 examiner’s electronic initials, and the final page of reference citations will include the
 examiner’s electronic signature. Information submitted to the Office that does not comply
 with the requirements of 37 CFR 1.97 , 37 CFR 1.98 , and 37 CFR 1.33(b) 
 will not be considered by the Office but will be placed in the application file. 
 

 Multiple information disclosure statements may be filed in a single
 application, and they will be considered, provided each is in compliance with the
 appropriate requirements of 37 CFR 1.97 , 37 CFR 1.98 and
 37 CFR
 1.33(b) . Use of form PTO/SB/08, “Information Disclosure Statement,”
 is encouraged as a means to provide the required list of information as set forth in
 37 CFR
 1.98(a)(1) . Applicants are encouraged to use the USPTO form PTO/SB/08
 when preparing an information disclosure statement because this form is updated by the
 Office. The form PTO/SB/08 will enable applicants to comply with the requirement to list
 each item of information being submitted and to provide the Office with a uniform listing
 of citations and with a ready way to indicate that the information has been considered. A
 copy of form PTO/SB/08 is reproduced at the end of this section.
 

 
 609.01 Examiner Checklist for Information Disclosure
 Statements [R-01.2024]
 

 Examiners must check to see if an information disclosure statement (IDS)
 complies with:
 

 
 (A) All the time-related requirements of 37 CFR 1.97 ,
 which are based on the time of the filing of the IDS. See MPEP § 609.04(b) 
 for more information.
 

 
 
 
 
 
 Time when IDS is filed 
 37 CFR
 1.97 Requirements 
 

 
 
 
 (1)(a) for national applications (not
 including CPAs), within three months of filing or before first Office action
 on the merits, whichever is later; (b) for national stage applications,
 within three months of entry into national stage or before first Office
 action on the merits, whichever is later; (c) for RCEs and CPAs before the
 first Office action on the merits; or (d) for international design
 applications, within three months of the date of publication of the
 international registration under Hague Agreement Article 10(3) or before
 first Office action on the merits, whichever is later.
 
 None 
 

 
 (2) After (1) but before final action,
 notice of allowance, or Quayle action
 
 1.97(e) statement or 1.17(p) fee.
 
 

 
 (3) After (2) and before (or with) payment
 of issue fee.
 
 1.97(e) statement, and 1.17(p) fee.
 
 

 
 (4) After payment of issue fee. 
 IDS will not be considered. 
 

 
 
 
 (B) All content requirements of 37 CFR 1.98 . See
 MPEP §
 609.04(a) for more information.
 
 (1) Requirements for the IDS listing:
 
 (a) A separate section for citations of U.S. patents and
 U.S. patent application publications;
 

 (b) The application number of the application in which the
 IDS is being submitted on each page of the listing, if known;
 

 (c) A column that provides a blank space next to each
 citation for the examiner’s initials when the examiner considers the
 cited document; and
 

 (d) A heading on the listing that clearly indicates that
 the list is an Information Disclosure Statement;
 

 (e) Proper identification of all cited references:
 
 (i) U.S. patents cited by patent number, issue date
 and inventor(s);
 

 (ii) U.S. patent application publications cited by
 publication number, publication date and inventor(s);
 

 (iii) Pending U.S. applications cited by application
 number, filing date and inventor(s);
 

 (iv) Foreign patent documents cited by document
 number, country and publication or issue date; and
 

 (v) Non-patent literature cited by publisher, author
 (if any), title, relevant pages (when no page numbers are
 supplied, it is understood that all of the pages of the
 publication are the relevant pages), and date and place of
 publication.
 

 
 

 
 

 (2) The requirement of copies for: 
 
 (a) Each cited foreign patent document;

 (b) Each cited non-patent literature publication, or the
 portion therein which caused it to be listed; 
 

 (c) Each cited U.S. pending application that is not stored
 in IFW;
 

 (d) All information cited (e.g., an affidavit or Office
 action), other than the specification, including claims and drawings,
 of a pending U.S. application; and
 

 (e) All other cited information or the portion which
 caused it to be listed.
 

 
 

 (3) For non-English documents that are cited, the following must
 be provided:
 
 (a) A concise explanation of the relevance, as it is
 presently understood by the individual designated in 37 CFR
 1.56(c) most knowledgeable about the content of
 the information, unless a complete translation is provided; and/or
 

 (b) A written English language translation of a
 non-English language document, or portion thereof, if it is within the
 possession, custody or control of, or is readily available to any
 individual designated in 37 CFR
 1.56(c) .
 

 
 

 
 

 
 After the examiner reviews the IDS for compliance with 37 CFR 1.97 and
 1.98 (see MPEP § 609.05 ), the examiner
 should:
 

 
 (A) Consider the information properly submitted in an IDS in the same
 manner that the examiner considers other documents in Office search files while
 conducting a search of the prior art in a proper field of search.
 
 (1) For eIDS, use the eIDS icon on examiner’s workstation to
 consider cited U.S. patents and U.S. patent application publications. See
 MPEP §
 609.07 for more information on eIDS.
 

 (2) Initial the blank column next to the citation to indicate
 that the information has been considered by the examiner, or use the
 alternative electronic signature method by inserting on each page of
 reference citations the phrase “All references considered except where lined
 through” along with the examiner’s electronic initials, and providing the
 examiner’s electronic signature on the final page of reference
 citations.
 

 
 

 (B) Draw a line through the citation to show that it has not been
 considered if the citation fails to comply with all the requirements of
 37 CFR
 1.97 and 37 CFR 1.98 . The examiner
 should inform applicant the reasons why a citation was not considered. If a
 bona fide attempt is made to comply with the content
 requirements of 37 CFR 1.98 , but part of the required content is
 inadvertently omitted, additional time may be given to enable full compliance
 pursuant to 37
 CFR 1.97(f) . See MPEP § 609.04(b) , subsection VI
 and form paragraph 6.51 .
 

 (C) Write “not considered” on an information disclosure statement if
 none of the information listed complies with the requirements of 37 CFR 1.97 
 and 37 CFR
 1.98 . The examiner will inform applicant the reasons why the
 IDS was not considered by using form paragraphs 6.49 through
 6.49.10 .
 

 (D) Sign and date the bottom of the IDS listing, or use the
 alternative electronic signature method noted in item (A)(2) above.
 

 (E) Ensure that a copy of the IDS listing that is signed and dated by
 the examiner is entered into the file and mailed to applicant.
 

 
 For discussion of electronic processing of IDS, see
 MPEP §
 609.08 .
 

 

 
 609.02 Information Disclosure Statements in Continued Examinations or
 Continuing Applications [R-07.2015]
 
 I. CONSIDERATION OF PRIOR ART CITED IN A PARENT INTERNATIONAL APPLICATION When filing a continuing application that claims benefit under
 35 U.S.C.
 120 to a parent application (other than an international
 application that designated the U.S.), it will not be
 necessary for the applicant to submit an information disclosure statement in the
 continuing application that lists the prior art cited by the examiner in the parent
 application unless the applicant desires the information to be printed on the patent
 issuing from the continuing application (for continued prosecution applications filed
 under 37 CFR
 1.53(d) , see subsection A.1. below). The examiner of the
 continuing application will consider information which has been considered by the
 Office in the parent application.
 

 When filing a continuing application that claims benefit under
 35 U.S.C.
 120 to an international application that designated the U.S.
 (see MPEP §
 1895 ), it will be necessary for the applicant to submit an
 information disclosure statement complying with 37 CFR 1.97 and 1.98 in the
 continuing application listing the documents cited in the international search report
 and/or the international preliminary examination report of the international
 application if applicant wishes to ensure that the information is considered by the
 examiner in the continuing application.
 

 See MPEP § 609.03 for consideration of
 documents cited in the international search report in a PCT national stage
 application.
 

 II. IDS IN CONTINUED EXAMINATIONS OR CONTINUING APPLICATIONS 

 A. IDS That Has Been Considered (1) in the Parent Application, or (2)
 Prior to the Filing of a Request for Continued Examination
 (RCE) 

 1. Continued Prosecution Applications (CPAs) Filed Under 37 CFR 1.53(d)
 Information which has been considered by the Office in the
 parent application of a continued prosecution application (CPA) filed under
 37 CFR
 1.53(d) will be part of the file before the examiner and
 need not be resubmitted in the continuing application to have the information
 considered and listed on the patent.
 

 2. Continuation Applications, Divisional Applications, or
 Continuation-in-Part Applications Filed Under 37 CFR 1.53(b) The examiner will consider information which has been
 considered by the Office in a parent application (other than an international
 application; see subsection I., above) when examining: (A) a continuation
 application filed under 37 CFR 1.53(b) , (B) a
 divisional application filed under 37 CFR 1.53(b) , or (C) a
 continuation-in-part application filed under 37 CFR
 1.53(b) . A listing of the information need not be
 resubmitted in the continuing application unless the applicant desires the
 information to be printed on the patent.
 

 If resubmitting a listing of the information, applicant should
 submit a new listing that complies with the format requirements in
 37 CFR
 1.98(a)(1) and the timing requirements of
 37 CFR
 1.97 . Applicants are strongly discouraged from submitting
 a list that includes copies of PTO/SB/08 or PTO-892 forms from other
 applications. A completed PTO/SB/08 form from another application may
 already have initials of an examiner and the application number of another
 application. This information will likely confuse the record. Furthermore, when
 the spaces provided on the form have initials of an examiner, there are no
 spaces available next to the documents listed for the examiner of the
 subsequent application to provide his or her initials, and the previously
 relevant initials may be erroneously construed as being applied for the current
 application.
 

 3. Requests for Continued Examination (RCE) Under 37 CFR 1.114
 Information which has been considered by the Office in the
 application before the filing of a RCE will be part of the file before the
 examiner and need not be resubmitted to have the information considered by the
 examiner and listed on the patent.
 

 B. IDS That Has Not Been Considered (1) in the
 Parent Application, or (2) Prior to the Filing of a Request for Continued
 Examination 

 1. Continued Prosecution Applications Filed Under 37 CFR 1.53(d)
 Information filed in the parent application that complies with
 the content requirements of 37 CFR 1.98 will be
 considered by the examiner in the CPA. No specific request from the applicant
 that the previously submitted information be considered by the examiner is
 required.
 

 2. Continuation Applications, Divisional Applications, or
 Continuation-In-Part Applications Filed Under 37 CFR 1.53(b) For these types of applications, in order to ensure
 consideration of information previously submitted, but not considered, in a
 parent application, applicant must resubmit the information in the continuing
 application in compliance with 37 CFR 1.97 and
 37 CFR
 1.98 . Pursuant to 37 CFR 1.98(d) , if the IDS
 submitted in the parent application complies with 37 CFR
 1.98(a) to (c) , copies of the patents,
 publications, pending U.S. applications, or other information submitted in the
 parent application need not be resubmitted in the continuing application.
 

 When resubmitting a listing of the information, applicant
 should submit a new listing that complies with the format requirements in
 37 CFR
 1.98(a)(1) . Applicants are strongly discouraged from
 submitting a list that includes copies of PTO/SB/08 or PTO-892 forms from other
 applications. A PTO/SB/08 form from another application may already have the
 application number of another application. This information will likely confuse
 the record.
 

 3. Requests for Continued Examination Under 37 CFR 1.114 Information filed in the application in compliance with the
 content requirements of 37 CFR 1.98 before the
 filing of a RCE will be considered by the examiner after the filing of the RCE.
 For example, an applicant filed an IDS in compliance with 37 CFR
 1.98 after the mailing of a final Office action, but the
 IDS did not comply with the requirements of 37 CFR 1.97(d)(1) and
 (d)(2) and therefore, the IDS was not considered by the
 examiner. After applicant files a RCE, the examiner will consider the IDS filed
 prior to the filing of the RCE. For more details on RCE, see
 MPEP §
 706.07(h) . 
 

 

 
 609.03 Information Disclosure Statements in National Stage Applications [R-07.2022]

 When examining a PCT national stage application, the examiner will
 consider all U.S. patents, U.S. patent application publications, and U.S. pending
 applications cited in the international search report that are stored electronically in
 the USPTO’s Image File Wrapper (IFW) system. The examiner will consider other documents
 cited in the international search report when the Form PCT/DO/EO/903 in the national
 stage application indicates that both the international search report and the copies of
 the documents are present in the national stage file. In such a case, the examiner
 should consider the documents from the international search report and indicate by a
 statement in the first Office action that the information has been considered. There is
 no requirement that the examiner list the documents on a PTO-892 form and there is no
 requirement for the applicant to provide a separate listing of the references. However,
 the citations will not be printed on the face of the patent unless listed on a list that
 lends itself to easy capture of the necessary information by the Office printing
 contractor. See MPEP §
 609.06 .
 

 In a national stage application, the following form paragraphs may be
 used where appropriate to notify applicant regarding references listed in the search
 report of the international application:
 

 ¶ 6.53 References Considered in 35 U.S.C. 371 Application Based Upon
 Search Report - Prior to Allowance
 

 The references cited in the PCT international search report by the
 [1] have been considered, but will not be listed on any patent resulting from
 this application because they were not provided on a separate list in compliance with
 37 CFR
 1.98(a)(1) . In order to have the references printed on such resulting
 patent, a separate listing, preferably on a PTO/SB/08 form, must be filed within the set
 period for reply to this Office action.
 

 Examiner Note:
 
 1. In bracket [1] , identify the office (e.g., JPO, EPO,
 etc.) that issued the international search report and the date it issued. 
 

 2. This form paragraph may be used for national stage applications
 under 35 U.S.C.
 371 where the examiner has obtained copies of the cited references
 or where copies of such references are not required under 37 CFR 1.98. If receipt of
 copies of references required under 37 CFR 1.98 is not indicated on the PCT/DO/EO/903
 form in the file, burden is on the applicant to supply such copies for consideration.
 See MPEP §
 1893.03(g) . 
 

 3. Instead of using this form paragraph, the examiner may list the
 references on a PTO-892, thereby notifying the applicant that the references have been
 considered and will be printed on any patent resulting from this application.
 

 4. This form paragraph should only be used prior to allowance when a
 statutory period for reply is being set in the Office action.
 

 5. If the application is being allowed, form paragraph
 6.54 should
 be used with the Notice of Allowability instead of this form paragraph.
 
 
 

 ¶ 6.54 References Considered in 35 U.S.C. 371 Application Based Upon
 Search Report - Ready for Allowance
 

 The references cited in the PCT international search report by the
 [1] have been considered, but will not be listed on any patent resulting from
 this application because they were not provided on a separate list in compliance with
 37 CFR
 1.98(a)(1) . In order to have the references printed on such resulting
 patent, a separate listing, preferably on a PTO/SB/08 form, must be filed within ONE MONTH of
 the mailing date of this communication. NO EXTENSION OF TIME WILL BE GRANTED UNDER EITHER
 37 CFR 1.136(a) OR
 (b) to comply with this requirement.
 

 Examiner Note:
 
 1. In bracket [1] , identify the office (e.g., JPO, EPO,
 etc.) that issued the international search report and the date it issued. 
 

 2. This form paragraph may be used for national stage applications
 under 35 U.S.C.
 371 where the examiner has obtained copies of the cited references
 or where copies of such references are not required under 37 CFR 1.98 . If
 receipt of copies of references required under 37 CFR 1.98 is not indicated on the
 PCT/DO/EO/903 form in the file, burden is on the applicant to supply such copies for
 consideration. See MPEP §
 1893.03(g) . 
 

 3. Instead of using this form paragraph, the examiner may list the
 references on a PTO-892, thereby notifying the applicant that the references have been
 considered and will be printed on any patent resulting from this application.
 
 
 

 ¶ 6.55 References Not Considered in 35 U.S.C. 371 Application Based Upon
 Search Report
 

 The listing of references in the PCT international search report is not
 considered to be an information disclosure statement (IDS) complying with 37 CFR 1.98 .
 37 CFR
 1.98(a)(2) requires a legible copy of: (1) each foreign patent; (2) each
 publication or that portion which caused it to be listed; (3) for each cited pending U.S.
 application, the application specification including claims, and any drawing of the
 application, or that portion of the application which caused it to be listed including any
 claims directed to that portion, unless the cited pending U.S. application is stored in the
 Image File Wrapper (IFW) system; and (4) all other information, or that portion which caused
 it to be listed. In addition, each IDS must include a list of all patents, publications,
 applications, or other information submitted for consideration by the Office (see
 37 CFR 1.98(a)(1) and
 (b) ), and MPEP § 609.04(a) , subsection I. states, “the list ... must be
 submitted on a separate paper.” Therefore, the references cited in the international search
 report have not been considered. Applicant is advised that the date of submission of any item
 of information or any missing element(s) will be the date of submission for purposes of
 determining compliance with the requirements based on the time of filing the IDS, including
 all “statement” requirements of 37 CFR 1.97(e) . See MPEP § 609.05(a) .
 

 Examiner Note:
 
 1. This form paragraph may be used in national stage applications
 under 35 U.S.C.
 371 .
 

 2. Do not use this form paragraph
 when the missing references are U.S. patents, U.S. patent application publications, or
 U.S. pending applications that are stored in IFW.
 
 
 

 

 
 609.04 Content and Timing Requirements for an
 Information Disclosure Statement [R-07.2022]
 

 

 
 609.04(a) Content Requirements for an Information Disclosure
 Statement [R-07.2022]
 

 An information disclosure statement (IDS) must comply with the
 provisions of 37
 CFR 1.98 as to content for the information listed in the IDS to
 be considered by the Office. Each information disclosure statement must comply with
 the applicable provisions of subsection I., II., and III. below. If a bona
 fide attempt is made to comply with the content requirements of
 37 CFR
 1.98 , but part of the required content is inadvertently
 omitted, additional time may be given to enable full compliance pursuant to
 37 CFR
 1.97(f) . See MPEP § 609.04(b) , subsection VI and
 form paragraph 6.51 .
 

 I. LIST OF ALL PATENTS, PUBLICATIONS, U.S. APPLICATIONS, OR OTHER
 INFORMATION Each information disclosure statement must include a list of all
 patents, publications, U.S. applications, or other information submitted for
 consideration by the Office.
 

 37 CFR
 1.98(a)(1) requires the following format for an IDS listing:
 (A) a specified format/identification for each page of an IDS, and that U.S.
 patents and U.S. patent application publications be listed in a section separately
 from citations of other documents; (B) a column that provides a space next to each
 document listed to permit the examiner’s initials; and (C) a heading that
 identifies the list as an IDS.
 

 37 CFR
 1.98(a)(1) specifically requires that U.S. patents and U.S.
 patent application publications be listed separately from the citations of other
 documents. The separation of citations will permit the Office to obtain the U.S.
 patent numbers and the U.S. patent application publication numbers by optical
 character recognition (OCR) from the scanned documents such that the documents can
 be made available electronically to the examiner to facilitate searching and
 retrieval of the cited U.S. patents and U.S. patent application publications from
 the Office’s search databases. Applicants will comply with this requirement if
 they use forms PTO/SB/08, which provide a separate section for listing U.S.
 patents and U.S. patent application publications. Applicants who do not use these
 forms for submitting an IDS must make sure that the U.S. patents and U.S. patent
 application publications are listed in a separate section from citations of other
 documents. 
 

 37 CFR
 1.98(a)(1) also requires that each page of the list must
 clearly identify the application number of the application in which the IDS is
 being submitted, if known. In the past, the Office has experienced problems
 associated with lists that do not properly identify the application in which the
 IDS is being submitted (e.g., when applicants submit a list that includes copies
 of PTO/SB/08 or PTO-892 forms from other applications). Even though the IDS cover
 sheet had the proper application number, each page of the list did not include the
 proper application number, but instead had the application numbers of the other
 applications. If the pages of the list became separated, the Office could not
 associate the pages with the proper application.
 

 In addition, 37 CFR 1.98(a)(1) requires
 that the list must include a column that provides a space next to each document
 listed in order to permit the examiner to enter their initials next to the
 citations of the documents that have been considered by the examiner. This
 provides a notification to the applicant and a clear record in the application to
 indicate which documents have been considered by the examiner in the application.
 Applicants are strongly discouraged from submitting a list that includes copies of
 PTO/SB/08 or PTO-892 forms from other applications. A completed PTO/SB/08 form
 from another application may already have initials of an examiner and the
 application number of another application. This information will likely confuse
 the record. Furthermore, when the spaces provided on the form have initials of an
 examiner, there are no spaces available next to the documents listed for the
 examiner of the subsequent application to provide their initials, and the
 previously relevant initials may be erroneously construed as being applied for the
 current application.
 

 37 CFR
 1.98(a)(1) also requires that each page of the list include
 a heading that clearly indicates that the list is an IDS. Since the Office treats
 an IDS submitted by the applicant differently than information submitted by a
 third party, a heading on each page of the list to indicate that the list is an
 IDS would promote proper treatment of the IDS submitted by the applicant and
 reduce handling errors.
 

 37 CFR
 1.98(b) requires that each item of information in an IDS be
 identified properly. U.S. patents must be identified by the inventor, patent
 number, and issue date. U.S. patent application publications must be identified by
 the applicant, patent application publication number, and publication date. The
 Office will also accept a citation in an IDS where a U.S. patent application
 publication is identified using the inventor instead of the applicant. U.S.
 applications must be identified by the inventor, the eight digit application
 number (the two digit series code and the six digit serial number), and the filing
 date. If a U.S. application being listed in an IDS has been issued as a patent or
 has been published, the applicant should list the patent or application
 publication in the IDS instead of the application. Each foreign patent or
 published foreign patent application must be identified by the country or patent
 office which issued the patent or published the application, an appropriate
 document number, and the publication date indicated on the patent or published
 application. Each publication must be identified by publisher, author (if any),
 title, relevant pages of the publication, and date and place of publication. When
 no page numbers are supplied, it is understood that all of the pages of the
 publication are the relevant pages. The date of publication supplied must include
 at least the month and year of publication, except that the year of publication
 (without the month) will be accepted if the applicant points out in the
 information disclosure statement that the year of publication is sufficiently
 earlier than the effective U.S. filing date and any foreign priority date so that
 the particular month of publication is not in issue. The place of publication
 refers to the name of the journal, magazine, or other publication in which the
 information being submitted was published. See MPEP §
 707.05(e) , for more information on data that should be used
 when citing publications and electronic documents. 
 

 Pending U.S. applications that are being cited can
 be listed under the non-patent literature section or in a new section
 appropriately labeled. If applicant seeks consideration of documents other than
 the specification (including the claims) and drawings of an application, for
 example, Office actions, applicant must list such documents separately under the
 non-patent literature section or in a new section appropriately labeled. The USPTO
 would be understood to be the publisher/place of publication for a listed U.S.
 Office action or a U.S. application. Similarly, the foreign or international
 entity ( e.g., WIPO, EPO) would be understood to be the
 publisher/place of publication for a listed foreign or international search
 report.
 

 For publications obtained from the internet, the
 uniform resource locator (URL) of the webpage that is the source of the
 publication must be provided for the place of publication (e.g., "www.uspto.gov").
 The publisher may be evident from the URL of the webpage. See
 MPEP §
 707.05(e) for examples on listing documents retrieved
 from the internet, including social media posts and screen shots from videos. In
 particular, see examples 17 and 18. Further, for an internet publication obtained
 from a website that archives webpages, both the URL of the archived webpage
 submitted for consideration and the URL of the website from which the archived
 copy of the webpage was obtained should be provided on the document listing (e.g.,
 "Hand Tools," webpage <http://www.farmshopstore.com/handtools.html>, 1 page,
 August 18, 2009, retrieved from Internet Archive Wayback Machine
 <http://web.archive.org/web/20090818144217/
 http://www.farmshopstore.com/handtools.html> on December 20, 2012). Where the
 actual publication date of a non-patent document is not known, the applicant must,
 at a minimum, provide a date of retrieval (e.g., the date a webpage was retrieved)
 or a time frame (e.g., a year, a month and year, a certain period of time ) when
 the document was available as a publication.
 

 The list of information complying with the format requirements of
 37 CFR
 1.98(a)(1) and the identification requirements of
 37 CFR
 1.98(b) may not be incorporated into the specification of
 the application in which it is being supplied, but must be submitted in a separate
 paper. A separate list is required so that it is easy to confirm that applicant
 intends to submit an information disclosure statement and because it provides a
 readily available checklist for the examiner to indicate which identified
 documents have been considered. A separate list will also provide a simple means
 of communication to applicant to indicate the listed documents that have been
 considered and those listed documents that have not been considered. Use of form
 PTO/SB/08, Information Disclosure Statement, to list the documents is encouraged.
 
 

 II. LEGIBLE COPIES In addition to the list of information, each information
 disclosure statement must also include a legible copy of:
 

 
 (A) Each foreign patent;

 (B) Each publication or that portion which caused it to be
 listed , other than U.S. patents and U.S. patent application publications
 unless required by the Office;
 

 (C) For each cited pending unpublished U.S. application, the
 application specification including the claims, and any drawings of the
 application, or that portion of the application which caused it to be listed
 including any claims directed to that portion, unless the cited pending U.S.
 application is stored in the Image File Wrapper (IFW) system. The
 requirement in 37 CFR 1.98(a)(2)(iii) 
 for a legible copy of the specification, including the claims, and drawings
 of each cited pending U.S. patent application (or portion of the application
 which caused it to be listed) is sua sponte waived where
 the cited pending application is stored in the USPTO’s IFW system.
 See Waiver of the Copy Requirement in 37 CFR 1.98 for Cited
 Pending U.S. Patent Applications, 1287 OG 163 (October 19,
 2004); and
 

 (D) All other information or that portion which caused it to be
 listed.
 

 
 There is no requirement for a copy of each U.S. patent or U.S.
 patent application publication listed in an IDS unless required by the Office.
 37 CFR
 1.98(a)(2) .
 

 37 CFR
 1.98(a)(2)(iii) requires a copy of a pending U.S.
 application that is being cited in an IDS if (A) the cited information is not part
 of the specification, including the claims, and the drawings (e.g., an Office
 Action, remarks in an amendment paper, etc.), or (B) the cited application is not
 stored in the USPTO’s IFW system. The requirement in 37 CFR
 1.98(a)(2)(iii) for a legible copy of the specification,
 including the claims, and drawings of each cited pending U.S. patent application
 (or portion of the application which caused it to be listed) is sua
 sponte waived where the cited pending application is stored in the
 USPTO’s IFW system. This waiver is limited to the specification, including the
 claims, and drawings in the U.S. application (or portion of the application). If
 material other than the specification, including the claims, and drawings in the
 file of a U.S. patent application is being cited in an IDS, the IDS must contain a
 legible copy of such material.
 

 A pending U.S. application only identified in the specification’s
 background information rather than being cited separately on an IDS listing is not
 part of an IDS submission. Therefore, the requirements of 37 CFR
 1.98(a)(2)(iii) of supplying a copy of the pending
 application is not applicable. Pursuant to 37 CFR 1.98(a)(2)(iii) ,
 applicant may choose to cite only a portion of a pending application including any
 claims directed to that portion rather than the entire application. There are
 exceptions to this requirement that a copy of the information must be provided.
 First, 37 CFR
 1.98(d) states that a copy of any patent, publication,
 pending U.S. application, or other information listed in an information disclosure
 statement is not required to be provided if: (A) the information was previously
 cited by or submitted to, the Office in a prior application, provided that the
 prior application is properly identified in the IDS and is relied on for an
 earlier filing date under 35 U.S.C. 120 ; and (B) the IDS
 submitted in the earlier application complies with 37 CFR
 1.98(a)-(c) . If both of these conditions are met, the
 examiner will consider the information previously cited or submitted to the Office
 and considered by the Office in a prior application relied on under
 35 U.S.C.
 120 . This exception to the requirement for copies of
 information does not apply to information which was cited in an international
 application under the Patent Cooperation Treaty. If the information cited or
 submitted in the prior application was not in English, a concise explanation of
 the relevance of the information to the new application is not required unless the
 relevance of the information differs from its relevance as explained in the prior
 application. See subsection III. below.
 

 Second, 37 CFR 1.98(c) states that
 when the disclosures of two or more patents or publications listed in an
 information disclosure statement are substantively cumulative, a copy of one of
 the patents or publications may be submitted without copies of the other patents
 or publications provided that a statement is made that these other patents or
 publications are cumulative. The examiner will then consider only the patent or
 publication of which a copy is submitted and will so indicate on the list, form
 PTO/SB/08, submitted, e.g., by crossing out the listing of the cumulative
 information. But see Semiconductor Energy Laboratory Co. v. Samsung
 Electronics Co., 204 F.3d 1368, 1374, 54 USPQ2d 1001, 1005 (Fed. Cir.
 2000) (Reference was not cumulative since it contained a more complete combination
 of the claimed elements than any other reference before the examiner. “A withheld
 reference may be highly material when it discloses a more complete combination of
 relevant features, even if those features are before the patent examiner in other
 references.” (citations omitted).). 
 

 37 CFR
 1.98(a)(3)(ii) states that if a written English language
 translation of a non-English language document, or portion thereof, is within the
 possession, custody or control of, or is readily available to any individual
 designated in 37
 CFR 1.56(c) , a copy of the translation shall accompany the
 statement. Translations are not required to be filed unless they have been reduced
 to writing and are actually translations of what is contained in the non-English
 language information. If no translation is submitted, the examiner will consider
 the information in view of the concise explanation and insofar as it is understood
 on its face, e.g., drawings, chemical formulas, English language abstracts, in the
 same manner that non-English language information in Office search files is
 considered by examiners in conducting searches.
 

 Electronic means or medium for filing IDSs are not permitted
 except for: (A) IDSs electronically submitted using the USPTO patent electronic
 filing system (see MPEP § 609.07 ); or (B) copies of large tables, computer
 program listings, and sequence listings submitted as a PDF file and a “Sequence
 Listing XML” submitted as an XML file on a read-only optical disc in compliance
 with 37 CFR
 1.52(e)(2) and (3) which are cited in a paper
 IDS. A read-only optical disc cannot be used to submit an IDS listing or copies of
 the documents cited in the IDS (except for large tables, a computer program
 listing, a sequence listing, and a “Sequence Listing XML”, discussed above). For
 example, published information, such as the visual output of a software program or
 a video, may be submitted only if reduced to writing, such as in the form of
 screen shots and/or a transcript.
 

 III. CONCISE EXPLANATION OF RELEVANCE FOR NON-ENGLISH LANGUAGE
 INFORMATION Each information disclosure statement must further include a
 concise explanation of the relevance, as it is presently understood by the
 individual designated in 37 CFR 1.56(c) most
 knowledgeable about the content of the information listed that is not
 in the English language . The concise explanation may be either
 separate from the specification or part of the specification. If the concise
 explanation is part of the specification, the IDS listing should include the
 page(s) or line(s) numbers where the concise explanation is located in the
 specification.
 

 The requirement for a concise explanation of relevance is limited
 to information that is not in the English language. The explanation required is
 limited to the relevance as understood by the individual designated in
 37 CFR
 1.56(c) most knowledgeable about the content of the
 information at the time the information is submitted to the Office. If a complete
 translation of the information into English is submitted with the non-English
 language information, no concise explanation is required. There is no requirement
 for the translation to be verified, including reliable machine translations. An
 English-language equivalent application may be submitted to fulfill this
 requirement if it is, in fact, a translation of a foreign language application
 being listed in an information disclosure statement. The English language
 equivalent application should be separately listed and identified as an English
 language equivalent in the information disclosure statement. Submission of an
 English language abstract of a reference, such as one generated by a foreign
 patent office, may fulfill the requirement for a concise explanation. Where the
 information listed is not in the English language, but was cited in a search
 report or other action by a foreign patent office in a counterpart foreign
 application, the requirement for a concise explanation of relevance can be
 satisfied by submitting an English-language version of the search report or action
 which indicates the degree of relevance found by the foreign office. This may be
 an explanation of which portion of the reference is particularly relevant, to
 which claims it applies, or merely an “X”, “Y”, or “A” indication on a search
 report. The requirement for a concise explanation of non-English language
 information would not be satisfied by a statement that a reference was cited in
 the prosecution of a United States application which is not relied on under
 35 U.S.C.
 120 . 
 

 If information cited or submitted in a prior application relied on
 under 35
 U.S.C. 120 was not in English, a concise explanation of the
 relevance of the information to the new application is not required unless the
 relevance of the information differs from its relevance as explained in the prior
 application. 
 

 The concise explanation may indicate that a particular figure or
 paragraph of the patent or publication is relevant to the claimed invention. It
 might be a simple statement pointing to similarities between the item of
 information and the claimed invention. It is permissible but not necessary to
 discuss differences between the cited information and the claims. However, see
 Semiconductor Energy Laboratory Co. v. Samsung Electronics
 Co., 204 F.3d 1368, 1376, 54 USPQ2d 1001, 1007 (Fed. Cir. 2000)
 (“[A]lthough MPEP Section 609A(3) allows the applicant some discretion in the
 manner in which it phrases its concise explanation, it nowhere authorizes the
 applicant to intentionally omit altogether key teachings of the reference.”).
 

 In Semiconductor Energy Laboratory, patentee
 during prosecution submitted an untranslated 29-page Japanese reference as well as
 a concise explanation of its relevance and an existing one-page partial English
 translation, both of which were directed to less material portions of the
 reference. The untranslated portions of the Japanese reference “contained a more
 complete combination of the elements claimed [in the patent] than anything else
 before the PTO.” 204 F.3d at 1376, 54 USPQ2d at 1005. The patentee, whose native
 language was Japanese, was held to have understood the materiality of the
 reference. “The duty of candor does not require that the applicant translate every
 foreign reference, but only that the applicant refrain from submitting partial
 translations and concise explanations that it knows will misdirect the examiner’s
 attention from the reference’s relevant teaching.” 204 F.3d at 1378, 54 USPQ2d at
 1008.
 

 Although a concise explanation of the relevance of the information
 is not required for English language information, applicants are encouraged to
 provide a concise explanation of why the English-language information is being
 submitted and how it is understood to be relevant. Concise explanations
 (especially those which point out the relevant pages and lines) are helpful to the
 Office, particularly where documents are lengthy and complex and applicant is
 aware of a section that is highly relevant to patentability or where a large
 number of documents are submitted and applicant is aware that one or more are
 highly relevant to patentability.
 

 

 
 609.04(b) Timing Requirements for an Information Disclosure
 Statement [R-07.2022]
 

 The procedures and requirements under 37 CFR 1.97 for
 submitting an information disclosure statement are linked to four stages in the
 processing of a patent application:
 

 
 (1)
 
 (a) for national applications (not including CPAs), within
 three months of filing, or before the mailing of a first Office action on
 the merits, whichever is later;
 

 (b) for international applications, within three months of
 the date of entry of the national stage as set forth in 37 CFR
 1.491 or before the mailing of a first Office
 action on the merits in the national stage application, whichever is
 later; 
 

 (c) for continued examinations (i.e., RCEs filed under
 37
 CFR 1.114 ) and CPAs filed under 37 CFR
 1.53(d) , before the mailing of a first Office
 action on the merits;
 

 (d) for international design applications,
 within three months of the date of publication of the international
 registration under Hague Agreement Article 10(3) or before first Office
 action on the merits, whichever is later;
 

 
 

 (2) after the period in (1), but prior to the prosecution of the
 application closes, i.e., before the mailing of a final Office action, a Notice
 of Allowance, or an Ex parte Quayle action, whichever is
 earlier;
 

 (3) after the period in (2) but on or before the date the issue fee
 is paid; and 
 

 (4) after the period in (3) and up to the time the patent
 application can be effectively withdrawn from issue under 37 CFR
 1.313(c) .
 

 
 These procedures and requirements apply to applications filed under
 35 U.S.C.
 111(a) (utility), 161 (plants), 171 (designs),
 and 251 (reissue), as well as international applications entering
 the national stage under 35 U.S.C. 371 . 
 

 The requirements based on the time when the information disclosure
 statement is filed are summarized in MPEP § 609.01 .
 

 I. INFORMATION DISCLOSURE STATEMENT FILED BEFORE FIRST ACTION ON THE MERITS OR
 WITHIN THREE (3) MONTHS OF ACTUAL FILING DATE, NATIONAL STAGE ENTRY DATE, OR
 PUBLICATION UNDER ARTICLE 10(3) OF THE HAGUE AGREEMENT (37 CFR 1.97(b)) An information disclosure statement will be considered by the
 examiner if filed within any one of the following time periods:
 

 
 (A) for national applications (not including CPAs), within three
 months of the filing date of the national application or before the mailing
 date of a first Office action on the merits;
 

 (B) for international applications, within three months of the
 date of entry of the national stage as set forth in 37 CFR
 1.491 or before the mailing date of a first Office
 action on the merits;
 

 (C) for RCEs and CPAs, before the mailing date of a first Office
 action on the merits; or
 

 (D) for international design applications, within
 three months of the date of publication of the international registration
 under Hague Agreement Article 10(3) or before first Office action on the
 merits, whichever is later
 

 
 An information disclosure statement filed within one of these
 periods requires neither a fee nor a statement under 37 CFR
 1.97(e) . An information disclosure statement will be
 considered to have been filed on the day it was received in the Office, or on an
 earlier date of mailing if accompanied by a properly executed certificate of
 mailing or facsimile transmission under 37 CFR 1.8 , or if it is in
 compliance with the provisions of Priority Mail Express® delivery under
 37 CFR
 1.10 . If the last day of the three months period set forth
 in 37 CFR
 1.97(b)(1) and (b)(2) falls on a Saturday, Sunday, or a
 federal holiday within the District of Columbia, the IDS may be timely filed on
 the next succeeding business day which is not a Saturday, Sunday, or a federal
 holiday. See 37
 CFR 1.7(a) . An Office action is mailed on the date indicated
 in the Office action.
 

 It would not be proper to make final a first Office action in a
 continuing application or in an application after the filing of an RCE if the
 information submitted in the IDS during the time period set forth in
 37 CFR
 1.97(b) is used in a new ground of rejection.
 

 A. National Applications, International Applications, and
 International Design Applications The term “national application” includes continuing
 applications (continuations, divisions, and continuations-in-part but not
 CPAs), so three months will be measured from the actual filing date of an
 application as opposed to the effective filing date of a continuing
 application. For international applications, the three months will be measured
 from the date of entry of the national stage. For international design
 applications, the three months will be measured from the date of publication of
 the international registration under Hague Agreement Article 10(3).
 

 All information disclosure statements that comply with the
 content requirements of 37 CFR 1.98 and are filed
 within three months of the filing date, will be considered by the examiner,
 regardless of whatever else has occurred in the examination process up to that
 point in time. Thus, in the rare instance that a final Office action, a notice
 of allowance, or an Ex parte Quayle action is mailed prior
 to a date which is three months from the filing date, any information contained
 in a complete information disclosure statement filed within that three-month
 window will be considered by the examiner. 
 

 Likewise, an information disclosure statement will be
 considered if it is filed later than three months after the application filing
 date but before the mailing date of a first Office action on the merits. An
 action on the merits means an action which treats the patentability of the
 claims in an application, as opposed to only formal or procedural requirements.
 An action on the merits would, for example, contain a rejection or indication
 of allowability of a claim or claims rather than just a restriction requirement
 ( 37 CFR
 1.142 ) or just a requirement for additional fees to have
 a claim considered ( 37 CFR 1.16 ). Thus, if an
 application was filed on January 2 and the first Office action on the merits
 was not mailed until six months later on July 2, the examiner would be required
 to consider any proper information disclosure statement filed prior to July
 2.
 

 B. RCE and CPA The three-month window as discussed above does not apply to a
 RCE filed under 37 CFR 1.114 or a CPA filed
 under 37 CFR
 1.53(d) (effective July 14, 2003, CPAs are only available for design
 applications) . An IDS filed after the filing of a RCE
 will be considered if the IDS is filed before the mailing date of a first
 Office action on the merits. A RCE is not the filing of an application, but
 merely the continuation of prosecution in the current application. After the
 mailing of a RCE, such application is treated as an amended application by the
 examiner and is subject to a short turnover time. Therefore, applicants are
 encouraged to file any IDS with the filing of a RCE. See MPEP §
 706.07(h) for details on RCEs.
 

 Similarly, an IDS filed in a CPA will be considered if the IDS
 is filed before the mailing date of a first Office action on the merits.
 Applicants are encouraged to file any IDS in a CPA as early as possible,
 preferably at the time of filing of the CPA request.
 

 If an IDS cannot be filed before the mailing of a first Office
 action on the merits (generally within two months from the filing of the RCE or
 CPA), applicants may request a three-month suspension of action under
 37 CFR
 1.103(c) in an application at the time of filing of the
 RCE, or under 37 CFR 1.103(b) in a CPA, at the time of filing of the
 CPA. Where an IDS is mailed to the Office shortly before the expiration of a
 three-month suspension under 37 CFR 1.103(b) or
 (c) , applicant is requested to make a courtesy call to
 notify the examiner as to the IDS submission.
 

 II. INFORMATION DISCLOSURE FILED AFTER I. ABOVE BUT BEFORE MAILING OF FINAL
 ACTION, NOTICE OF ALLOWANCE, OR AN EX PARTE QUAYLE ACTION (37 CFR
 1.97(c)) An information disclosure statement will be considered by the
 examiner if filed after the period specified in subsection I. above, but prior to
 the date the prosecution of the application closes, i.e., before (not on the same
 day as the mailing date of any of the following):
 

 a final action under 37 CFR 1.113 , e.g., final
 rejection;
 

 a notice of allowance under 37 CFR 1.311 ; or
 

 an action that closes prosecution in the application, e.g., an
 Ex parte Quayle action,
 

 whichever occurs first, provided the information disclosure
 statement is accompanied by either (1) a statement as specified in
 37 CFR
 1.97(e) (see the discussion in subsection V below); or (2)
 the fee set forth in 37 CFR 1.17(p) . If a final
 action, notice of allowance, or an Ex parte Quayle action is
 mailed in an application and later withdrawn, the application will be considered
 as not having had a final action, notice of allowance, or an Ex parte
 Quayle action mailed for purposes of considering an information
 disclosure statement.
 

 An Ex parte Quayle action is an action that
 closes the prosecution in the application as referred to in 37 CFR
 1.97(c) . Therefore, an information disclosure statement
 filed on the same day as or after the mailing date of an Ex parte
 Quayle action must comply with the provisions of 37 CFR
 1.97(d) . 
 

 The filing of a notice of appeal under
 37 CFR
 41.31 also closes prosecution of the application. Therefore,
 an information disclosure statement filed on the same day as or after the mailing
 date of a notice of appeal must comply with the provisions of 37 CFR
 1.97(d) .
 

 A. Information is Used in a New Ground of
 Rejection 

 1. Final Rejection is Not Appropriate If information submitted during the period set forth in
 37 CFR
 1.97(c) with a statement under 37 CFR
 1.97(e) is used in a new ground of rejection on
 unamended claims, the next Office action will not be made final since in
 this situation it is clear that applicant has submitted the information to
 the Office promptly after it has become known and the information is being
 submitted prior to a final determination on patentability by the Office.
 

 2. Final Rejection Is Appropriate The information submitted with a statement under
 37 CFR
 1.97(e) can be used in a new ground of rejection and
 the next Office action can be made final, if the new ground of rejection was
 necessitated by amendment of the application by applicant. Where the
 information is submitted during this period with a fee as set forth in
 37 CFR 1.17(p) , the
 examiner may use the information submitted, and make the next Office action
 final whether or not the claims have been amended, provided that no other
 new ground of rejection which was not necessitated by amendment to the
 claims is introduced by the examiner. See MPEP §
 706.07(a) .
 

 III. INFORMATION DISCLOSURE STATEMENT FILED AFTER II. ABOVE BUT PRIOR TO PAYMENT
 OF ISSUE FEE (37 CFR 1.97(d)) An information disclosure statement will be considered by the
 examiner if filed on or after the mailing date of any of the following: a final
 action under 37
 CFR 1.113; a notice of allowance under 37 CFR
 1.311 ; or an action that closes prosecution in the application,
 e.g., an Ex parte Quayle action, but before or simultaneous
 with payment of the issue fee, provided the statement is accompanied by:
 

 
 (A) a statement as specified in 37 CFR
 1.97(e) (see the discussion in subsection V; and 
 

 (B) the fee set forth in 37 CFR
 1.17(p) .
 

 
 These requirements are appropriate in view of the late stage of
 prosecution when the information is being submitted, i.e., after the examiner has
 reached a final determination on the patentability of the claims presented for
 examination. Payment of the fee ( 37 CFR 1.17(p) )
 and submission of the appropriate statement
 ( 37 CFR
 1.97(e) ) are the essential elements for having information
 considered at this advanced stage of prosecution, assuming the content
 requirements of 37 CFR 1.98 are satisfied.
 

 An information disclosure statement filed during
 this time period will be handled by the examiner as a “Printer Rush”. See
 MPEP §
 1309.02 . 
 

 Form paragraph 6.52 may be used to inform the
 applicant that the information disclosure statement is being considered.
 

 ¶ 6.52 Information Disclosure Statement Filed After Prosecution Has Been Closed

 The information disclosure statement (IDS) submitted on [1] was filed after the mailing date of the [2] on [3] . The submission is in compliance with the provisions of 37 CFR 1.97 . Accordingly, the information disclosure statement is being considered by the examiner.
 

 Examiner Note:
 
 1. In bracket 1, insert the date the IDS was filed.

 2. In bracket 2, insert --final Office action--, --Notice of Allowance--, or an -- Ex parte Quayle action-- as appropriate.
 
 
 

 The requirements of 37 CFR 1.97 provide for
 consideration by the Office of information which is submitted within a reasonable
 time, i.e., within three months after an individual designated in
 37 CFR
 1.56(c) becomes aware of the information or within three
 months of the information being cited in a communication from a foreign patent
 office in a counterpart foreign application. This undertaking by the Office to
 consider information would be available throughout the pendency of the application
 until the point where the patent issue fee was paid. 
 

 If an applicant chose not to comply, or could not comply, with the
 requirements of 37 CFR 1.97(d) , the applicant may file a RCE under
 37 CFR
 1.114 , or a continuing application under 37 CFR
 1.53(b) (or 37 CFR 1.53(d) if the
 application is a design application) to have the information considered by the
 examiner. If the applicant files a continuing application under 37 CFR
 1.53(b) , the parent application could be permitted to become
 abandoned by not paying the issue fee required in the Notice of Allowance. If the
 prior application is a design application, the filing of a continued prosecution
 application under 37 CFR 1.53(d) automatically
 abandons the prior application. See the discussion in MPEP §
 609.02 .
 

 IV. INFORMATION DISCLOSURE STATEMENT FILED AFTER PAYMENT OF ISSUE FEE After the issue fee has been paid on an application, it is
 impractical for the Office to attempt to consider newly submitted information.
 Information disclosure statements filed after payment of the issue fee in an
 application will not be considered but will merely be placed in the application
 file. See MPEP §
 609.05(b) . The application may be withdrawn from issue
 at this point, pursuant to 37 CFR 1.313(c)(2) or
 1.313(c)(3) so that the information can be considered in
 the application upon the filing of a RCE under 37 CFR 1.114 or in a
 continuing application filed under 37 CFR 1.53(b) (or
 37 CFR
 1.53(d) if the application is a design application). In this
 situation, a RCE, or a CPA (if the prior application is a design application), or
 a continuing application filed under 37 CFR 1.53(b) could be filed
 even though the issue fee had already been paid. See MPEP § 1308 .
 Applicants are encouraged to file the petition under 37 CFR
 1.313(c)(2) with a RCE, or the petition under
 37 CFR
 1.313(c)(3) with a CPA or continuing application under
 37 CFR
 1.53(b) , by the USPTO patent electronic filing system (see
 MPEP §
 502.05 ) or facsimile transmission to the Office of
 Petitions (see MPEP
 § 502.01 , subsection I.B. and § 1730 for the
 facsimile number). Alternatively, petitions to withdraw from issue may be
 hand-carried to the Office of Petitions (see MPEP § 502 ). The
 Office cannot ensure that any petition under 37 CFR 1.313(c) will be acted
 upon prior to the date of patent grant. Applicants considering filing a petition
 under 37 CFR
 1.313(c) are encouraged to call the Office of Petitions to
 determine whether sufficient time remains before the patent issue date to consider
 and grant a petition under 37 CFR 1.313(c) . If a petition
 under 37 CFR
 1.313(c)(3) is being filed by facsimile transmission, the
 petition need not be accompanied by the information disclosure statement if the
 size of the statement makes its submission by facsimile impracticable, but the
 petition should indicate that an IDS will be filed in the continuing application
 if it does not accompany the petition under 37 CFR 1.313(c)(3) . The IDS
 should be filed before the mailing of a first Office action on the merits. If a
 design CPA is being filed and the IDS cannot be filed within this time period,
 applicants may request a three-month suspension of action under 37 CFR
 1.103(b) at the time of filing of the design CPA. See the
 discussion above in paragraph I.B. If a petition under 37 CFR
 1.313(c)(2) is being filed, the RCE must be accompanied by a
 proper submission in order for the RCE to be in compliance with 37 CFR
 1.114 . Therefore, the IDS must accompany the RCE and the
 petition under 37 CFR 1.313(c)(2) if the IDS is the submission for the
 RCE.
 

 In May of 2012 the Office launched the Quick Path
 Information Disclosure Statement (QPIDS) Pilot Program. This pilot program allows,
 under specific circumstances, for the submission of an IDS after payment of the
 issue fee but prior to patent grant. Information on the QPIDS Pilot Program can be
 found on the USPTO website www.uspto.gov/patent/initiatives/quick- path-information-disclosure-
 statement-qpids .
 

 Alternatively, for example, a petition pursuant to
 37 CFR
 1.313(c)(1) could be filed if applicant states that one or
 more claims are unpatentable. This statement that one or more claims are
 unpatentable over the information must be unequivocal. A statement that a serious
 question as to patentability of a claim has been raised, for example, would not be
 acceptable to withdraw an application from issue under 37 CFR
 1.313(c)(1) . Form paragraph 13.09 may be
 used.
 

 ¶ 13.09 Information Disclosure Statement, Issue Fee Paid

 Applicant’s information disclosure statement of [1] was
 filed after the issue fee was paid. Information disclosure statements filed after payment of
 the issue fee will not be considered, but will be placed in the file. However, the application
 may be withdrawn from issue in order to file a request for continued examination (RCE) under
 37 CFR
 1.114 upon the grant of a petition under 37 CFR 1.313(c)(2) , or a
 continuing application under 37 CFR 1.53(b) (or a continued prosecution application (CPA) under
 37 CFR
 1.53(d) if the CPA is for a design patent and the prior application of
 the CPA is a design application filed under 35 U.S.C. chapter 16) upon the grant of a petition
 filed under the provisions of 37 CFR 1.313(c)(3) . Alternatively, the
 other provisions of 37 CFR
 1.313 may apply, e.g., a petition to withdraw the application from issue
 under the provisions of 37
 CFR 1.313(c)(1) may be filed together with an unequivocal statement by
 the applicant that one or more claims are unpatentable over the information contained in the
 statement. The information disclosure statement would then be considered upon withdrawal of
 the application from issue under 37 CFR 1.313(c)(1) .
 

 Examiner Note:
 
 1. For information disclosure
 statements submitted after the issue fee has been paid, use this form paragraph with
 form PTOL-90 or PTO-90C.
 

 2. In bracket 1, insert the filing
 date of the IDS.
 
 
 

 If an application has been withdrawn from issue under one of the
 provisions of 37
 CFR 1.313(c)(1)-(3) , it will be treated as though no notice
 of allowance had been mailed and the issue fee had not yet been paid with regard
 to the time for filing information disclosure statements. Petitions under
 37 CFR
 1.313(c) should be directed to the Office of Petitions in
 the Office of the Deputy Commissioner for Patents who oversees the Office of
 Petitions. See MPEP
 § 1308 .
 

 V. STATEMENT UNDER 37 CFR 1.97(e) A statement under 37 CFR 1.97(e) 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 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 statement after making reasonable inquiry, no item of
 information contained in the information disclosure statement was known to
 any individual designated in 37 CFR 1.56(c) more than
 three months prior to the filing of the statement. 
 

 
 A statement under 37 CFR 1.97(e) can contain
 either of two statements. One statement is that each item of information in an
 information disclosure statement was first cited in any communication, such as a
 search report, from a patent office outside the U.S. in a counterpart foreign
 application not more than three months prior to the filing date of the statement.
 Applicant would not be able to make a statement under 37 CFR
 1.97(e) where an item of information was first cited by a
 foreign patent office, for example, a year before the filing of the IDS, in a
 communication from that foreign patent office, and the same item of information is
 once again cited by another foreign patent office within three months prior to the
 filing of the IDS in the Office. Similarly, applicant would not be able to make a
 statement under 37 CFR 1.97(e) where an item of information was cited in an
 examination report and the same item of information was previously cited more than
 three months prior to the filing of the IDS in the Office, in a search report from
 the same foreign patent office. Under this statement, it does not matter whether
 any individual with a duty of disclosure actually knew about any of the
 information cited before receiving the search report. Note that compliance with
 the statement requirement of 37 CFR 1.97(e) does not
 substitute for compliance with 37 CFR 1.704(d) when
 attempting to avoid reduction of patent term adjustment. 
 

 The date on the communication by the foreign patent office begins
 the three-month period in the same manner as the mailing of an Office action
 starts a three-month shortened statutory period for reply. If the communication
 contains two dates, the mailing date of the communication is the one which begins
 the three-month period. The date which begins the three-month period is not the
 date the communication was received by a foreign associate or the date it was
 received by a U.S. registered practitioner. Likewise, the statement will be
 considered to have been filed on the date the statement was received in the
 Office, or on an earlier date of mailing or transmission if accompanied by a
 properly executed certificate of mailing or facsimile transmission under
 37 CFR
 1.8 , or if it is in compliance with the provisions for
 Priority Mail Express® delivery under 37 CFR 1.10 . If the last day
 of the three months period set forth in 37 CFR 1.97(e)(1) and
 (e)(2) falls on a Saturday, Sunday, or a federal holiday
 within the District of Columbia, the statement under 37 CFR
 1.97(e)(1) or (e)(2) may be timely filed on
 the next succeeding business day which is not a Saturday, Sunday, or a federal
 holiday. See 37 CFR 1.7(a) .
 

 The term counterpart foreign patent application means that a claim
 for priority has been made in either the U.S. application or a foreign application
 based on the other, or that the disclosures of the U.S. and foreign patent
 applications are substantively identical (e.g., an application filed in the
 European Patent Office claiming the same U.K. priority as claimed in the U.S.
 application). Note, an international application filed under the Patent
 Cooperation Treaty, which designates the U.S., is not a counterpart foreign
 application for purposes of making the statement set forth in 37 CFR
 1.97(e) . Therefore, applicant should, instead, consider the
 applicability of making a statement under 37 CFR 1.97(e)(2) for
 information received in an international application.
 

 Communications from foreign patent offices in foreign applications
 sometimes include a list of the family of patents corresponding to a particular
 patent being cited in the communication. The family of patents may include a
 United States patent or other patent in the English language. Some applicants
 submit information disclosure statements to the PTO which list and include copies
 of both the particular patent cited in the foreign patent office communication and
 the related United States or other English language patent from the family list.
 Since this is to be encouraged, the United States or other English language patent
 will be construed as being cited by the foreign patent office for purposes of a
 statement under 37 CFR 1.97(e)(1) . The examiner should consider the United
 States or other English language patent if 37 CFR 1.97 and
 37 CFR
 1.98 are complied with. Further, 37 CFR
 1.97(e)(1) is construed to include any information in a
 foreign patent office communication, including the communication itself, such as
 an office action or search report.
 

 If an information disclosure statement includes a copy of a dated
 communication from a foreign patent office which clearly shows that the statement
 is being submitted within three months of the date on the communication, the copy
 of the dated communication from the foreign patent office by itself will
 not be accepted as the required statement under
 37 CFR
 1.97(e)(1) since it would not be clear from the dated
 communication whether the information in the IDS was “first cited” in any
 communication from a foreign patent office not more than three months prior to the
 filing of the IDS as required by 37 CFR 1.97(e)(1) . 
 

 In the alternative, a statement can be made if 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 statement after making reasonable
 inquiry, neither was it known to any individual having a duty to disclose more
 than three months prior to the filing of the statement. If an inventor of the U.S.
 application is also a named inventor of one of the items of information contained
 in the IDS, the 37 CFR 1.97(e)(2) statement cannot be made for that
 particular item of information, and if made, will not be accepted.
 

 The phrase “after making reasonable inquiry” makes it clear that
 the individual making the statement has a duty to make reasonable inquiry
 regarding the facts that are being stated. The statement can be made by a
 registered practitioner who represents a foreign client and who relies on
 statements made by the foreign client as to the date the information first became
 known. A registered practitioner who receives information from a client without
 being informed whether the information was known for more than three months,
 however, cannot make the statement under 37 CFR 1.97(e)(2) without
 making reasonable inquiry. For example, if an inventor gave a publication to the
 attorney prosecuting an application with the intent that it be cited to the
 Office, the attorney should inquire as to when that inventor became aware of the
 publication and should not submit a statement under 37 CFR
 1.97(e)(2) to the Office until a satisfactory response is
 received. The statement can be based on present, good faith knowledge about when
 information became known without a search of files being made.
 

 A statement under 37 CFR 1.97(e) need not be in
 the form of an oath or a declaration under 37 CFR 1.68 . A statement under
 37 CFR
 1.97(e) by a registered practitioner or any other individual
 that the statement was filed within the three-month period of either first
 citation by a foreign patent office or first discovery of the information will be
 accepted as dispositive of compliance with this provision in the absence of
 evidence to the contrary. For example, a statement under 37 CFR
 1.97(e) could read as follows:
 

 
 I hereby state that each item of information contained in this
 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 this statement., 
 

 or

 I hereby state that no item of information in the Information
 Disclosure Statement filed herewith was cited in a communication from a foreign
 patent office in a counterpart foreign application, and, to my knowledge after
 making reasonable inquiry, no item of information contained in this Information
 Disclosure Statement was known to any individual designated in
 37 CFR
 1.56(c) more than three months prior to the filing of
 this Information Disclosure Statement.
 

 
 While use of the exact language of
 37 CFR
 1.97(e)(1) and/or 37 CFR 1.97(e)(2) is strongly
 encouraged, it is not required so long as the language applicant uses conveys the
 exact same meaning as the language of 37 CFR 1.97(e)(1) and/or
 37 CFR
 1.97(e)(2) . Varying the language of the statements runs the
 risk that it does not convey the same meaning as the language of 37 CFR
 1.97(e)(1) and/or 37 CFR 1.97(e)(2) . If it is
 determined that the varying language does not (or may not) convey the same
 meaning, the information disclosure statement will not be accepted.
 

 An information disclosure statement may include two lists and two
 statements, similar to the above examples, in situations where some of the
 information listed was cited in a communication from a foreign patent office not
 more than three months prior to filing the statement and some was not, but was not
 known more than three months prior to filing the statement. Alternatively,
 applicant may submit one list with two statements when applicant expressly
 designates which statement pertains to which citation(s) in the reference listing.
 If the information is being submitted in the time frame set forth in
 37 CFR
 1.97(d) and applicant includes two statements with either
 one or two lists on the same day, only one fee is required.
 

 A copy of the foreign search report need not be submitted with the
 statement under 37 CFR 1.97(e) , but an individual may wish to submit an
 English-language version of the search report to satisfy the requirement for a
 concise explanation where non-English language information is cited. The time at
 which information was known to any individual designated in 37 CFR
 1.56(c) is the time when the information was discovered in
 association with the application even if awareness of the materiality came later.
 The Office wishes to encourage prompt evaluation of the relevance of information
 and to have a date certain for determining if a statement under 37 CFR
 1.97(e) can properly be made. A statement on information and
 belief would not be sufficient. Examiners should not remind or otherwise make any
 comment about an individual’s duty of candor and good faith. Questions about the
 adequacy of any statement received in writing by the Office should be directed to
 the Office of Patent Legal Administration.
 

 VI. EXTENSIONS OF TIME (37 CFR 1.97(f)) AND BONA FIDE 
 ATTEMPT No extensions of time for filing an information disclosure
 statement are permitted under 37 CFR 1.136(a) or
 (b) . If a bona fide attempt is made to
 comply with the content requirements of 37 CFR 1.98 , but part of the
 required content is inadvertently omitted, additional time may be given to enable
 full compliance. Form paragraph 6.51 may be used.
 

 ¶ 6.51 Time for Completing Information Disclosure Statement

 The information disclosure statement filed on [1] does not
 fully comply with the requirements of 37 CFR 1.98(b) because: [2] .
 Since the submission appears to be bona fide , applicant is given ONE
 (1) MONTH from the date of this notice to supply the above-mentioned omissions or
 corrections in the information disclosure statement. NO EXTENSION OF THIS TIME LIMIT MAY BE
 GRANTED UNDER EITHER 37 CFR
 1.136(a) OR (b) . Failure to timely comply with this
 notice will result in the above-mentioned information disclosure statement being placed in the
 application file with the non-complying information not being considered. See
 37 CFR
 1.97(i) .
 

 Examiner Note:

 Use this form paragraph if an IDS
 complies with the timing requirements of 37 CFR 1.97 but part of the content
 requirements of 37 CFR
 1.98(b) has been inadvertently omitted. 
 

 This practice does not apply where
 there has been a deliberate omission of some necessary part of an Information Disclosure
 Statement or where the requirements based on the time of filing the statement, as set forth
 in 37 CFR
 1.97 , have not been complied with.
 

 

 

 

 
 609.05 Examiner Handling of Information Disclosure
 Statements [R-08.2012]
 

 Information disclosure statements will be reviewed for compliance with
 the requirements of 37
 CFR 1.97 and 37 CFR 1.98 as discussed in
 MPEP §
 609.04(a) and § 609.04(b) . Applicant will be notified
 of compliance and noncompliance with the rules as discussed in MPEP § 609.05(a) and
 §
 609.05(b) .
 

 
 609.05(a) Noncomplying Information Disclosure Statements [R-01.2024]

 Pursuant to 37 CFR 1.97(i) , submitted
 information, filed before the grant of a patent, which does not comply with
 37 CFR
 1.97 and 37 CFR 1.98 will be placed in the
 file, but will not be considered by the Office. Information submitted after the grant
 of a patent must comply with 37 CFR 1.501 .
 

 If an information disclosure statement does not comply with the
 requirements based on the time of filing of the IDS as discussed in
 MPEP §
 609.04(b) , including the requirements for fees and/or
 statement under 37
 CFR 1.97(e) , the IDS will be placed in the application file,
 but none of the information will be considered by the examiner. The examiner may use
 form paragraph 6.49 which is reproduced below to inform applicant
 that the information has not been considered. Applicant may then file a new
 information disclosure statement or correct the deficiency in the previously filed
 IDS, but the date that the new IDS or correction is filed will be the date of the IDS
 for purposes of determining compliance with the requirements based on the time of
 filing of the IDS ( 37 CFR 1.97 ).
 

 The examiner should write “not considered” on an information
 disclosure statement where none of the information listed complies with the
 requirements, e.g., the format requirements of 37 CFR 1.98(a)(1) are not met. If
 none of the information listed on a PTO/SB/08 form is considered, a diagonal line or
 "X" should also be drawn across the form and the form made of record in the
 application file. The examiner will inform applicant that the information has not
 been considered and the reasons why by using form paragraphs
 6.49 through 6.49.10 . If the improper citation
 appears as part of another paper, e.g., an amendment, which may be properly entered
 and considered, the portion of the paper which is proper for consideration will be
 considered. 
 

 If an item of information in an IDS fails to comply with all the
 requirements of 37
 CFR 1.97 and 37 CFR 1.98 , that item of
 information in the IDS will not be considered and a line should be drawn through the
 citation to show that it has not been considered. However, other items of information
 that do comply with all the requirements of 37 CFR 1.97 and 37 CFR 1.98 
 will be considered by the examiner.
 

 If information listed in the specification rather than in a separate
 paper, or if the other content requirements as discussed in MPEP § 609.04(a) 
 are not complied with, the information need not be considered by the examiner, in
 which case, the examiner should notify applicant in the next Office action that the
 information has not been considered.
 

FORM PARAGRAPHS
 ¶ 6.49 Information Disclosure Statement Not Considered

 The information disclosure statement filed [1] fails to
 comply with the provisions of 37 CFR 1.97 , 1.98 and
 MPEP §
 609 because [2] . It has been placed in the application
 file, but the information referred to therein has not been considered as to the merits.
 Applicant is advised that the date of any resubmission of any item of information contained in
 this information disclosure statement or the submission of any missing element(s) will be the
 date of submission for purposes of determining compliance with the requirements based on the
 time of filing the statement, including all requirements for statements under
 37 CFR
 1.97(e) . See MPEP § 609.05(a) .
 

 Examiner Note:

 See MPEP § 609.05(a) for
 situations where the use of this form paragraph would be appropriate.
 

 

 ¶ 6.49.01 Information Disclosure Statement Not Considered, After First Action, But Before the Prosecution of the Application Closes,
 No Statement
 

 The information disclosure statement filed [1] fails to comply with 37 CFR 1.97(c) because it lacks a statement as specified in 37 CFR 1.97(e) . It has been placed in the application file, but the information referred to therein has not been considered.
 

 

 ¶ 6.49.02 Information Disclosure Statement Not Considered, After First Action, But Before the Prosecution of the Application Closes,
 No Fee
 

 The information disclosure statement filed [1] fails to comply with 37 CFR 1.97(c) because it lacks the fee set forth in 37 CFR 1.17(p) . It has been placed in the application file, but the information referred to therein has not been considered.
 

 

 ¶ 6.49.03 Information Disclosure Statement Not Considered, After the Prosecution of the Application Closes, Issue Fee Not Paid, No Statement

 The information disclosure statement filed [1] fails to comply with 37 CFR 1.97(d) because it lacks a statement as specified in 37 CFR 1.97(e) . It has been placed in the application file, but the information referred to therein has not been considered.
 

 

 ¶ 6.49.05 Information Disclosure Statement Not Considered, After the Prosecution of the Application Closes, Issue Fee Not Paid, No Fee

 The information disclosure statement filed [1] fails to comply with 37 CFR 1.97(d) because it lacks the fee set forth in 37 CFR 1.17(p) . It has been placed in the application file, but the information referred to therein has not been considered.
 

 

 ¶ 6.49.06 Information Disclosure Statement Not Considered, References
 Listed in Specification
 

 The listing of references in the
 specification is not a proper information disclosure statement. 37 CFR 1.98(b) 
 requires a list of all patents, publications, applications, or other information submitted
 for consideration by the Office, and MPEP § 609.04(a) , subsection I. states,
 “the list may not be incorporated into the specification but must be submitted in a separate
 paper.” Therefore, unless the references have been cited by the examiner on form PTO-892,
 they have not been considered.
 

 

 ¶ 6.49.07 Information Disclosure Statement Not Considered, No Copy of References

 The information disclosure statement filed [1] fails to
 comply with 37 CFR
 1.98(a)(2) , which requires a legible copy of each cited foreign patent
 document; each non-patent literature publication or that portion which caused it to be listed;
 and all other information or that portion which caused it to be listed. It has been placed in
 the application file, but the information referred to therein has not been considered.
 

 Examiner Note:

 Do not use this form paragraph when the missing reference(s) are U.S. patents, U.S. patent application publications, or U.S.
 pending applications (limited to the specification, including claims, and drawings) stored in IFW.
 

 

 ¶ 6.49.08 Information Disclosure Statement Not Considered, Non-Compliant List of References

 The information disclosure statement filed [1] fails to
 comply with 37 CFR
 1.98(a)(1) , which requires the following: (1) a list of all patents,
 publications, applications, or other information submitted for consideration by the Office;
 (2) U.S. patents and U.S. patent application publications listed in a section separately from
 citations of other documents; (3) the application number of the application in which the
 information disclosure statement is being submitted on each page of the list; (4) a column
 that provides a blank space next to each document to be considered, for the examiner’s
 initials; and (5) a heading that clearly indicates that the list is an information disclosure
 statement. The information disclosure statement has been placed in the application file, but
 the information referred to therein has not been considered.
 

 Examiner Note:

 If an IDS listing includes a copy of an initialed IDS listing from
 another application, the IDS listing would not comply with the requirements under
 37 CFR
 1.98(a)(1) . This form paragraph is applicable for such an IDS
 submission.
 

 

 ¶ 6.49.09 Information Disclosure Statement Not Considered, No Explanation of Relevance of Non-English Language Information

 The information disclosure statement filed [1] fails to
 comply with 37 CFR
 1.98(a)(3)(i) because it does not include a concise explanation of the
 relevance, as it is presently understood by the individual designated in 37 CFR 1.56(c) most
 knowledgeable about the content of the information, of each reference listed that is not in
 the English language. It has been placed in the application file, but the information referred
 to therein has not been considered.
 

 

 ¶ 6.49.10 Information Disclosure Statement Not Considered, Non-acceptable
 Electronic Medium
 

 The information disclosure statement filed [1] was submitted
 on an electronic medium that was not acceptable. It has been placed in the application file,
 but the information referred to therein has not been considered. Note that U.S. patents, U.S.
 application publications, foreign patent documents and non-patent literature cited in an
 information disclosure statement may be electronically submitted in compliance with the USPTO
 patent electronic filing system requirements. 
 

 Examiner Note:

 This form paragraph may be used when the IDS that includes patents and
 non-patent literature documents is submitted on read-only optical discs or any other
 electronic medium, except via the USPTO patent electronic filing system. Only “Large
 Tables,” “Sequence Listings,” a computer readable form of a “Sequence Listing” and a
 “Computer Program Listing Appendix” may be submitted on one or more read-only optical
 discs. See 37 CFR
 1.52(e) .
 

 

 

 
 609.05(b) Complying Information Disclosure Statements [R-07.2022]

 The information contained in information disclosure statements which
 comply with both the content requirements of 37 CFR 1.98 and the requirements,
 based on the time of filing the statement, of 37 CFR 1.97 will be considered by
 the examiner. Consideration by the examiner of the information submitted in an IDS
 means that the examiner will consider the documents in the same manner as other
 documents in Office search files are considered by the examiner while conducting a
 search of the prior art in a proper field of search. The initials of the examiner
 placed adjacent to the citations on the PTO/SB/08 or its equivalent mean that the
 information has been considered by the examiner to the extent noted above.
 

 In addition, the following alternative electronic signature method
 may be used by examiners in information disclosure statements to indicate whether the
 information has been considered. Examiners will no longer initial each reference
 citation considered, but will continue to strikethrough each citation not considered.
 Each page of reference citations will be stamped by the examiner with the phrase “All
 references considered except where lined through” along with the examiner’s
 electronic initials, and the final page of reference citations will include the
 examiner’s electronic signature. 
 

 Examiners must consider all citations submitted in conformance with
 the rules, and their initials when placed adjacent to the considered citations on the
 list or in the boxes provided on a form PTO/SB/08 (or the examiner may use the
 alternative electronic signature method noted above) provides a clear record of which
 citations have been considered by the Office. The examiner must also fill in the
 examiner's name and the date the information was considered in blocks at the bottom
 of the PTO/SB/08 form. If any of the citations are considered, a copy of the
 submitted list, form PTO/SB/08, as reviewed by the examiner, will be returned to the
 applicant with the next communication. Those citations not considered by the examiner
 will have a line drawn through the citation. The original copy of the list, form
 PTO/SB/08, will be entered into the application file. The copy returned to applicant
 will serve both as acknowledgement of receipt of the information disclosure statement
 and as an indication as to which references were considered by the examiner. Forms
 PTO-326 and PTOL-37 include a box to indicate the attachment of form PTO/SB/08.
 

 Information which complies with requirements as discussed in this
 section but which is in a non-English language will be considered in view of the
 concise explanation submitted (see MPEP § 609.04(a) , subsection III.)
 and insofar as it is understood on its face, e.g., drawings, chemical formulas, in
 the same manner that non-English language information in Office search files is
 considered by examiners in conducting searches. The examiner need not have the
 information translated unless it appears to be necessary to do so. The examiner will
 indicate that the non-English language information has been considered in the same
 manner as consideration is indicated for information submitted in English. The
 examiner should not require that a translation be filed by applicant. The examiner
 should not make any comment such as that the non-English language information has
 only been considered to the extent understood, since this fact is inherent. See
 Semiconductor Energy Laboratory Co. v. Samsung Electronics Co., 
 204 F.3d 1368, 1377-78, 54 USPQ2d 1001, 1008 (Fed. Cir. 2000) (“[A]s MPEP Section
 609C(2) reveals, the examiner’s understanding of a foreign reference is generally
 limited to that which he or she can glean from the applicant’s concise
 statement…Consequently, while the examiner’s initials require that we presume that he
 or she considered the [foreign] reference, this presumption extends only to the
 examiner’s consideration of the brief translated portion and the concise
 statement.”).
 

 If an item of information in an IDS fails to comply with requirements
 of 37 CFR
 1.97 and 37 CFR 1.98 , a line should be
 drawn through the citation to show that it has not been considered. The other items
 of information listed that do comply with the requirements of 37 CFR 1.97 and
 37 CFR
 1.98 will be considered by the examiner and will be
 appropriately initialed.
 

 

 
 609.05(c) Documents Submitted as Part of Applicant’s Reply to Office
 Action [R-07.2022]
 

 Occasionally, documents are submitted and relied on by an applicant
 when replying to an Office action. These documents may be relied on by an applicant,
 for example, to show that an element recited in the claim is operative or that a term
 used in the claim has a recognized meaning in the art. Documents may be in any form
 but are typically in the form of an affidavit, declaration, patent, or printed
 publication.
 

 To the extent that a document is submitted as evidence directed to an
 issue of patentability raised in an Office action, and the evidence is timely
 presented, applicant need not satisfy the requirements of 37 CFR 1.97 and
 37 CFR
 1.98 in order to have the examiner consider the information
 contained in the document relied on by applicant. In other words, compliance with the
 information disclosure rules is not a threshold requirement to have information
 considered when submitted by applicant to support an argument being made in a reply
 to an Office action. However, consideration by the examiner of the document submitted
 as evidence directed to an issue of patentability raised in the Office action is
 limited to the portion of the document relied upon as rebuttal evidence; the entirety
 of the document may not necessarily be considered by the examiner.
 

 At the same time, the document supplied and relied on by applicant as
 evidence need not be processed as an item of information that was cited in an
 information disclosure statement. The record should reflect whether the evidence was
 considered, but listing on a form (e.g., PTO-892 or PTO/SB/08) and appropriate
 marking of the form by the examiner is not required.
 

 For example, if applicant submits and relies on three patents as
 evidence in reply to the first Office action and also lists those patents on a
 PTO/SB/08 along with two journal articles, but does not file a statement under
 37 CFR
 1.97(e) or the fee set forth in 37 CFR
 1.17(p) , it would be appropriate for the examiner to indicate
 that the teachings relied on by applicant in the three patents have been considered,
 but to line through the citation of all five documents on the PTO/SB/08 and to inform
 applicant that the information disclosure statement did not comply with
 37 CFR
 1.97(c) .
 

 

 

 
 609.06 Information Printed on Patent [R-07.2022]

 A citation listed on form PTO/SB/08 and considered by the examiner will
 be printed on the patent. A citation listed in a separate paper, equivalent to but not
 on form PTO/SB/08, and considered by the examiner will be printed on the patent if the
 list lends itself to easy capture of the necessary information by the Office printing
 contractor, i.e., each item of information is listed on a single line, the lines are at
 least double-spaced from each other, and the information is uniform in format for each
 listed item. For patents printed after January 1, 2001, citations from information
 disclosure statements that are printed on the face of the patent will be distinguished
 from citations cited by the examiner on a form PTO-892. The citations cited by the
 examiner on a form PTO-892 will be marked with an asterisk. If an item of information is
 cited more than once in an IDS and on a form PTO-892, the citation of the item will be
 listed only once on the patent as a citation cited by the examiner. 
 

 If the applicant does not provide classification information for a
 citation, or if the examiner lines through incorrect classification data, the citation
 will be printed on the face of the patent without the classification information. If a
 U.S. patent application number is listed on a PTO/SB/08 form or its equivalent and the
 examiner considers the information and initials the form, the application number will be
 printed on the patent. Applicants may wish to list U.S. patent application numbers on
 other than a form PTO/SB/08 format to avoid the application numbers of pending
 applications being published on the patent. If a citation is not printed on the patent
 but has been considered by the examiner, the patented file will reflect that fact as
 noted in MPEP §
 609.05(b) .
 

 

 
 609.07 IDSs Electronically Submitted (eIDS) Using Patent
 Center [R-01.2024]
 

 Information disclosure statements may be submitted to the Office via the
 USPTO patent electronic filing system. Applicants can file an eIDS using Patent Center
 by (A) entering the references’ citation information in an electronic data entry form,
 equivalent to the paper PTO/SB/08 form, and (B) transmitting the electronic data entry
 form to the Office. An eIDS filed via Patent Center may include citations of U.S.
 patents, U.S. patent application publications, foreign patent documents, and non-patent
 literature (NPLs). Copies of U.S. patents and U.S. patent application publications cited
 in the IDS are not required to be submitted by the applicants with the eIDS. If any
 references to foreign patent documents or NPLs or unpublished U.S. patent applications
 (that are not stored in the Office’s Image File Wrapper (IFW) system) are to be cited,
 applicants must submit copies of these documents in PDF using Patent Center.
 

 The electronic IDS form may be included with a new Patent Center
 electronic application filing, or it may be submitted for previously filed patent
 applications. An eIDS contains an electronic list of U.S. patent numbers, U.S. patent
 application publication numbers, foreign patent documents and non-patent literature
 (NPLs). An individual eIDS may contain a listing of (1) a combined total of 50 U.S.
 patents and U.S. patent application publications, (2) 50 foreign patent documents, and
 (3) 50 NPLs. Applicants are permitted to file more than one eIDS if these numbers are
 exceeded.
 

 If more than one eIDS is necessary to file a complete IDS for which a
 fee is required under 37 CFR1.17(p) , only a single fee
 under 37
 CFR 1.17(p) will be required under the following conditions:
 

 
 (A) the fee required by 37 CFR
 1.17(p) is included with the first eIDS submission (since it
 will normally be processed first);
 

 (B) all subsequent submissions making up the IDS should explicitly
 state that the fee was included in the earlier submission and request that the one
 fee be accepted for the second and any subsequent submission; and
 

 (C) all subsequent submissions (electronic or paper) must be received
 by the Office on the same date as the first eIDS submission with which the fee was
 included.
 

 
 A subsequent non-electronic submission is considered received by the
 Office on the same date as the first eIDS submission with which the fee was included for
 purposes of the fee due under 37 CFR 1.17(p) if it is deposited in
 Priority Mail Express® under 37 CFR 1.10 , deposited in the first
 class U.S. mail with a certificate of mailing in accordance with 37 CFR 1.8 , or
 transmitted by facsimile with a certificate of transmission in accordance with
 37 CFR
 1.8 , on the same date as the first eIDS submission with which the
 fee was included. If a subsequent eIDS submission is received by the Office on a date
 later than the date the fee was paid, the later submission will require an additional
 fee. 
 

 A copy of the eIDS form will be scanned to become part of the Image File
 Wrapper (IFW). In all applications, the eIDS will be added to the application file
 contents listing, and to the Patent Data Portal database record for the application.
 

 If the eIDS complies with the requirements of 37 CFR 1.97 ,
 examiners must consider the eIDS and complete the eIDS form by initialing, signing, and
 dating the eIDS form entries. See MPEP § 609.05(b) . Examiners may notice
 numbering gaps in the “Citation No.” column on the printed eIDS form due to an applicant
 data entry error. This data entry error will not affect the eIDS and is not a sufficient
 reason not to consider the eIDS. A copy of the initialed eIDS form must be sent to the
 applicant. The completed copy of the eIDS form sent to an applicant should be made of
 record in the official file when the copy is sent to the applicant.
 

 An electronic list of all U.S. patents and U.S. patent application
 publications on an eIDS form is available and accessible from the examiner’s workstation
 by clicking on the eIDS icon, on the workstation desktop. Consideration of the eIDS may
 not be deferred and an examiner should not require an applicant to submit paper copies
 of eIDS references. It is most important that the U.S. patent and U.S. patent
 application publication numbers listed on the eIDS be accurate and devoid of
 transcription error since no copies of the documents listed on the eIDS are provided in
 the file wrapper for the examiner to review. Instead the examiner will electronically
 retrieve the U.S. patents and U.S. patent application publications identified by the
 cited document numbers. The only mechanism for having the correct document reviewed and
 considered when an erroneous U.S. patent or U.S. patent application publication is cited
 in an eIDS will be by citing the correct citation number in a subsequent IDS that
 conforms to the requirements of 37 CFR 1.97 and 1.98 . 
 

 Examiners can copy and paste U.S. patent and U.S. patent application
 publication numbers from the eIDS to PE2E Search for searching. Examiners should copy
 and paste U.S. patent and U.S. patent application publication numbers from the eIDS to
 PE2E Search to review the references that are listed in the eIDS. 
 

 Applicants and registered practitioners are permitted to sign portions
 of a Patent Center submission, including an IDS, with an electronic signature. See
 37 CFR
 1.4(d)(3) .
 

 If the eIDS transmittal letter and list of references is missing from an
 application file, an examiner may request that the technical support staff obtain an
 additional printed copy of the letter and reference list from the Office of Patent
 Application Processing (OPAP).
 

 

 
 609.08 Electronic Processing of Information Disclosure
 Statement [R-07.2022]
 

 The USPTO electronically processes the list of citations (e.g., form
 PTO/SB/08) submitted as part of an information disclosure statement (IDS) submitted in
 applications stored by the Office in image form. Examiners are provided with a tool to
 electronically annotate citations and electronically sign the IDS when reviewing the
 cited references. See MPEP
 § 609.04(b) for determining whether a cited reference has been
 considered by the examiner. The electronically processed IDS will be stored in the
 Office’s official record as an entry in the application’s image file wrapper (IFW) and a
 copy will be provided to applicant as part of an Office action.
 

 

 

 

 

 

 [top] 

 

 

 
 

 
 

 

 

 

 
 
 
 601-Content of Provisional and Nonprovisional Applications 
 601.01-Complete Application 
 601.01(a)-Nonprovisional Applications Filed Under 35 U.S.C. 111(a) 

 601.01(b)-Provisional Applications Filed Under 35 U.S.C. 111(b) 

 601.01(c)-Conversion to or from a Provisional Application 

 601.01(d)-Application Filed Without All Pages of Specification 

 601.01(e)-Nonprovisional Application Filed Without at Least One Claim 

 601.01(f)-Applications Filed Without Drawings 

 601.01(g)-Applications Filed Without All Figures of Drawings 

 
 

 601.02-Power of Attorney 

 601.03-Correspondence Address 
 601.03(a)-Change of Correspondence Address in Applications Filed On or After September 16, 2012 

 601.03(b)-Change of Correspondence Address in Applications Filed Before September 16, 2012 

 
 

 601.04-National Stage Requirements of the United States as a Designated Office 

 601.05-Bibliographic Information - Application Data Sheet (ADS) 
 601.05(a)-Application Data Sheet (ADS) -- Application Filed On or After September 16, 2012 

 601.05(b)-Application Data Sheet (ADS) in Application Filed Before September 16, 2012 

 
 

 
 

 602-Oaths and Declarations 
 602.01-Naming the Inventor; Inventor's Oath or Declaration 
 602.01(a)-Inventor’s Oath or Declaration in Application Filed On or After September 16, 2012 

 602.01(b)-Inventor’s Oath or Declaration in Application Filed Before September 16, 2012 

 602.01(c)-Correction of Inventorship, Name of Inventor, and Order of Names in an Application 
 602.01(c)(1)-Correction of Inventorship in an Application – Request Filed On or After September 16, 2012 

 602.01(c)(2)-Correcting or Updating Inventor Name 37 CFR 1.48(f) – Request Filed On or After September 16, 2012 

 602.01(c)(3)-[Reserved] 

 
 

 
 

 602.02-New Oath or Substitute for Original 

 602.03-Office Finds the Inventor’s Oath or Declaration Defective 

 602.04-Foreign Executed Oath 

 602.05-Oath or Declaration in Continuing Applications 
 602.05(a)-Oath or Declaration in Continuing Applications Filed On or After September 16, 2012 

 602.05(b)-Oath or Declaration in Continuing Applications Filed Before September 16, 2012 

 
 

 602.06-Non-English Oath or Declaration 

 602.07-Oath or Declaration Filed in United States as a Designated Office 

 602.08-Inventor and Application Information 
 602.08(a)-Inventor Bibliographic Information 

 602.08(b)-Inventor Signature and Name 

 602.08(c)-Identification of Application 

 
 

 602.09-Joint Inventors 

 
 

 603-Supplemental Oath or Declaration 
 603.01-Supplemental Oath or Declaration Filed After Allowance 

 
 

 604-Substitute Statements 

 605-Applicant 
 605.01-Applicant for Application filed on or after September 16, 2012 

 605.02-Applicant for Application Filed Before September 16, 2012 

 
 

 606-Title of Invention 
 606.01-Examiner May Require Change in Title 

 
 

 607-Filing Fee 
 607.01-[Reserved] 

 607.02-Returnability of Fees 

 
 

 608-Disclosure 
 608.01-Specification 
 608.01(a)-Arrangement of Application 

 608.01(b)-Abstract of the Disclosure 

 608.01(c)-Background of the Invention 

 608.01(d)-Brief Summary of Invention 

 608.01(e)-[Reserved] 

 608.01(f)-Brief Description of Drawings 

 608.01(g)-Detailed Description of Invention 

 608.01(h)-Mode of Operation of Invention 

 608.01(i)-Claims 

 608.01(j)-Numbering of Claims 

 608.01(k)-Statutory Requirement of Claims 

 608.01(l)-Claims Present on the Application Filing Date 

 608.01(m)-Form of Claims 

 608.01(n)-Dependent Claims 

 608.01(o)-Basis for Claim Terminology in Description 

 608.01(p)-Completeness of Specification 

 608.01(q)-Substitute or Rewritten Specification 

 608.01(r)-Derogatory Remarks About Prior Art in Specification 

 608.01(s)-Restoration of Canceled Matter 

 608.01(t)-Use in Subsequent Application 

 608.01(u)-[Reserved] 

 608.01(v)-Marks Used in Commerce and Trade Names 

 608.01(w)-Copyright and Mask Work Notices 

 
 

 608.02-Drawing 
 608.02(a)-New Drawing — When Replacement is Required Before Examination 

 608.02(b)-Acceptability of Drawings 

 608.02(c)-Location of Drawings 

 608.02(d)-Complete Illustration in Drawings 

 608.02(e)-Examiner Determines Completeness and Consistency of Drawings 

 608.02(f)-Modifications in Drawings 

 608.02(g)-Illustration of Prior Art 

 608.02(h)-Replacement Drawings 

 608.02(i)-Transfer of Drawings From Prior Applications 

 608.02(j) - 608.02(o)-[Reserved] 

 608.02(p)-Correction of Drawings 

 608.02(q) - 608.02(s)-[Reserved] 

 608.02(t)-Cancelation of Figures 

 608.02(u)-[Reserved] 

 608.02(v)-Drawing Changes Which Require Annotated Sheets 

 608.02(w)-Drawing Changes Which May Be Made Without Applicant’s Annotated Sheets 

 608.02(x)-Drawing Corrections or Changes Accepted Unless Notified Otherwise 

 608.02(y)-Return of Drawing 

 608.02(z)-Allowable Applications Needing Drawing Corrections or Corrected Drawings 

 
 

 608.03-Models, Exhibits, Specimens 
 608.03(a)-Handling of Models, Exhibits, and Specimens 

 
 

 608.04-New Matter 
 608.04(a)-Matter Not Present in Specification, Claims, or Drawings on the Application Filing Date 

 608.04(b)-New Matter by Preliminary Amendment 

 608.04(c)-Review of Examiner’s Holding of New Matter 

 
 

 608.05-“Sequence Listing,” “Large Tables,” or “Computer Program Listing Appendix” Submitted in ASCII Plain Text or a “Sequence Listing
 XML” Submitted as XML File Text 
 608.05(a)-Submission of a “Computer Program Listing Appendix” 

 608.05(b)-ASCII Plain Text Submissions of “Large Tables” and Treatment of Lengthy Tables in a Specification for Patents and Patent Application
 Publications 

 608.05(c)-Submissions of Biological Sequence Listings 

 
 

 
 

 609-Information Disclosure Statement 
 609.01-Examiner Checklist for Information Disclosure Statements 

 609.02-Information Disclosure Statements in Continued Examinations or Continuing Applications 

 609.03-Information Disclosure Statements in National Stage Applications 

 609.04-Content and Timing Requirements for an Information Disclosure Statement 
 609.04(a)-Content Requirements for an Information Disclosure Statement 

 609.04(b)-Timing Requirements for an Information Disclosure Statement 

 
 

 609.05-Examiner Handling of Information Disclosure Statements 
 609.05(a)-Noncomplying Information Disclosure Statements 

 609.05(b)-Complying Information Disclosure Statements 

 609.05(c)-Documents Submitted as Part of Applicant’s Reply to Office Action 

 
 

 609.06-Information Printed on Patent 

 609.07-IDSs Electronically Submitted (eIDS) Using Patent Center 

 609.08-Electronic Processing of Information Disclosure Statement 

 
 

 

 

 
 

 
 
 

 
 

 

 
 
 Accessibility 

 Privacy Policy 

 Terms of Use 

 Security 

 Emergencies/Security Alerts 

 Information Quality Guidelines 

 
 

 
 
 Federal Activities Inventory Reform (FAIR) Act 

 Notification and Federal Employee Antidiscrimination and Retaliation (NoFEAR) Act 

 Budget & Performance 

 Freedom of Information Act (FOIA) 

 
 

 
 
 Department of Commerce NoFEAR Act Report 

 Regulations.gov 

 STOP!Fakes.gov 

 Department of Commerce 

 USA.gov 

 
 

 
 
 Strategy Targeting Organized Piracy (STOP!) 

 Careers 

 Site Index 

 Contact Us 

 Submit Feedback 

 
 

 
 This page is owned by Patents.

 Last Modified: 
 
 03/09/2026 20:49:43