Patent INFORMATION DISCLOSURE STATEMENT – When & Why to File an IDS

A key part of the patent examination process is when the USPTO examiner does a search for prior art to determine if the patent application is patentable.

An information disclosure statement, also called an IDS, USPTO IDS, or USPTO information disclosure statement, provides the opportunity for a patent applicant to bring relevant information to the examiner’s attention.

At the end of the day there are two reasons why someone should file a USPTO IDS, and a few nuances to be wary of.

First, every patent applicant has what lawyers call a “duty of candor“, meaning that the applicant has an obligation not to intentionally hide relevant information. Failing to fulfill your duty of candor can be seen as a fraud on the USPTO and cause you to lose your patent.

If, for example, you are aware of a registered patent that is very similar to your application, you should inform the USPTO examiner by filing an IDS patent disclosure. The examiner will then review your USPTO IDS form and consider it in his or her analysis before granting or rejecting your application.

Which brings us to the second reason you should file a USPTO information disclosure statement––it makes enforcing your patent easier and cheaper. As a general rule, patents are only as strong as they are enforceable, and you enforce a patent through a lawsuit. But on defense, we patent attorneys loooove to argue that a given patent would never have been registered if the examiner had been given proper disclosures of prior art. If you actually did disclose the relevant prior art, you’ve deprived your enemy’s attorneys of their favorite argument!

For example, you filed patent B, knowing that patent A is relevant. If the examiner, unaware of patent A grants your patent, it can later be used by your enemies to revoke your registration. But if the examiner was aware of patent A, you registration becomes virtually immune from it.

You should keep in mind, however, that your patent examiner will almost always cite your IDS disclosures against you as a reason to not grant your patent. This is normal and expected, and usually can be overcome with the proper assistance of your patent attorney. This is why we typically advise our clients to only disclose information that they sincerely believe to be relevant, and that they can reasonably obtain copies of.

At the Leavitt Eldredge Law Firm we offer our clients a choice:

1. we can help them strike a proper balance between what should or should not be disclosed in an information disclosure statement; or
2. they can take this responsibility on for themselves.

For those clients who select our firm to handle their USPTO IDS obligations, we charge a one-time flat rate fee that covers the entire 3-4 year application period, no matter when new prior art pops up.

Interested? Have any questions? Book an appoinment to talk to an attorney about it or fill out our form on this page.