Under U.S. patent law, while there is no duty to perform a search of relevant art, inventors and those associated with filing or prosecuting patent applications have a duty to disclose to the U.S. Patent and Trademark Office (USPTO) all known prior art or other information that may be “material” in determining patentability.  In U.S. patent practice, this duty is deemed satisfied when “material” information is submitted to the USPTO in an information disclosure statement (IDS).  The duty continues until a patent has issued, and importantly, if one fails to live up to this duty, the resulting patent may be deemed unenforceable.

While there is no hard and fast rule as to what information is “material,” a good rule of thumb is to disclose all information that is relevant to the claimed subject matter.  Such information can include other related U.S. patent applications and patents of the applicant or references cited in a PCT or foreign counterpart application.

In order for the information in an IDS to be officially considered during the pendency of an application, the IDS must be timely filed.  While an IDS can be submitted at different stages of prosecution, as outlined below, it is recommended to file an IDS (and supplemental IDSs) as early as possible to ensure that it will be considered by the Examiner and to avoid incurring additional costs.  For example, in certain instances, one may be required to file a request for continued examination for the sole purpose of filing an IDS. To be consider by the Office, an IDS needs to be filed within any one of the following time periods, if required, together with a statement and/or fees:

• Within three months of the filing date of a national application other than a continued prosecution application;
• Within three months of the date of entry of the national stage in an international application;
• Before the mailing of a first Office action on the merits;
• Before the mailing of a first Office action after the filing of a request for continued examination; or
• Within three months of the date of publication of the international registration in an international design application.