Five Reasons an IDS Is Filed but Never Considered

37 CFR 1.98(a)(3)(i) requires a concise explanation of the relevance of each listed item that is not in English, as understood by the person designated in 1.56(c) who knows the content best. Miss it and the examiner strikes that citation.

Four things satisfy the requirement, and most practitioners already have one of them on file:

• A complete English translation of the reference. If you submit one, no concise explanation is needed.
• An English-language version of a foreign search report or office action that cited the reference. An X, Y or A designation on a search report is enough on its own.
• An English-language abstract of the reference, including one generated by a foreign patent office.
• A short statement pointing to the figure or paragraph that matters.

Two traps. First, 1.98(a)(3)(ii) separately requires you to file any written English translation that is in your possession or readily available — that is a copy requirement, not a substitute for the explanation, and it applies even when you did not commission the translation. Second, saying that a reference was cited in the prosecution of another US application does not satisfy the requirement unless that application is relied on under 35 U.S.C. 120.

37 CFR 1.98(a)(2) requires a legible copy of each foreign patent, each publication or the portion that caused it to be listed, each cited pending unpublished US application, and all other cited information. US patents and US patent application publications need no copy unless the Office asks.

There are two exemptions, and both are narrower than they look. Under 1.98(c), where two or more listed references are substantively cumulative, you may file one copy if you state that the others are cumulative — the examiner will then consider only the one you filed. Under 1.98(d), copies are not required if the information was submitted in an earlier application that is properly identified in the IDS, relied on for an earlier filing date under 35 U.S.C. 120, and whose IDS complied with 1.98(a) through (c). That second exemption does not extend to information cited in a PCT application.

37 CFR 1.97 ties the requirements to four stages. Most struck citations at this step come from treating stage 3 like stage 2: the statement alone is not enough once prosecution has closed.

Three details worth holding on to. A notice of appeal closes prosecution, so an IDS filed on or after that date falls under 1.97(d), not (c). No extensions are available under 1.136 — but under 1.97(f), where a bona fide attempt was made and part of the content was inadvertently omitted, the examiner may give additional time to complete it. And the 1.97(e) statement has a hard edge: you cannot make it for a reference that a foreign office first cited more than three months ago, even if a second office cited the same reference last week.

1.98(b)(5) requires each publication to be identified by publisher, author (if any), title, relevant pages, and date and place of publication. Non-patent literature arrives from foreign associates in whatever form the sender had, which is why this is the field that most often comes up short.

Four points that are easy to get wrong:

• Pages. When no page numbers are given, the Office understands all pages of the publication to be the relevant ones. You are not required to narrow it.
• Date. The date must include at least the month and the year. A year alone is accepted only if you point out in the IDS that the year is sufficiently earlier than the effective US filing date and any foreign priority date that the month is not in issue.
• Place of publication. This means the name of the journal, magazine or other publication. For an Office action or a US application listed as NPL, the USPTO is understood to be the publisher and place; for a foreign or international search report, the issuing office is.
• Internet publications. The URL of the source page serves as the place of publication. For an archived page, give both the archived URL and the original. Where the publication date is unknown, give at least a retrieval date or a time frame.

Pending US applications and Office actions can be listed in the non-patent literature section or in a new section you label.

1.98(a)(1) sets out requirements that have nothing to do with the art you are citing, which is exactly why they get overlooked when a listing is assembled by hand or carried over from another file.

1. US patents and US patent application publications must be listed in a section separate from other documents. The separation lets the Office pull the numbers by OCR.
2. Each page of the list must carry the application number of the application the IDS is being filed in, if known.
3. Each page must have a column with space next to each document for the examiner's initials.
4. Each page must have a heading that clearly identifies the list as an information disclosure statement.
5. The list must be submitted on a separate paper. It cannot be incorporated into the specification.

Form PTO/SB/08 satisfies all five, which is the practical reason to use it. The failure mode the MPEP warns about by name is reusing a PTO/SB/08 or PTO-892 from another application: it carries the other application's number, and where an examiner has already initialled it there is no space left for the examiner on your file.

Identification follows 1.98(b). US patents by inventor, patent number and issue date. US patent application publications by applicant, publication number and publication date. Pending US applications by inventor, the eight-digit application number and filing date. Foreign documents by the issuing country or office, document number and the publication date shown on the document. If an application you are listing has since issued or published, list the patent or the publication instead.