You have filed your patent application, so you can relax? Sadly, no. An important, and oft-misunderstood obligation in U.S. patent practice is the duty to submit to the patent office all information you know that is material to the patentability of your company’s invention. IP managers and founders are well served by mastering Information Disclosure Statement (IDS) practice to improve the application and any resulting patent.

Overview

For U.S. applications, you have an ongoing duty of candor and good faith under 37 CFR §1.56 to disclose to the USPTO all information known to you that is material to the patentability of your invention. This includes any relevant prior products, prior publications, or related searches from counterpart patent applications. This duty applies to inventors, applicants, attorneys, agents, and anyone involved in preparing or prosecuting the application. Submitted as an Information Disclosure Statement (IDS), this information strengthens your application.

Definitions

Each individual associated with the filing and prosecution of a patent application has a duty of candor and good faith in dealing with the Office. It means you must act with total honesty and openness. The duty is imposed on inventors, applicants (e.g., employer of inventor), patent practitioners, and anyone involved in preparing or prosecuting the application (e.g., scrivener or IP manager).

Material – Meaningful or having a big effect on a situation. Material information is information that could be used to reject or limit a patent application.

A reference is cumulative when it does not teach anything material to patentability that is not already taught by another reference that has been cited.

Patentability is the set of legal requirements that an invention must meet to qualify for a patent. To be considered patentable, an idea or device must generally be new, useful, and non-obvious, while being in an established category of eligible subject matter.

Prior art is a certain type of reference identified by a patent examiner or judge. As a best practice, never refer to a reference as such. Indeed, you can and should avoid using the term altogether.

Content

The USPTO requires applicants to submit an Information Disclosure Statement when they are aware of prior art or other information that may be relevant to examination. The duty of disclosure is defined in 37 CFR §1.56, and the content and format are governed by 37 CFR §1.98. The IDS does not require argument or explanation; it requires correct identification of the information.

An IDS must list all information known to be material to patentability. The following categories of references, when they are known to the applicant, inventor, or anyone involved in prosecution, must be submitted.

What to include in your information disclosure statement is often black and white.

You need to share any information documenting

Prior products you’ve disclosed or offered for sale
Publications describing similar technology
Competitor products or documentation
Any reference uncovered during your own research

US patents and published applications

You must list each document by number, kind code, issue or publication date, and name of the patentee or applicant. Copies are not required because the USPTO already has access to these documents.

Patents and published applications from other patent offices

You must identify each document by office or country, number, kind code, publication date, and applicant or patentee. Copies must be provided unless the document is from a participating digital access program.

Non‑patent literature

You must provide a copy of each item of non‑patent literature. This includes journal articles, standards, product manuals, marketing materials, dissertations, and any other printed publication. We have even submitted YouTube links.

Related US applications

You must disclose co‑pending US applications that are related through priority claims, shared inventors, or shared subject matter. This allows the examiner to issue a double-patenting rejection.

Search report by another patent office.

You must disclose a search report by another patent office in the same family.

Practices

Most commentators don’t spend time on good IDS practices. At Perpetual, we want our clients to have good IP management practices so they aren’t dependent on us.

Search report by another patent office

You must disclose this promptly. We, therefore, submit and bill you without asking.

Translations or concise explanations

If a foreign‑language document is cited, you must provide either a translation or a concise explanation of relevance. The concise explanation is not an argument; it is a brief statement identifying the pertinent portion of the document.

Timing

We must file an IDS before there is an office action on the merits. Typically, our deadline is 18 months after filing of a new US application. There is an immovable deadline of 3 months after receipt of a search report.

More precisely, as governed by 37 C.F.R. §1.97, you can file an IDS within any of the following phases.

Phase One (37 C.F.R. §1.97(b)): You can submit an IDS within 3 months of the U.S. filing date or national stage entry, before the mailing of a first office on the merits for a new application, or before any office action after the filing of a Request for Continued Examination (RCE). If you file an IDS in this phase, there is no need to file a statement or pay a government fee that applies in later phases. (Size fees may apply.)
Phase Two (37 C.F.R. §1.97(c)): If you miss filing in Phase One, you can still file an IDS provided it is done before the mailing of an action that closes prosecution (e.g., Final Office Action, Notice of Allowance, Ex parte Quayle notice). However, you must either submit a statement under 37 C.F.R. §1.97(e) or pay the fee in 37 C.F.R. §1.17(p).
Phase Three (37 C.F.R. §1.97(d)): If you miss Phase Two, you can submit an “information disclosure statement” provided it “is filed on or before payment of the issue fee” and is accompanied by both a statement under 37 C.F.R. §1.97(e) and the fee in 37 C.F.R. §1.17(p).

Volume

Most patent applications cite about 10 references. Automated valuation tools increase the value of a patent when it cites about 20 references. However, there is no correct number or optimal number. There is a wrong number: zero (0). Providing zero references is bad practice.

Publication date

You generally need not submit references published after your filing date unless they contain statements or evidence that contradict your application’s assertions about novelty, operability, utility, or enablement. That is, if a reference is published after your priority or application date and calls into question some aspect of your invention, such as novelty or utility, you must submit it.

Searching

You need not search for references, so as a best practice you should not search just for the IDS. You can do a pre-drafting search.

Are you helping the examiner assess novelty or invention?

Yes, and more. You must submit references that can be used in a novelty or obviousness rejection. However, it is any reference that is material, including for utility, so you must submit any reference where the applicant says the invention won’t work.

Can you strategically not submit material?

You must submit anything material and not cumulative. You must submit examiner reports. So there is very little discretion. It is better to overshare, than undershare.

So if you receive an examiner’s report that is cumulative to references on record, you must submit it. However, if you have a tenth reference that repeats the contents of references one through nine, you can call it cumulative.

Do we need to file an IDS in Canada?

No. However, under Section 85 of the Patent Rules, a Canadian Intellectual Property Office (CIPO) examiner may issue an examiner’s requisition asking your company, the applicant, to submit material from related patent applications.

Keeping your files well organized is a great help to your IDS practice. — Keeping your files well organized is a great help to your IDS practice and is an example of best practices in patent prosecution.

Fees

Since January 2025, the USPTO has had a progressive fee structure for IDS size. The system has three tiers; when your application reaches 50 cited references, there’s a $200 fee. At 100 references, the fee increases to $500, and at 200 references, it goes up to $800.

Because the fee rises with the number of cited references, you should submit a Form SB08C each time you file an IDS. This lets the USPTO track how many references have been cited so far, and it is in your interest to do so as these fees have a non-refundable rebate structure. So, for example, if you’ve already paid the $200 fee for the 50th reference, and later hit 100 references, you won’t pay the full $500. Instead, that initial $200 is credited toward the new total, meaning you pay $300.

Overall, the takeaway is simple: the more references you cite, the more important it is to stay organized and keep an eye on where you stand relative to these thresholds.

There is also a timing fee under 37 C.F.R. § 1.17(p).

Can you avoid the expense of an IDS?

No. If you are aware of information material to the patentability of the invention, then you must submit it or abandon your application.

What is a non-refundable rebate structure?

This is a subtle but important point. The rebate is a credit against future fees but is not refundable in cases of overpayment. So, you never get money back, but you do get credit applied toward the next tier. If you overpay due to miscounting, the USPTO does not refund the difference. This is why meticulous tracking matters.

Wait, aren’t some IDSs free?

Sometimes they are. The timing fee under 37 C.F.R. §1.17(p) still exists and can be avoided. The new size fee is unavoidable. But doesn’t apply if the count remains below 50. See 37 C.F.R. § 1.17(v).

Consequences for Failing to Disclose

You file references with the USPTO to strengthen your patent and comply with rules of practice. There are many bad outcomes for improper IDS practice. These include abandonment, discipline, and invalidation.

A deliberate omission in an IDS could bring your patent down like a house of cards.

Abandonment

If the USPTO has issued a notice requiring certain disclosures (e.g., missing parts, foreign search results) and you fail to respond, your application can go abandoned. This apparently does happen when foreign search results are required under Rule 1.55 or 1.97(d).

Discipline

Failure to disclose material information violates 37 C.F.R. 1.56 and, for patent practitioners, triggers OED disciplinary action. This is why practitioners insist on filing an IDS even when you think a reference is “not important.”

Invalidation

An undisclosed reference can be used in a proceeding after the patent is granted. These include Post‑Grant Review (PGR), Inter Partes Review (IPR), Ex parte reexamination, and patent litigation. The challenger will argue the examiner never saw the reference and the claims would not have been allowed if the reference had been disclosed.

A willful omission can ruin your patent. If you knew about material prior art and intentionally withheld it, a court can find inequitable conduct. The penalty is extreme: the court will declare your patent unenforceable. And courts often extend the taint to your related applications.

Failing to file an IDS because of oversight is not inequitable conduct. Failing to file an IDS because you hoped the examiner wouldn’t see the reference is.

Conclusion

By mastering how you track and manage references, you can create a stronger patent portfolio. If you would like to discuss IP management practices at your company or protecting one of your organization’s inventions with a patent application, please contact us.