2003 Disclosure __ When Made [R-07.2022]
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.
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The provisions of 37 CFR 1.97 specify when an information disclosure statement will be considered as a matter of right and when a certification must be made and/or fee submitted in order to have the information disclosure statement considered. In any circumstance, information should be submitted promptly.
An applicant, attorney, or agent who is aware of material prior art or other information and its significance should submit the information as early as possible in prosecution, e.g., before the first Office action, and not wait until after allowance. However, potentially material information discovered late in the prosecution should be promptly submitted. That the issue fee has been paid is no reason or excuse for failing to submit information. See MPEP § 609.04(b). Additionally, applicant should be mindful of the incentives of prompt filing of information as set forth in 37 CFR 1.704(d)(1).
Likewise, material prior art or other information and its significance should be submitted as soon as possible for reissue applications, and reexamination proceedings.
The presumption of validity is generally strong when prior art was before and considered by the Office and weak when it was not. See Bolkcom v. Carborundum Co., 523 F.2d 492, 498, 186 USPQ 466, 471 (6th Cir. 1975).
2003.01 Disclosure After Patent Is Granted [R-07.2022]
I. BY CITATIONS OF PRIOR ART AND WRITTEN STATEMENTS UNDER 37 CFR 1.501Where a patentee or any member of the public (including private persons, corporate entities, and government agencies) has certain information which they desire to have made of record in the patent file, they may file a citation of such information with the Office pursuant to 35 U.S.C. 301 and 37 CFR 1.501. Such citations will be entered in the patent file without comment by the Office. Information which may be filed under 37 CFR 1.501 is limited to prior art patents, printed publications or written statements of the patent owner filed by the patent owner in a proceeding before a federal court or the Office in which the patent owner took a position on the scope of any patent claim. Any citations which include items other than those items expressly enumerated in 37 CFR 1.501 will not be entered in the patent file. See MPEP § 2202 through § 2208.
II. BY EX PARTE REEXAMINATIONWhere any person, including patentee, has prior art patents and/or printed publications which the person desires to have the U.S. Patent and Trademark Office consider after a patent has issued, such person may file a request for ex parte reexamination of the patent (see 37 CFR 1.510 and MPEP § 2209 through § 2220). Patent owners or third party requesters may bring information, including prior art and incorrect or inconsistent positions, to the attention of the USPTO through ex parte reexamination.
III. BY SUPPLEMENTAL EXAMINATIONWhere a patent owner desires that the Office consider, reconsider, or correct information, including prior art and incorrect or inconsistent positions, believed to be relevant to the patent, the patent owner may file a request for supplemental examination. See 37 CFR 1.601-1.625 and MPEP Chapter 2800. Supplemental examination became available on September 16, 2012, as a result of section 257 of Title 35, United States Code, which was added by Public Law 112-29, enacted on September 16, 2011, known as the Leahy-Smith America Invents Act (AIA). In particular, 35 U.S.C. 257(c)(1) states that “[a] patent shall not be held unenforceable on the basis of conduct relating to information that had not been considered, was inadequately considered, or was incorrect in a prior examination of the patent if the information was considered, reconsidered, or corrected during a supplemental examination of the patent.” Therefore, a patent owner may insulate the patent from being held unenforceable based on information submitted in a properly filed supplemental examination request.
Unlike ex parte reexamination practice, the information that the patent owner may request to be considered, reconsidered, or corrected in a supplemental examination proceeding is not limited to patents, printed publications, and patent owner written statements under 35 U.S.C. 301. The “information” may include any information that the patent owner believes to be relevant to the patent. For example, the information may include not only a patent or a journal article, but also a sales invoice, or a transcript of an audio or video recording. In addition, the information submitted as part of a request for supplemental examination may involve any ground of patentability, such as, for example, patent eligible subject matter, anticipation, public use or sale, obviousness, written description, enablement, and indefiniteness.
IV. REISSUEPatent owners may bring information, including prior art and incorrect or inconsistent positions, to the attention of the USPTO through reissue applications. If any reviewed document is material to the patentability (i.e., those submitted to another Government entity) of a pending matter before the Office, such as reissue application, there is a duty to submit the information to the USPTO. 37 CFR 1.56 and 11.18(b)(2). See MPEP § 2015.
