The requirements for submitting an SDI are set out in 37 CFR 1.97, which is also found in the MPEP, and include when and how the applicant may submit disclosure statements. An SDI is not eligible in a provisional application.  As of October 2006, relevant technology can be submitted on paper using a form issued by the USPTO or electronically using the USPTO e-filing system. Second, paragraph 1.98(c) of 37 CFR states that if the content of disclosures of two or more patents or publications listed in an information disclosure statement is cumulative, a copy of one of the patents or publications may be filed without a copy of the other patents or publications, provided that a declaration is made that such other patents or publications are cumulative. The examiner then examines only the patent or publication of which a copy is filed and indicates it on the list submitted on forms PTO/SB/08A and 08B, e.B. by striking out the list of cumulative information. See, however, Semiconductor Energy Laboratory Co. v. Samsung Electronics Co., 204 F.3d 1368, 1374, 54 USPQ2d 1001, 1005 (Fed. Cir. 2000) (The reference was not cumulative as it contained a more complete combination of the claimed elements than any other reference submitted to the examiner.
„An undisclosed reference can be very important if it reveals a more complete combination of relevant characteristics, even if those characteristics are present to the patent examiner in other references.“ (Quotes omitted).). While the use of the exact wording of 37 CFR 1.97(e)(1) and/or 37 CFR 1.97(e)(2) is strongly recommended, it is not required as long as the language used by the applicant gives exactly the same meaning as the wording of 37 CFR 1.97(e)(1) and/or 37 CFR 1.97(e)(2). Changing the wording of the statements carries the risk that it may not have the same meaning as the wording of paragraph 1.97(e)(1) of 37 CFR and/or 37 CFR 1.97(e)(2). If it is determined that the different language does not (or cannot) convey the same meaning, the information disclosure statement will not be accepted. The submission of a statement of disclosure of information should not be construed as a statement that a search has been carried out. 37 CFR 1.97 (g). It is not necessary for a patent applicant to perform a patentability search. In addition, the filing of an information disclosure statement should not be construed as an admission that the information cited in the statement is important to patentability within the meaning of 37 CFR 1.56(b). 37 CFR 1.97 (h). See MPEP § 2129 for admission by the applicant. The filing disclosure statement  does not correspond to 37 CFR 1.98(a)(1), which requires: (1) a list of all patents, publications, applications or other information submitted to the Office for examination; (2) U.S.
Patents and U.S. Patents Publications of Patent Applications Listed in a Separate Section from Citations of Other Documents; (3) the application number of the application in which the declaration of disclosure of information is presented on each page of the list; (4) a column containing a space for the examiner`s initials next to each document to be taken into account; and (5) a title that clearly indicates that the list is an information disclosure statement. The statement on disclosure of information was included in the notification documents, but the information referred to therein was not taken into account. It is important that you provide good disclosure of invention and information when preparing the application. This means the disclosure of all known and relevant prior art to your patent attorney. As a client, you need to tell your patent attorney what you know and how to find it. When it comes to patents or patent applications, it`s relatively simple: you list them on the form. If the state of the art is something else (a white paper, a magazine article, a product, or service that exists), you need to provide information about where the USPTO can find it. You must also provide a copy of the material. Once the minimum requirements of 37 CFR 1.97, 37 CFR 1.98 and 37 CFR 1.33(b) are met, the examiner is required to review the information. The information does not have to be references to prior art to be taken into account by the examiner.
Examination by the examiner of the information submitted in an IDS means nothing more than the examination of documents in the same way that other documents in the Office search files are taken into account by the examiner when performing a prior art search in an appropriate search area. The examiner`s initials placed next to the citations on PTO/SB/08A and 08B or an equivalent amount mean that the information has been taken into account by the examiner to the extent indicated above. In addition, examiners may use the following electronic signature method in information disclosure statements to indicate whether the information has been taken into account. Reviewers will no longer initialize each reference citation to the study, but will continue to cross out every citation that is not considered. Each page of reference citations is stamped by the examiner with the phrase „All references taken into account unless crossed out“ as well as the examiner`s electronic initials, and the last page of the reference citations contains the examiner`s electronic signature. Information submitted to the Agency that does not comply with the requirements of paragraphs 1.97 of 37 CFR, 1.98 of 37 CFR and 37 CFR 1.33(b) will not be considered by the Agency, but will be included in the application documents. The obligation to be open only applies to relevant information that is defined as „essential to the patentability“ of the invention claimed in your patent application. Think of „essential“ information as something that calls into question the novelty of your claimed invention. Information can also be essential if it can make your invention obvious. The filing of a declaration should include the following: On January 18, 2006, the Office began electronic processing of the list of citations (e.B.
Form PTO/SB/08) filed as part of an information disclosure declaration (IDS) filed in applications stored by the Office in image form. Auditors have a tool to comment on citations electronically and to electronically sign the SDI when reviewing cited references. See MPEP § 609.04(b) to determine whether a cited reference has been taken into account by the examiner. The electronically processed SDI is kept in the official file of the Office as an entry in the image file packaging (IFW) of the application and a copy is sent to the applicant as part of an action by the Office. When filing a permanent application for claims under 35 U.S.C. 120 for a parent application (with the exception of an international application designated by the United States), it is not necessary for the applicant to file a declaration of disclosure of the information contained in the continuous application listing the prior art cited by the examiner in the parent application, unless the applicant wishes the information on the patent granted from the continuous application to be printed (e.g.B. requests for continuous prosecution filed under 37 CFR 1.53(d), see subsection A.1. below).
The examiner of the continuing application shall take into account the information taken into account by the Office in the parent application. If an application has been withdrawn from issuance under any of the provisions of 37 CFR 1.313(c)(1)-(3), it will be treated as if no notice of award had been sent and the emission tax had not yet been paid compared to the time the information disclosure returns were filed. Petitions submitted under 37 CFR 1,313(c) should be addressed to the Office of Petitions of the Office of the Deputy Commissioner of Patent Examination Policy. See MPEP § 1308. From May 2002, the SDI may be submitted to the Office via the Office`s electronic filing system. Applicants may file an e-IDS via EFS-Web by (A) entering the reference citation information in an electronic data entry form corresponding to paper form PTO/SB/08A and (B) by submitting the electronic data entry form to the Office. Since January 2007, an e-IDS filed via EFS-Web can contain U.S. patent citations, U.S. patent application publications, foreign patent documents, and non-patent literature (NPL). Copies of U.S.
patents and publications of U.S. patent applications cited in the IDS do not need to be filed by applicants with the e-IDS. If references to foreign patent documents or NPLs or unpublished U.S. patent applications (which are not stored in the Office`s Image File Packaging System (IFW)) need to be cited, applicants must file copies of these documents in PDF format via EFS Web. .