37 C.F.R. § 1.97

Filing of information disclosure statement

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(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 paragraph (b), (c), or (d) of this section and be accompanied by any applicable information disclosure statement size fee under § 1.17(v).

(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.

(f) No extensions of time for filing an information disclosure statement are permitted under § 1.136. If a bona fide attempt is made to comply with § 1.98, but part of the required content is inadvertently omitted, additional time may be given to enable full compliance.

(g) An information disclosure statement filed in accordance with this section shall not be construed as a representation that a search has been made.

(h) The filing of an information disclosure statement shall not be construed to be an admission that the information cited in the statement is, or is considered to be, material to patentability as defined in § 1.56(b).

(i) If an information disclosure statement does not comply with either this section or § 1.98, it will be placed in the file but will not be considered by the Office.

[57 FR 2034, Jan. 17, 1992, as amended at 59 FR 32658, June 24, 1994; 60 FR 20226, Apr. 25, 1995; 61 FR 42805, Aug. 19, 1996; 62 FR 53190, Oct. 10, 1997; 65 FR 14872, Mar. 20, 2000; 65 FR 54670, Sept. 8, 2000; 80 FR 17963, Apr. 2, 2015; 89 FR 92008, Nov. 20, 2024]

Notes of Decisions

Cited in 28 cases (3 in the last 5 years), 1991–2024 · leading case: Fiskars, Inc. & Fiskars Oy Ab v. Hunt Mfg. Co., & Joseph F. Posillico, Sanctioned Party-Appellant, 221 F.3d 1318 (Fed. Cir. 2000).

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Fiskars, Inc. & Fiskars Oy Ab v. Hunt Mfg. Co., & Joseph F. Posillico, Sanctioned Party-Appellant, 221 F.3d 1318 (Fed. Cir. 2000). · cites it 2× “MPEP 609 directs an examiner to line through, and not consider, a prior art reference when the requirements of 37 C.F.R. § 1.97 or § 1.98 have not been satisfied.”

Riverwood Int'l Corp. v. R.A. Jones & Co., Inc., Defendant-Cross, 324 F.3d 1346 (Fed. Cir. 2003). “For example, 37 CFR § 1.97 (h) provides: “The filing of an information disclosure statement shall not be construed to be an admission that the information cited in the statement is, or is considered to be, material to patentability as defined in § 1.”

Abbott Labs. & Cent. Glass Co., Ltd. v. Baxter Pharm. Prods., Inc. & Baxter Health Care Corp., 334 F.3d 1274 (Fed. Cir. 2003). “According to Patent Office rules, “[t]he filing of an information disclosure statement shall not be construed to be an admission that the information cited in the statement is, or is considered to be, material to the patentability defined in § 1.”

Venetec Int'l, Inc. v. Nexus Med., LLC, 541 F. Supp. 2d 612 (D. Del. 2008). “The PTO advised in the Notice of Non-Compliant Information Disclosure Statement that because the IDS was filed after the issue fee was paid, it failed to meet the requirements of 37 CFR 1.97(d), and would not be considered.”

In Re Cuozzo Speed Tech., LLC, 778 F.3d 1271 (Fed. Cir. 2015). · cites it 2× “§§ 305 ; 135; 37 C.F.R. § 1.97 , the term 8 IN RE CUOZZO SPEED TECHNOLOGIES, LLC “validity” is used throughout the Inter Partes Review statute.”

Ariad Pharm., Inc. v. Eli Lilly & Co., 529 F. Supp. 2d 106 (D. Mass. 2007). · cites it 2× “See 37 C.F.R §§ 1.97, 1.98. The MPEP at the time of the '516 prosecution provided an exception for references submitted with an Office Action response, in pertinent part as follows: To the extent that a document is submitted as evidence directed to an issue of patenta-bility…”

Eli Lilly & Co. v. Zenith Goldline Pharm., Inc., 364 F. Supp. 2d 820 (S.D. Ind. 2005). “Chakrabarti 1980a and the ’574 patent were not disclosed as prior art to the Examiner during the prosecution of the ’382 patent.”

Stamps.com Inc. v. Endicia, Inc., 437 F. App'x 897 (Fed. Cir. 2011). “37 C.F.R. § 1.97 (h); ResQNet.com, Inc. v.”

ResQNet. Com, Inc. v. Lansa, Inc., 533 F. Supp. 2d 397 (S.D.N.Y. 2008). “2003); accord 37 C.F.R. § 1.97 (h) (2006). Furthermore, ResQNet’s submission in 2002 does not speak to Flashpoint's dissemination prior to the '075 Patent's critical date of July 10, 1996.”

Novo Nordisk A/S v. Caraco Pharm. Labs., Ltd., 775 F. Supp. 2d 985 (E.D. Mich. 2011). “37 C.F.R. §§ 1.97 (d) and (e). Bork failed to file the required statement, and Novo failed to provide the Court with any explanation for its long delay in filing the opposition evidence until after the examiner had allowed Claim 4.”

Mobile Telecomm. Tech., LLC v. T-Mobile USA, Inc., 78 F. Supp. 3d 634 (E.D. Tex. 2015). · cites it 2× “10, Information Disclosure Statement Under 37 C.F.R. § 1.97 (b). Defendants have not demonstrated, however, that the IDS gave rise to any clear and unmistakable disclaimer.”

Leviton Mfg. Co. v. Shanghai Meihao Elec., Inc., 613 F. Supp. 2d 670 (D. Maryland 2009). “See 37 C.F.R. § 1.97 (i); MPEP § 609 (“A separate list is required so that it is easy to confirm that applicant intends to submit an information disclosure statement and because it provides a readily available checklist for the examiner to indicate which identified documents…”

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— 37 C.F.R. § 1.97(d) — 1 case

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