37 C.F.R. § 1.98

Content of information disclosure statement

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(a) Any information disclosure statement filed under § 1.97 shall include the items listed in paragraphs (a)(1) through (4) of this section.

(1) A list of all patents, publications, applications, or other information submitted for consideration by the Office. U.S. patents and U.S. patent application publications must be listed in a section separately from citations of other documents. Each page of the list must include:

(i) The application number of the application in which the information disclosure statement is being submitted;

(ii) A column that provides a space, next to each document to be considered, for the examiner's initials; and

(iii) A heading that clearly indicates that the list is an information disclosure statement.

(2) A legible copy of:

(i) Each foreign patent;

(ii) Each publication or that portion which caused it to be listed, other than U.S. patents and U.S. patent application publications unless required by the Office;

(iii) For each cited pending unpublished U.S. application, the application specification including the claims, and any drawing of the application, or that portion of the application which caused it to be listed including any claims directed to that portion; and

(iv) All other information or that portion which caused it to be listed.

(3)(i) A concise explanation of the relevance, as it is presently understood by the individual designated in § 1.56(c) most knowledgeable about the content of the information, of each patent, publication, or other information listed that is not in the English language. The concise explanation may be either separate from applicant's specification or incorporated therein.

(ii) A copy of the translation if a written English-language translation of a non-English-language document, or portion thereof, is within the possession, custody, or control of, or is readily available to any individual designated in § 1.56(c).

(4) A clear written assertion that the information disclosure statement is accompanied by the applicable information disclosure statement size fee under § 1.17(v) or a clear written assertion that no information disclosure statement size fee under § 1.17(v) is required.

(b)(1) Each U.S. patent listed in an information disclosure statement must be identified by inventor, patent number, and issue date.

(2) Each U.S. patent application publication listed in an information disclosure statement shall be identified by applicant, patent application publication number, and publication date.

(3) Each U.S. application listed in an information disclosure statement must be identified by the inventor, application number, and filing date.

(4) Each foreign patent or published foreign patent application listed in an information disclosure statement must be identified by the country or patent office which issued the patent or published the application, an appropriate document number, and the publication date indicated on the patent or published application.

(5) Each publication listed in an information disclosure statement must be identified by publisher, author (if any), title, relevant pages of the publication, date, and place of publication.

(c) When the disclosures of two or more patents or publications listed in an information disclosure statement are substantively cumulative, a copy of one of the patents or publications as specified in paragraph (a) of this section may be submitted without copies of the other patents or publications, provided that it is stated that these other patents or publications are cumulative.

(d) A copy of any patent, publication, pending U.S. application or other information, as specified in paragraph (a) of this section, listed in an information disclosure statement is required to be provided, even if the patent, publication, pending U.S. application or other information was previously submitted to, or cited by, the Office in an earlier application, unless:

(1) The earlier application is properly identified in the information disclosure statement and is relied on for an earlier effective filing date under 35 U.S.C. 120; and

(2) The information disclosure statement submitted in the earlier application complies with paragraphs (a) through (c) of this section.

[65 FR 54671, Sept. 8, 2000, as amended at 65 FR 57055, Sept. 20, 2000; 68 FR 38628, June 30, 2003; 69 FR 56542, Sept. 21, 2004; 89 FR 92008, Nov. 20, 2024]

Notes of Decisions

Cited in 26 cases (5 in the last 5 years), 1985–2025 · leading case: Wi-Lan Inc. v. LG Elecs., Inc., 382 F. Supp. 3d 1012 (S.D. Cal. 2019).

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Wi-Lan Inc. v. LG Elecs., Inc., 382 F. Supp. 3d 1012 (S.D. Cal. 2019). · cites it 7× “Section 609.03 instructs the examiner, when appropriate to notify the applicant that: "The listing of references in the PCT international search report is not considered to be an information disclosure statement (IDS) complying with 37 CFR 1.”

In Re Berwyn E. Etter, 756 F.2d 852 (Fed. Cir. 1985). · cites it 2× “The primary source of patents and printed publications used in making the determination are those relied upon in the request. However, the examiner can also consider the prior art of record in the patent file from the earlier examination or a reexamination and any patents and…”

Golden Hour Data Sys., Inc. v. emsCharts, Inc., 614 F.3d 1367 (Fed. Cir. 2010). · cites it 2× “MPEP section 609 instructs examiners not to consider references included in an IDS which do not comply with 37 C.F.R. § 1.98 . Section 1.98(b)(5) requires that "[e]ach publication .”

Molins Plc, & John Coventry Smith, Jr. v. Textron, Inc., Kearney & Trecker Corp., & Avco Corp., 48 F.3d 1172 (Fed. Cir. 1995). “of prior art submitted or failure to identify an especially relevant passage buried in an otherwise less or nonrelevant text may constitute a failure to comply with the duty of disclosure) with 37 C.F.R. § 1.98 (1992) (no explanation of relevance necessary for information in the…”

Lnp Eng'g Plastics, Inc. & Kawasaki Chem. Holding Co., Inc. v. Miller Waste Mills, Inc. (Trading as Rtp Co.), Defendant-Cross, 275 F.3d 1347 (Fed. Cir. 2001). “However, an applicant may submit cumulative materials under 37 C.F.R. § 1.98 (c) (1996): When the disclosures of two or more patents or publications listed in an information disclosure statement are substantively cumulative, a copy of one of the patents or publications may be…”

Symbol Tech., Inc. v. Aruba Networks, Inc., 609 F. Supp. 2d 353 (D. Del. 2009). “)(“the new rules will actually facilitate the filing of information since the burden of submitting information to the Office has been reduced by eliminating, in most cases, the requirement for a concise statement of the relevance of each item of information listed in an…”

Litton Sys., Inc. v. Honeywell, Inc., 140 F.3d 1449 (Fed. Cir. 1998). “56, applicants are encouraged to file an information disclosure statement____ For each of the eighty-two references Litton provided a statement of the subject matter and its relevance, as required by 37 C.F.R. § 1.98 (a)(2): § 1.98(a) (1985) Any disclosure statement filed .”

Pall Corp., Plaintiff/cross-Appellant v. Pti Tech. Inc., & Kurabo Indus., Ltd., 259 F.3d 1383 (Fed. Cir. 2001). “Pall’s explanation accompanying the amendment included a concise statement of relevance for each reference as required by the information disclosure rules in effect at the time, 37 C.F.R. § 1.98 (1986). The concise statement of relevance for the brochure stated that: “The…”

Leviton Mfg. Co. v. Shanghai Meihao Elec., Inc., 613 F. Supp. 2d 670 (D. Maryland 2009). · cites it 2× “See 37 C.F.R. § 1.98 (a)(1)(i)-(iii). Meihao states, correctly, that the examiner does not seem to be under any obligation to consider information not complying with regulations, and that “as an experienced patent prosecutor Mr.”

Not Dead Yet Mfg. Inc. v. Pride Solutions, LLC, 265 F. Supp. 3d 811 (N.D. Ill. 2017). “37 C.F.R. § 1.98 (a). . Plaintiff also urges dismissal of the defenses for deficiencies in Defendants’ pleadings.”

Semiconductor Energy Lab'y, Co. v. Samsung Elec. Co., 24 F. Supp. 2d 537 (E.D. Va. 1998). “In its motion to reconsider, SEL argues unpersuasively that because the partial translation of Canon was prepared in connection with a prior patent application, and because its submission was thus required by Rule 98(c), 37 C.F.R. § 1.98 (c), SEL’s conduct in this regard cannot…”

Purdue Pharma L.P. v. Boehringer Ingelheim GmbH, 98 F. Supp. 2d 362 (S.D.N.Y. 2000). “37 C.F.R. § 1.98 (a)(3) (1999). Accordingly, these additional arguments must also be rejected.”

Show all 26 citing cases →

— 37 C.F.R. § 1.98(a) — 1 case

ShenZhen JingPinCheng Elec. Tech. Co., Ltd. v. Blisslights, LLC (S.D. Cal. 2021).

— 37 C.F.R. § 1.98(a)(2) — 1 case

Wi-Lan Inc. v. LG Elecs., Inc., 382 F. Supp. 3d 1012 (S.D. Cal. 2019). “Section 609.03 instructs the examiner, when appropriate to notify the applicant that: "The listing of references in the PCT international search report is not considered to be an information disclosure statement (IDS) complying with 37 CFR 1.”

— 37 C.F.R. § 1.98(d) — 1 case

ShenZhen JingPinCheng Elec. Tech. Co., Ltd. v. Blisslights, LLC (S.D. Cal. 2021).

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