37 CFR 1.97: Filing of information disclosure statement

Taken from the Ninth Edition of the MPEP, Revision 07.2015, Last Revised in November 2015

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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.
  • (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.
[48 FR 2712, Jan. 20, 1983, effective date Feb. 27, 1983; 57 FR 2021, Jan. 17, 1992, effective Mar. 16, 1992; para. (d) revised, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995; paras. (a)- (d) revised, 61 FR 42790, Aug. 19, 1996, effective Sept. 23, 1996; paras. (c)-(e) revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; para. (b) revised, 65 FR 14865, Mar. 20, 2000, effective May 29, 2000 (adopted as final, 65 FR 50092, Aug. 16, 2000); paras. (a) through (e) and (i) revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; paras. (b)(3)-(4) revised and para. (b)(5) added, 80 FR 17918, Apr. 2, 2015, effective May 13, 2015]