PatentNext Summary: An Information Disclosure Statement (IDS) is the primary procedural vehicle for satisfying the duty of candor and good faith owed to the USPTO during patent prosecution. The consequences of failing to disclose material information can be severe, including a later finding of inequitable conduct and resulting unenforceability of an issued patent. This article summarizes the legal framework governing materiality, the scope of the disclosure duty, foreign and parallel-application considerations, and practical IDS best practices for attorneys seeking to reduce risk while building a strong prosecution record.

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What Is an IDS and Why It Matters Under U.S. Patent Law

An Information Disclosure Statement (IDS) is the procedural mechanism by which patent applicants submit information to the USPTO to help satisfy the duty of candor and good faith, including the duty to disclose information material to patentability. See 37 C.F.R. § 1.56.

That duty generally applies to individuals associated with the filing and prosecution of a patent application and continues while claims remain pending. Id. § 1.56(a).

Why this matters is straightforward: a failure to disclose material information to the USPTO can later be used to support an inequitable conduct defense. If inequitable conduct is proven, the consequence is not merely claim narrowing or invalidity of a particular claim—it can render the entire patent unenforceable, effectively destroying its enforcement value.

For attorneys and in-house counsel implementing prosecution controls, IDS practice is therefore not simply administrative housekeeping; it is a core component of patent risk management.

Duty to Disclose “Material” Information/Prior Art

U.S. patent law imposes a duty to disclose information that is material to patentability. 37 C.F.R. § 1.56.

Examples of Potentially Material Information

Potentially material information may include, for example:

  • Published applications or issued patents;
  • References cited in office actions during PCT or foreign prosecution of the same or related applications;
  • References listed in an International Search Report (ISR);
  • References from related PCT or foreign counterpart applications filed later (often submitted via a supplemental IDS); and
  • Other technical or factual materials that may bear on patentability positions taken before the USPTO.

What Is “Material” Information?

Whether information is “material” is the key threshold question. The rule is clear on two important points:

  1. All material information must be disclosed; but
  2. There is no duty to submit information that is not material to the patentability of any existing claim. 37 C.F.R. § 1.56(a).

Section 1.56(b) provides the operative definition. Information is material to patentability when it is not cumulative to information already of record (or being made of record), and:

  1. It establishes, by itself or in combination with other information, a prima facie case of unpatentability of a claim; or
  2. It refutes, or is inconsistent with, a position the applicant takes in:
    • opposing an argument of unpatentability relied on by the Office; or
    • asserting an argument of patentability.
      37 C.F.R. § 1.56(b).

The Federal Circuit decision in Therasense, Inc. v. Becton, Dickinson & Co., clarified this statutory framework. 649 F.3d 1276 (Fed. Cir. 2011) (en banc). That is, the modern inequitable conduct framework is centered on Therasense. In Therasense, the Federal Circuit articulated a heightened standard for inequitable conduct and described “but-for” materiality as follows:

[W]hen an applicant fails to disclose prior art to the PTO, that prior art is but-for material if the PTO would not have allowed a claim had it been aware of the undisclosed prior art. 

Id. at 1291.

In practical terms, Therasense’s ruling means that, for inequitable conduct purposes, undisclosed art generally must be so important that the USPTO would not have allowed at least one claim had the art been before the examiner. 

Therasense also emphasized that materiality and intent are separate elements—a critical point for prosecution counseling and litigation risk analysis. Both of these elements must be established in order to find a patent unenforceable. 

Who Has the Duty to Disclose?

The duty to disclose is broad and should be recognized as such.

Under 37 C.F.R. § 1.56(a), “[e]ach individual associated with the filing and prosecution of a patent application” owes a duty of candor and good faith, including the duty to disclose material information.

That group includes, at minimum:

  • The inventor(s);
  • The applicant;
  • Patent attorneys and patent agents prosecuting the application; and
  • Other persons substantively involved in preparation or prosecution who are associated with the inventor, applicant, assignee, or a party with an obligation to assign. See 37 C.F.R. § 1.56(c).

For organizations, this broad scope reinforces the need for a clear intake-and-escalation process for prior art and prosecution developments (especially from foreign counsel, inventors, and related business units).

How Broad Is the Duty to Disclose (Novelty, Obviousness, or Otherwise)?

The disclosure duty is not limited to “silver bullet” anticipatory references.

It Extends Beyond Anticipation

Courts have long recognized that the duty extends beyond references that strictly anticipate a claim. See Argus Chemical Corp. v. Fibre Glass-Evercoat Co., 759 F.2d 10, 13 (Fed. Cir. 1985).

It may include art that could reasonably bear on obviousness, not just novelty. See American Can Co. v. Crown Cork & Seal Co., 213 U.S.P.Q. (BNA) 466, 473 (E.D. Wis. 1981), aff’d and remanded, 693 F.2d 653 (7th Cir. 1982).

Materiality May Exist Even If the Reference Does Not Ultimately Invalidate the Claims

A reference may still be material even if it does not ultimately render claims invalid for anticipation or obviousness. See RCA Corp. v. Data General Corp., 701 F. Supp. 456, 8 U.S.P.Q.2d (BNA) 1305, 1320 (D. Del. 1988), aff’d, 887 F.2d 1056 (Fed. Cir. 1989).

Likewise, courts have treated non-patent literature (NPL) bearing on operability as material. See Bristol-Myers Squibb Co. v. Rhone-Poulenc Rorer, Inc., 48 U.S.P.Q.2d (BNA) 1817, 1822 (S.D.N.Y. 1998), order vacated on other grounds, 155 F.3d 569 (Fed. Cir. 1998).

Practical Implication

Attorneys should evaluate materiality broadly enough to capture:

  • novelty issues,
  • obviousness combinations,
  • inconsistency with positions taken,
  • and technical disclosures that affect operability, enablement-related factual premises, or prosecution arguments.

Because of this broad duty, as a general rule for IDS practice: when in doubt, disclose.

Duty to Disclose Information from Parallel or Related Applications

The duty is not confined to references alone. It can also encompass relevant aspects of prosecution in related applications.

In McKesson Information Solutions, Inc. v. Bridge Medical, Inc., the Federal Circuit affirmed findings based on nondisclosure of important prosecution developments in related applications, including:

  1. failure to disclose that another examiner discovered a prior patent during simultaneous examination of another application;
  2. failure to disclose rejections made in another application; and
  3. failure to disclose allowance of claims in another application that might have supported a double-patenting rejection.

    See McKesson Info. Sols., Inc. v. Bridge Med., Inc., 487 F.3d 897 (Fed. Cir. 2007) (often cited in discussions of cross-application disclosure obligations).

Practical Implication

IDS procedures should include mechanisms to capture not only references, but also material prosecution events across related U.S., PCT, and foreign matters.

No Duty to Disclose Cumulative Art

An equally important principle—especially for efficiency and fee management—is that there is no duty to disclose merely cumulative information.

  • Information which is merely cumulative is not material. J.P. Stevens & Co. v. Lex Tex Ltd., Inc., 747 F.2d 1553, 1559-60 (Fed. Cir. 1984).
  • Nondisclosure of a reference no more pertinent than references already of record is not material. Ex parte Holtz, 224 U.S.P.Q. 714, 718 (BPAI 1984).

The Federal Circuit has also reversed inequitable conduct findings where the allegedly withheld art was no more material than art already before the Office and there was insufficient evidence of deceptive intent. See Rothman v. Target Corp., 556 F.3d 1310, 1326 (Fed. Cir. 2009).

Practical Implication

There is no legal requirement to flood the record with duplicative references. That said, many practitioners still choose to err on the side of disclosure where a non-cumulative determination is uncertain—particularly if the cost/administrative burden is low relative to the risk.

Continuing Applications

There is no need to resubmit a listing of information from a parent application in a continuing application (e.g., continuation applications, divisional applications, or continuation-in-part (CIP) applications), unless the applicant desires the information to be printed on the patent. See, e.g., MPEP § 609.02(II)(2).  However, because of this last clause, some practitioners view it as a best- practice to resubmit the information from the parent in each continuing application (so that all information can be printed on the patent). 

The Risk of Nondisclosure: Inequitable Conduct and Unenforceability

The principal risk is not that an issued patent becomes “unpatentable” in a technical sense, but that it becomes unenforceable due to inequitable conduct.

Historically, inequitable conduct based on nondisclosure has been described as requiring proof that:

  1. the withheld information was material;
  2. the applicant knew of the information (and its materiality); and
  3. the nondisclosure resulted from an intent to mislead the USPTO.
     

See Elk Corp. of Dallas v. GAF Bldg. Materials Corp., 168 F.3d 28, 30 (Fed. Cir. 1999).

In addition, as described above, the Federal Circuit’s Therasense case significantly tightened the doctrine by requiring clear proof of both:

  • but-for materiality (subject to recognized exceptions such as affirmative egregious misconduct), and
  • specific intent to deceive the USPTO, which cannot be inferred solely from materiality.


See Therasense, 649 F.3d at 1290–91.

Key Takeaway for Practitioners

For inequitable conduct, courts analyze both:

  • How important was the undisclosed information? and
  • Was there deceptive intent?

Because intent is often proven circumstantially, disciplined IDS practices remain essential—even after Therasense.

Foreign Considerations

Art Identified in Foreign Jurisdictions

References identified by foreign patent offices in counterpart applications (especially with similar claims) will often be treated as potentially material and should generally be considered for submission to the USPTO.

This includes references received from foreign agents, foreign office actions, search reports, and similar documents.

Non-English References: Use Care

Non-English references create additional risk if handled incompletely or ambiguously.

Courts have treated problematic handling of foreign-language references and translations as evidence relevant to inequitable conduct analyses, where, for example a failure to provide an English-translation, or provision of only a “partial translation,” of a foreign language reference was taken as evidence of deceptive intent where untranslated portions were deemed to contain material information. See, e.g., Semiconductor Energy Lab. Co. v. Samsung Elecs. Co., 4 F. Supp. 2d 477 (E.D. Va. 1998), aff’d, 204 F.3d 1368 (Fed. Cir. 2000); Semiconductor Energy Lab. Co. v. Samsung Elecs. Co., 204 F.3d 1368, 1374 (Fed. Cir. 2000).

MPEP Guidance for Non-English IDS Submissions

Under MPEP § 609.04(a), for each non-English reference cited in an IDS, an applicant should provide either:

  1. a concise explanation of relevance (as presently understood by the most knowledgeable individual under 37 C.F.R. § 1.56(c)); or
  2. a complete English translation (which may include an English-language counterpart application or a reliable machine translation); or
  3. an English-language abstract; or
  4. an English-language foreign office action/search report indicating relevance (e.g., claim mapping or “X/Y/A” categorizations), which may satisfy the concise-explanation requirement.

English-language references

For English-language references, there is generally no requirement to provide a substantive explanation of relevance simply because the reference is cited.

As the Federal Circuit observed in another context, requiring an inventor to fully narrate all personal technical knowledge would be unmanageable. Upjohn Co. v. Mova Pharm. Corp., 225 F.3d 1306, 1313 (Fed. Cir. 2000).

Practical Foreign-Prosecution Rule

If foreign counsel sends any information that may be material to a given U.S. application, route it through your U.S. IDS process promptly—preferably with a translation/abstract/search-report package rather than an ad hoc attorney “concise explanation.”

Curing IDS Issues

A. Allowed Applications: Quick Path IDS (QPIDS)

When relevant art is discovered after allowance, the QPIDS program can be a valuable and underused mechanism. See Quick Path Information Disclosure Statement (USPTO).

In general terms, QPIDS allows applicants—subject to procedural requirements, certifications, and fees—to submit an IDS after allowance with a conditional RCE. If the examiner determines that reopening prosecution is unnecessary, the RCE fee may be refunded.

This can be a more efficient alternative to automatically filing a full RCE whenever late art appears.

Practice point: Confirm current USPTO requirements, forms, and fees before filing, as pilot programs and fee schedules can change.

B. Issued Patents: Reissue as a Potential Cure Path

For issued patents, practitioners may evaluate reissue as a mechanism to address certain prosecution issues, including nondisclosure concerns, depending on the facts.

Whether reissue is appropriate will depend on timing, claim strategy, scope of the issue, and litigation posture. This is a highly fact-specific analysis and should be coordinated with litigation counsel where enforcement is contemplated.

Information Disclosure Statement (IDS) Best Practices

Below is a practical framework for attorneys and in-house teams seeking to implement defensible IDS processes.

1. Establish an IDS Single Point of Contact (SPOC)

For each application or patent family, designate a single responsible point of contact (often a prosecution paralegal or docketing-supported prosecution specialist) to:

  • receive references and foreign-office communications,
  • track receipt dates,
  • de-dup and/or confirm whether the references/communications are cumulative
  • coordinate attorney review,
  • prepare IDS submissions, and
  • maintain proof of filing and consideration.

2. When in Doubt, Disclose

Materiality can be uncertain. If there is a reasonable question whether a reference may be material (and it is not clearly cumulative), submission is often the safer course.

3. Disclose References Mentioned in the Specification

References cited in the application’s specification (or otherwise relied upon in drafting) should generally be evaluated for IDS submission and often disclosed. For example, this often occurs in specifications that have been generated based on an academic or research paper.

4. Treat Disclosure as a Patent-Strengthening Practice

Thoughtful disclosure can improve the prosecution record and may strengthen the patent against later attacks, including during Patent Trial and Appeal Board (PTAB) proceedings, such as IPR/PGR arguments that the examiner never saw certain references).

5. Monitor Foreign and Related Applications

Build a process to collect and review:

  • International Search Reports (ISRs)/International Preliminary Examination Reports (IPERs),
  • foreign office actions,
  • cited references,
  • related U.S. application rejections/allowances, and
  • double-patenting-related developments.

6. For Non-English References, Prefer Translations/Abstracts/Search Reports Over “Concise Explanations”

To reduce risk and ambiguity:

  • use reliable English translations (including machine translations where acceptable),
  • use foreign-office English abstracts or search reports, and
  • avoid over-lawyering a “concise explanation” unless needed.

7. Avoid Duplicate IDS Entries (and Track Size-Fee Implications)

Recent USPTO guidance highlights operational issues related to IDS size fees (including cumulative thresholds and duplicate counting). Accordingly, practitioners should account for the following points:

  • IDS size fees may be triggered under the tiered structure when cumulative applicant-/patent owner-provided items exceed threshold counts (e.g., 50/100/200) under 37 C.F.R. § 1.17(v);
  • Duplicates can count toward totals;
  • An RCE does not reset the cumulative count;
  • General deposit account authorizations may be insufficient if they do not clearly identify the relevant IDS size fee; and
  • USPTO forms (such as SB/08 and SB/08c, as applicable) should be used carefully to ensure compliant fee assertions.

Practice point: This is an area where administrative precision matters. Standardize templates and train staff.

8. File Early, Then Update as Needed

Best practice is to file an IDS:

  • with the application, or
  • at least before the first Office Action on the merits,

–and then file supplemental IDS submissions promptly as new information arises.

9. Conduct a Post-Allowance IDS Check

After Notice of Allowance:

  • confirm all intended IDS submissions were filed,
  • confirm compliance (no unresolved notices),
  • confirm the examiner considered the IDS entries, and
  • assess whether any late-arising art requires QPIDS or other action before issuance.

When to File an IDS (Timing Framework Under 37 C.F.R. § 1.97)

IDS timing is one of the most practical areas for process discipline. The rules create different stages with different requirements.

First Stage: No Fee / No § 1.97(e) Statement (37 C.F.R. § 1.97(b))

An IDS may generally be filed:

  • within 3 months of the U.S. filing date, or
  • before the first Office Action on the merits,
    whichever rule applies to the application type under § 1.97(b).

When filed in this stage, no § 1.97(e) statement and no § 1.17(p) fee is typically required.

This commonly includes:

  1. National applications (non-CPA): within 3 months of filing or before the first Office Action on the merits, whichever is later;
  2. National stage applications: within 3 months of national stage entry (see 37 C.F.R. § 1.491) or before the first Office Action on the merits, whichever is later;
  3. Continued examinations (e.g., RCE contexts): before the first Office Action on the merits after the RCE; and
  4. Certain international design applications: per applicable timing tied to publication and first Office Action timing.

Second Stage: Requires a Fee or a Statement (37 C.F.R. § 1.97(c))

If the first stage has expired, an IDS may still be filed before the mailing of:

  • a final Office Action,
  • a Notice of Allowance, or
  • an Ex parte Quayle action.

At this stage, the IDS must be accompanied by either:

  • the fee under 37 C.F.R. § 1.17(p), or
  • a compliant statement under 37 C.F.R. § 1.97(e).

The § 1.97(e) Statement Is Available Only in Limited Circumstances

The two common bases are:

  1. The information was first cited in a communication from a foreign patent office in a counterpart foreign application not more than three months before the IDS filing; or
  2. No item in the IDS was known more than three months before the IDS filing (and the item was not cited in a foreign patent office in a counterpart foreign application).

Third Stage: Requires a Fee and a Statement (37 C.F.R. § 1.97(d))

If the second stage has expired, an IDS may still be filed before or with payment of the issue fee, but the IDS generally must be accompanied by both:

  • the § 1.17(p) fee, and
  • a § 1.97(e) statement.

If a § 1.97(e) statement cannot be made, then the applicant typically must pursue another mechanism (often an RCE) for examiner consideration of the information, subject to timing and procedural posture.

Conclusion

The IDS duty is a foundational prosecution obligation with real enforcement consequences. U.S. law requires disclosure of material information known to individuals associated with prosecution, and the penalties for failing to do so can be severe—most notably, inequitable conduct and patent unenforceability.

For attorneys and in-house counsel, the best defense is a repeatable process:

  1. define responsibility,
  2. capture information from inventors and foreign counsel,
  3. assess materiality consistently,
  4. file promptly and accurately,
  5. document compliance, and
  6. perform a post-allowance check.

Done well, IDS practice is not merely defensive. It is part of building a stronger, more durable patent portfolio.

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