Information Disclosure Statements: From Filing Through Issuance

Executive Summary:  Effective information disclosure statement (IDS) practice requires coordinating the duty to disclose known, material, noncumulative information with the procedural requirements for obtaining examiner consideration. 37 C.F.R. §§ 1.56, 1.97–1.98 (2026). This article examines how prosecution stage, certification requirements, submission content, and applicable fees affect disclosure decisions from filing through issuance. Related applications present particular challenges: when Company A prosecutes applications X and Y involving similar technology, references and examiner reasoning cited in Y must be evaluated for materiality to X. Common ownership does not automatically make every reference material, but another examiner’s rejection of substantially similar claims may itself warrant disclosure, independently of the underlying reference. Dayco Prods., Inc. v. Total Containment, Inc., 329 F.3d 1358, 1367–69 (Fed. Cir. 2003). The article also explains post-allowance submission options, requests for continued examination, the Quick Path Information Disclosure Statement program, and the separate rules governing patent term adjustment. Effective portfolio management therefore requires prompt communication among prosecution teams, accurate tracking of reference and communication histories, application-specific disclosure decisions, and confirmation that submitted information was actually considered. These practices help preserve procedural options, control costs, and reduce the consequences of delayed disclosure.

 

I The late reference problem

 

Company A receives a notice of allowance in U.S. patent application X. Before paying the issue fee, its patent team receives an Office action in application Y, which concerns similar technology. Y’s examiner relies on reference R to reject a feature also appearing in X’s allowed claims. Is disclosing R in Y enough? Does X’s allowance change the answer? Can counsel simply file an information disclosure statement and pay a fee?

These questions require a coordinated analysis of materiality, the history of the information, and X’s procedural posture. The substantive duty to disclose arises under Rule 56; obtaining consideration through an information disclosure statement, or IDS, requires compliance with separate filing and content rules. See 37 C.F.R. §§ 1.56, 1.97–1.98 (2026). This article addresses ordinary U.S. utility applications and follows the problem from initial examination through issuance, including the additional complications created by related applications.

II Connecting the disclosure duty with examiner consideration

 

Rule 56 imposes a duty of candor and good faith, including disclosure of known information material to patentability. Its materiality standard covers noncumulative information that establishes, alone or with other information, a prima facie case of unpatentability, or refutes or conflicts with an applicant’s position opposing an unpatentability argument or asserting patentability. The duty continues for each pending claim until that claim is canceled or withdrawn, or the application becomes abandoned. Allowance does not terminate the duty while the application remains pending. 37 C.F.R. § 1.56(a)–(b) (2026).

The obligation attaches to each named inventor, each attorney or agent preparing or prosecuting the application, and every other person substantively involved in its preparation or prosecution who is associated with the inventor, applicant, assignee, or a person to whom assignment of the application is owed. Identifying those individuals matters both to disclosure and to later certifications about when information became known. 37 C.F.R. § 1.56(c) (2026).

Regulatory compliance should also be distinguished from a later inequitable-conduct defense. Therasense requires separate proof of specific intent to deceive and, generally, but-for materiality, with an exception for affirmative egregious misconduct. A missed disclosure does not automatically establish inequitable conduct, and the litigation standard does not replace the disclosure rule practitioners must apply during prosecution. Therasense, Inc. v. Becton, Dickinson & Co., 649 F.3d 1276, 1290–95 (Fed. Cir. 2011) (en banc).

An IDS is a procedural vehicle for placing information before the examiner. Filing one does not represent that a search was performed or admit that the cited information is material. Conversely, an IDS that fails the applicable requirements may remain in the file without being considered. 37 C.F.R. § 1.97(g)–(i) (2026). A reliable practice therefore asks two questions: what information must be disclosed, and what submission will obtain its consideration?

III Selecting the filing window

 

Section 1.97 establishes progressively more demanding routes as prosecution advances. For an ordinary utility application, the principal windows are summarized below. All require compliant content and any applicable size fee. 37 C.F.R. § 1.97(a)–(d) (2026).

Filing stage	Timing statement and timing fee
Within three months of U.S. filing or national-stage entry, or before the first merits action; also before the first action after an RCE	Neither required under § 1.97(b)
After the applicable early windows and before mailing of a final action, notice of allowance, or other action closing prosecution	§ 1.97(e) statement OR timing fee under § 1.97(c)
After the preceding window through the date of issue-fee payment	§ 1.97(e) statement AND timing fee under § 1.97(d)

The early windows operate as alternatives. An unusually early merits action does not eliminate an otherwise available three-month filing window. An RCE, however, supplies no new three-month period; counsel should normally submit the IDS with the RCE because the next action may issue quickly. U.S. Pat. & Trademark Off., Manual of Patent Examining Procedure § 609.04(b)(I) (9th ed., rev. 01.2024) [hereinafter MPEP].

Docket the actual procedural events. Paragraph (c) ends before the mailing date of the closing action, including an Ex parte Quayle action. Paragraph (d) remains available through the date on which the issue fee is paid, subject to its requirements; that date may precede the payment deadline. 37 C.F.R. § 1.97(c)–(d) (2026); MPEP § 609.04(b)(II)–(III). An IDS filed later on the payment date remains within the ordinary IDS procedure. A submission under the Quick Path Information Disclosure Statement (QPIDS) program on that date is premature. U.S. Pat. & Trademark Off., Frequently Asked Questions—QPIDS Program, question 12 (Jan. 19, 2025), https://www.uspto.gov/sites/default/files/documents/qpids_faq.pdf [hereinafter QPIDS FAQ].

Section 1.136 extensions are unavailable for IDS filing. The limited opportunity to cure inadvertently omitted content after a bona fide attempt does not create a general timing extension. 37 C.F.R. § 1.97(f) (2026); MPEP § 609.04(b)(VI).

IV Determining which certification is available

 

The two statements authorized by § 1.97(e) depend on different facts. Under paragraph (e)(1), each covered item must have been first cited in a foreign patent office communication in a counterpart foreign application within the preceding three months. Under paragraph (e)(2), no covered item may have been cited at any time in a foreign patent office communication in a counterpart foreign application. After reasonable inquiry, the signer must also know of no item known to any Rule 56 individual more than three months before filing the IDS. 37 C.F.R. § 1.97(e)(1)–(2) (2026).

For the foreign-office route, the communication’s date controls; where two dates appear, use its mailing date. Later receipt by counsel and a repeated citation do not restart the period. Earlier personal knowledge of a reference does not, by itself, defeat this route. A PCT application designating the United States is not a counterpart foreign application for this purpose. MPEP § 609.04(b)(V).

For the knowledge-based route, “I received it yesterday” is an incomplete answer. Counsel must make reasonable inquiry into the knowledge of the relevant individuals. Likewise, recognizing a reference’s significance today does not necessarily mean the reference first became known today. For example, if an inventor supplied R during preparation of X six months earlier, a new rejection in Y generally will not create a fresh knowledge period for R in X. See 37 C.F.R. § 1.97(e)(2) (2026); MPEP § 609.04(b)(V).

Mixed submissions require item-specific attention. An IDS may designate which items are covered by each permissible statement; a statement that is accurate for one group cannot support another group for which its conditions are absent. MPEP § 609.04(b)(V). Consider separately a newly issued Office action and an older underlying reference. Each item has its own history, and one cannot use the Office action’s recent date to make an inaccurate statement about R.

This distinction becomes decisive after allowance. If neither statement is available and no paragraph (b) window remains, the timing fee alone will not satisfy paragraph (d). For an eligible utility application, an RCE with the necessary submission and fee can reopen prosecution and permit consideration through the renewed examination process. See 37 C.F.R. §§ 1.97(d), 1.114 (2026); MPEP § 1308(I)(A).

V Accounting for the two IDS fees

 

The timing fee under § 1.17(p) currently equals $280 for an undiscounted applicant, $112 for a small entity, and $56 for a micro entity. The separate size fee under § 1.17(v) depends on the cumulative number of applicant-provided items in the particular application. It receives no small- or micro-entity discount. 37 C.F.R. § 1.17(p), (v) (2026).

Cumulative items	Size fee when the IDS crosses the threshold
50 or fewer	None
51–100	$200
101–200	$500 less applicable size fees previously paid
More than 200	$800 less applicable size fees previously paid

Source: 37 C.F.R. § 1.17(v) (2026).

The size fee is triggered when an IDS crosses a threshold; it is not charged again for every subsequent IDS within the same tier. Thus, moving from 48 items to 55 triggers $200. Moving from 95 to 110 requires an additional $300 if $200 was previously paid. These amounts are independent of any timing fee. See 37 C.F.R. §§ 1.17(v), 1.97(a) (2026).

The USPTO’s counting guidance makes portfolio discipline financially relevant. Counts are application-specific, an RCE does not reset the count, and duplicate applicant listings generally count again, subject to the exception for resubmission of an item previously unconsidered because of noncompliance. Information cited in a parent does not enter the child’s applicant-provided count unless the applicant resubmits it there. U.S. Pat. & Trademark Off., Quick Reference Guide to the Information Disclosure Statement (IDS) Size Fee and Size Fee Assertion 4, questions 11–13, https://www.uspto.gov/sites/default/files/documents/quick-reference-guide-to-the-information-disclosure-statement-ids.pdf (last visited Sept. 24, 2026) [hereinafter IDS Fee Guide].

The requirements apply to IDSs filed on or after January 19, 2025, including in older applications. Earlier applicant-provided items count toward the cumulative total, although a threshold crossed before that effective date does not itself generate a retroactive fee. Id. at 1, 4–5, questions 2, 4, 14–15. Suppose an application had 70 applicant-provided items before January 19, 2025, and a later IDS increases the total to 110. If no size fee was previously paid, the required payment is the full $500; no $200 credit is available. IDS Fee Guide, supra, at 8, ex. 8. Firms should therefore retain both the item count and payment history, rather than estimating the amount from the length of the current reference list.

VI Preparing a submission the examiner can consider

 

A timely IDS still must satisfy § 1.98. The submission needs a properly formatted reference list, identifying information appropriate to each document, and required copies. U.S. patents and published U.S. applications generally need not be supplied in copy form unless the Office requests them. Other copy exceptions should be checked against the rule rather than inferred from the examiner’s access to an electronic database. 37 C.F.R. § 1.98(a)–(d) (2026).

Non-English information generally requires a concise explanation of relevance as presently understood by the most knowledgeable covered individual. A separate concise explanation is unnecessary when a complete English translation accompanies the information. An English-language foreign search report or Office action indicating the reference’s relevance may also satisfy the explanation requirement. MPEP § 609.04(a)(III). An existing written English translation must be supplied if it is in a covered individual’s possession, custody, or control, or readily available to that individual. The rule does not categorically require commissioning a complete translation of every foreign-language reference. 37 C.F.R. § 1.98(a)(3) (2026).

Every IDS must include a clear written assertion that the applicable size fee accompanies it or that no size fee is required. This assertion is separate from the § 1.97(e) timing statement. A general authorization to charge a deposit account is insufficient unless it clearly identifies the particular applicable size fee. 37 C.F.R. § 1.98(a)(4) (2026); IDS Fee Guide, supra, at 2, questions 6–7.

After filing, review the examiner’s indication of consideration and resolve any items marked unconsidered. The filing receipt establishes receipt of the submission; the examiner’s treatment establishes what was considered. See MPEP § 609.05. That final check is particularly useful near allowance, when a content defect may require action before another procedural window closes.

VII References cited in another Company A application

 

Assess materiality and the relevant individuals in X

 

Return to Company A’s applications X and Y. Common ownership and similar subject matter justify a coordinated review, but neither makes every reference cited in Y material to X. Compare R’s teachings with X’s claims and the information already of record. A rejection in Y is evidence worth evaluating, not a substitute for that claim-specific analysis. See Dayco Prods., Inc. v. Total Containment, Inc., 329 F.3d 1358, 1366–67 (Fed. Cir. 2003).

Suppose Y concerns a calibration method while X claims a particular sensor structure. R’s calibration disclosure may add nothing material to X. If R also discloses the structural feature that Company A relied upon to distinguish X, the analysis changes. Counsel should examine the actual disclosure and the prosecution positions, rather than decide from the applications’ shared technology label. See 37 C.F.R. § 1.56(b) (2026).

Next identify who knows the information and whether that person falls within § 1.56(c) for X. Shared inventors, common prosecution counsel, and in-house personnel substantively involved in X are natural starting points. The rule does not simply impute every employee’s knowledge to every company application. Nevertheless, Company A should route relevant Office actions between responsible teams, including separate outside firms, so the individual duties can be discharged reliably. See 37 C.F.R. § 1.56(c) (2026); MPEP § 2001.06(b).

Evaluate the Office action as well as the reference

 

Y’s Office action may itself supply material information beyond R. In Dayco, the Federal Circuit distinguished the underlying reference from another examiner’s rejection of substantially similar claims and found the adverse decision material under Rule 56. The court also recognized that one examiner is not bound by another examiner’s interpretation. Dayco, 329 F.3d at 1367–69. The current MPEP specifically directs attention to conflicting examination of substantially similar claims. MPEP § 2004, item 9. Dayco informs the Rule 56 analysis of a conflicting examination decision; it does not displace the separate materiality and intent requirements governing an inequitable-conduct defense after Therasense. See Therasense, 649 F.3d at 1290–95.

Accordingly, R’s presence in X’s record does not end the inquiry. Evaluate the Office action independently, including any teaching, claim interpretation, or combination that undermines a position taken in X. When information in that action is known to a covered individual and is material and noncumulative under Rule 56 as applied to X, disclosure in X is required. 37 C.F.R. § 1.56(a)–(b) (2026). Identify Y itself when its relationship or subject matter is material. Do not assume that the same examiner’s handling of both applications establishes awareness of all relevant information in each record. See MPEP §§ 2001.06(b), 2004, item 9.

When submitting Y’s Office action for consideration in X, separately identify it on the IDS listing, ordinarily in the non-patent literature section, and provide the required legible copy. Listing only the underlying patent or application does not separately identify the prosecution document. See 37 C.F.R. § 1.98(a)(1)–(2), (d) (2026); MPEP § 609.04(a)(I)–(II).

There is a limited carryover practice for domestic parent applications. When X is a properly identified continuation, divisional, or continuation-in-part of Y, information already considered in Y ordinarily need not be listed again merely to obtain consideration in X. Information submitted but not considered in the parent requires different treatment. Common ownership or sibling status alone does not establish this parent-to-child exception. See MPEP § 609.02(II)(A)(2), (B)(2). Consideration and printing are separate: the applicant must list the parent references in X if it wants them printed on the resulting patent. MPEP § 2001.06(b). Relisting also adds those applicant-provided items to X’s size-fee count. IDS Fee Guide, supra, at 4, question 11.

Use the procedural posture and reference history of X

 

The filing route in X depends on X’s status. A recent U.S. Office action in Y does not itself support the foreign-office statement under § 1.97(e)(1). The knowledge-based statement may be available, but only after the required inquiry and satisfaction of its no-foreign-citation condition. See 37 C.F.R. § 1.97(c)–(e) (2026). The fact that R was newly cited against Y does not establish that R was newly known to the individuals responsible for X.

Assume X is beyond its paragraph (b) windows, has been allowed, and its issue fee remains unpaid. If R is material and the knowledge-based statement is supportable for all relevant items, submit a compliant IDS in X with that statement, the timing fee, the size-fee assertion, and any required size fee. If a covered inventor knew R six months earlier and neither certification applies, evaluate an RCE instead. See 37 C.F.R. §§ 1.97(a), (d)–(e), 1.98(a)(4), 1.114 (2026). Calculate any size fee from X’s count; submitting R in Y does not pay for submitting it in X. See id. § 1.17(v).

VIII Acting after the issue fee payment date

 

QPIDS becomes available on a date after the issue-fee payment date and before the patent’s issue date. It cannot be used on either of those dates. QPIDS FAQ, supra, question 12. For a compliant submission, QPIDS may permit consideration without processing an RCE if the examiner concludes that reopening is unnecessary. U.S. Pat. & Trademark Off., Quick Path Information Disclosure Statement (Jan. 19, 2025), https://www.uspto.gov/patents/initiatives/quick-path-information-disclosure-statement-qpids.

The QPIDS submission requires a separate transmittal identifying the request, a compliant IDS and § 1.97(e) statement, the timing fee, the size-fee assertion and applicable size fee, a web-based petition to withdraw from issue with its fee, and a conditional RCE with its fee. All QPIDS fees, including any applicable size fee, must be paid by authorization to charge a USPTO deposit account. QPIDS FAQ, supra, questions 2, 20, 24.

The current PTO/SB/09 provides the certification and request. An accompanying amendment causes automatic entry of the RCE. For a compliant QPIDS submission, if the information does not require reopening, the RCE is not processed and its fee is returned; if the information requires reopening, the RCE is processed and the timing fee is returned. U.S. Pat. & Trademark Off., PTO/SB/09, Certification and Request for Consideration of an Information Disclosure Statement Filed After Payment of the Issue Fee Under the QPIDS Program 1, items 8–9 (Jan. 2025), https://www.uspto.gov/sites/default/files/documents/sb0009.pdf.

Automatic RCE entry does not itself cure an IDS deficiency. PTO/SB/09 specifically warns that omission of the size-fee assertion or the authorization to charge an applicable size fee causes entry of the conditional RCE while the IDS remains unconsidered. Id. at 1, items 3–4. Counsel must distinguish reopening prompted by the information from RCE entry caused by a defective submission, correct any outstanding IDS deficiency, and confirm consideration.

QPIDS does not solve an inability to make a truthful § 1.97(e) statement. An ordinary withdrawal petition with a compliant RCE may be appropriate instead. Timing is critical: a petition does not withdraw the application from issue unless the appropriate officials receive and grant it before issuance. 37 C.F.R. § 1.313(c)(2), (d) (2026). Counsel must confirm the procedural result while time remains to act.

IX Separately evaluating patent term adjustment

 

The patent term adjustment safe harbor operates on a separate, nonextendable 30-day period. With the required statement, it protects IDS-only papers from reductions under § 1.704(c)(6), (8)–(10), and RCEs with IDS-only submissions from reductions under § 1.704(c)(12). Each item must be first cited in a qualifying patent-office communication, or be a qualifying communication itself; no covered Rule 56 individual may have received the relevant communication more than 30 days before the IDS filing. 37 C.F.R. § 1.704(d)(1)–(2) (2026).

Qualifying communications can come from the USPTO in another application, as well as a patent office in a counterpart foreign or international application. Thus, Y’s Office action may support PTA protection in X even though it cannot, by itself, support the foreign-office timing statement. An earlier qualifying communication citing the same information may defeat the 30-day route. MPEP § 2732(IV).

Use the unaltered PTO/SB/133 form and document code PTA.IDS with the IDS. The current rule makes these requirements mandatory. 37 C.F.R. § 1.704(d)(3) (2026). Meeting § 1.97’s three-month condition does not establish compliance with this 30-day safe harbor. Conversely, missing the safe harbor does not automatically establish a reduction; the applicable delay provisions and prosecution events must still be evaluated. See id. § 1.704(c)–(d).

The safe harbor addresses specified applicant-delay reductions; it does not eliminate every patent-term consequence of continued examination. An RCE may separately affect adjustment under the three-year-pendency provision through the exclusion of continued-examination time from RCE filing to mailing of the notice of allowance, even when the accompanying IDS qualifies for the safe harbor. 37 C.F.R. §§ 1.703(b)(1), 1.704(d) (2026).

For docketing, preserve the different trigger dates: the foreign communication date for § 1.97(e)(1), the relevant knowledge history for § 1.97(e)(2), and qualifying receipt dates for § 1.704(d). Combining them into a single “IDS due” entry invites an avoidable error.

X Building a dependable disclosure practice

 

Company A can implement these rules through a short, repeatable review at each Office action and before issue-fee payment. Route the communication to the teams handling potentially affected applications. Compare its references and reasoning with each application’s claims and record. Identify the covered individuals and preserve the dates supporting any certification. Then select the filing route, calculate both fees independently, complete the content and statement requirements, assess PTA separately, and confirm consideration.

The file should make the decision understandable: what information was reviewed, why it mattered to the claims, which procedural route was used, and what the examiner considered. This need not become an indiscriminate transfer of every document across the portfolio. The USPTO itself cautions against obscuring important information within lengthy lists of less relevant material. MPEP § 2004, item 13.

In the opening hypothetical, the useful response begins before Company A pays X’s issue fee. Y’s rejection prompts review of R, the Office action, and X’s record; the resulting disclosure then follows X’s procedural requirements. Prompt circulation and accurate reference histories preserve filing options that become more expensive or unavailable as prosecution approaches issuance.