The USPTO Citation List and eIDS BETA
Executive Summary: The USPTO’s Citation List/eIDS BETA can simplify information disclosure statement (IDS) preparation by collecting citations across international patent families, supporting customized reference selections, and generating editable IDS PDFs. Effective use requires reconciling those references with the U.S. application record, verifying citation details, obtaining required supporting documents and English-language materials, and evaluating applicable timing statements and fees before filing through Patent Center. The IDS size-fee rules make accurate tracking especially important because duplicate listings generally count toward cumulative thresholds, and submissions under 37 C.F.R. § 1.97 require a size-fee assertion even when no fee is due. Incorporating the tool into a prosecution workflow with attorney review and confirmation of examiner consideration can reduce repetitive administrative work, limit transcription errors, and help avoid unnecessary fees while supporting compliance with the duty of disclosure.
Introduction
The USPTO’s Citation List/eIDS BETA can reduce the work of collecting reference citations and preparing an information disclosure statement (IDS). Its documented functionality allows users to generate an editable IDS PDF from citation data. The resulting form still requires review, completion, and submission under the governing disclosure rules. For firms managing international patent families, the practical opportunity is to reduce repeated citation entry while maintaining a reliable record of what has been submitted and considered in each U.S. application. See Nelson Yang, U.S. Pat. & Trademark Off., Global Dossier 2024, slide 18 (2024), https://www.japio.or.jp/english/fair/files/2024/2024e04.pdf [hereinafter Global Dossier 2024]; 37 C.F.R. §§ 1.97–1.98 (2026).
I The Disclosure Challenge in International Patent Families
Consider a patent family with pending applications in the United States, Europe, Japan, Korea, and China. A foreign search report identifies several patent publications; a later examination report adds a journal article; another office cites a publication already disclosed in the United States. Before preparing the next U.S. IDS, counsel needs to identify the additional information, check the U.S. record, obtain any required copies, and determine the applicable filing requirements. The challenge includes both collecting information and keeping its procedural history straight.
The duty of disclosure supplies the legal reason for this work. Individuals associated with filing and prosecution must disclose information known to them to be material to patentability. Materiality under the rule depends on the information’s substance and its relationship to pending claims and positions taken before the Office. The MPEP specifically addresses material information arising in related foreign applications. 37 C.F.R. § 1.56(a)–(c) (2026); U.S. Pat. & Trademark Off., Manual of Patent Examining Procedure § 2001.06(a) (9th ed., rev. 01.2024, Nov. 2024) [hereinafter MPEP].
II What Citation List and eIDS BETA Provides
Citation List is part of Global Dossier, the USPTO service providing access to available application-family and prosecution information from participating patent offices. The service includes the IP5 offices and information from additional offices through WIPO CASE. This shared access helps practitioners review related prosecution without separately reconstructing every file history. See U.S. Pat. & Trademark Off., Global Dossier, https://www.uspto.gov/patents/basics/international-protection/global-dossier-initiative (last visited Nov. 5, 2026); MPEP § 1730.
The USPTO announced the citation-list beta on September 18, 2017, describing a single view of references cited in related applications sharing a common priority claim. Its 2024 training materials demonstrate the additional ability to generate editable IDS forms. The beta therefore has a documented history extending well before the current IDS size-fee rules. See U.S. Pat. & Trademark Off., Global Dossier—Citation List Now Available (Sept. 18, 2017), https://content.govdelivery.com/accounts/USPTO/bulletins/1b7c640; Global Dossier 2024, slides 18–24.
The distinction between preparation and filing matters. Global Dossier’s export produces a document for further work. Electronic IDS submission through Patent Center is a separate filing process. Counsel needs to complete the submission and satisfy the applicable content, timing, signature, and fee requirements. See MPEP § 609.07; 37 C.F.R. §§ 1.4(d), 1.33(b), 1.97–1.98 (2026).
III From Patent Family to Editable IDS
The documented process begins by retrieving a published application, reviewing its family, and opening the citation list. Users can identify the applications citing a reference. For export, the USPTO describes three choices: citations from the simple patent family; citations filtered by selected offices; or a customized eIDS collection. The collection can temporarily hold selected citations from multiple patent families. The user can then generate and download an editable PDF. See Global Dossier 2024, slides 13–24.
That flexibility supports several preparation tasks. A practitioner handling a recent foreign report can use a focused selection, while a practitioner reviewing a larger portfolio can assemble a broader working list. In either case, the selection is a starting point for review. It needs to be reconciled with the source documents and the particular U.S. application’s record before filing.
A useful review identifies the source of each reference, verifies its bibliographic information, and records whether the item was previously submitted and considered. Removing a duplicate listing requires confirming that it is the same document and that its earlier treatment was adequate. A different publication number, kind code, or document version can warrant separate evaluation. The required identifying information varies by document type. See 37 C.F.R. § 1.98(b)(1)–(5) (2026).
IV Reviewing the Disclosure Record and Supporting Documents
A citation appearing in Global Dossier does not, by itself, establish consideration in the pending U.S. application. Rule 1.56(a) ties satisfaction of the disclosure duty to material information cited by the Office or submitted in the prescribed manner. Counsel also needs to evaluate material information beyond the exported patent list, including relevant foreign communications and nonpatent literature. See 37 C.F.R. § 1.56(a); MPEP § 2001.06(a).
The supporting documents remain important. Section 1.98 generally requires legible copies of foreign patent documents, nonpatent publications, and other listed information, subject to applicable exceptions. Copies of U.S. patents and published U.S. applications ordinarily are unnecessary unless the Office requires them. The provision allowing certain copies to be omitted based on a qualifying earlier application has its own conditions; availability elsewhere in a family is insufficient by itself. 37 C.F.R. § 1.98(a)(2), (c)–(d).
For non-English information, the submission generally requires a concise explanation of relevance and any qualifying written English translation available to a person covered by the rule. A complete English translation can satisfy the explanation requirement. An English version of a foreign search report identifying relevance may also suffice in appropriate circumstances. Merely locating an English-language family member does not resolve every translation or disclosure question. See 37 C.F.R. § 1.98(a)(3); MPEP § 609.04(a), subsec. III.
Existing rules governing references considered in a parent application or cited in a PCT international search report can also affect what a particular filing requires. Those provisions deserve attention before mechanically resubmitting an entire family’s citations. See MPEP §§ 609.02–609.03.
V Applying the Timing Rules
The filing stage determines whether a timing statement, timing fee, or additional procedural action is needed. Under § 1.97(b), qualifying early submissions—including an IDS filed within three months of a national application’s filing or before the first action on the merits—require neither the timing statement nor timing fee. After that period, § 1.97(c) generally requires either the statement or fee before final action, allowance, or another action closing prosecution. At the later stage governed by § 1.97(d), both are required, and filing must occur on or before payment of the issue fee. Applicable size fees remain separate. 37 C.F.R. § 1.97(a)–(d).
The certification also needs independent review. Section 1.97(e)(1) addresses information first cited in a qualifying foreign-office communication within the preceding three months. Section 1.97(e)(2) addresses information not cited in such a communication and requires reasonable inquiry concerning when covered individuals knew of it. A recently downloaded list establishes neither predicate. 37 C.F.R. § 1.97(e).
For the foreign-communication statement, the MPEP measures the period from the communication’s date, using its mailing date if two dates appear. Later receipt or retrieval does not restart that period. The MPEP also distinguishes a PCT application designating the United States from a counterpart foreign application for this purpose. The IDS safe harbor for certain patent-term-adjustment reductions has a separate statement requirement under § 1.704(d). See MPEP § 609.04(b), subsec. V; 37 C.F.R. § 1.704(d) (2026).
VI Accounting for Size Fees and Current Forms
The size-fee rules make accurate reconciliation financially significant. For IDS submissions under § 1.97 filed on or after January 19, 2025, the applicant must provide a clear written assertion that the applicable size fee accompanies the submission or that no size fee is required. This assertion is required even for a small IDS that incurs no size fee. See 37 C.F.R. § 1.98(a)(4); U.S. Pat. & Trademark Off., Quick Reference Guide to the Information Disclosure Statement (IDS) Size Fee and Size Fee Assertion, questions 2–3, https://www.uspto.gov/sites/default/files/documents/quick-reference-guide-to-the-information-disclosure-statement-ids.pdf (last visited Nov. 5, 2026) [hereinafter IDS Size Fee Guide].
The current size-fee schedule applies when a submission causes the cumulative applicant-provided count to cross a threshold. The higher tiers credit previously paid size fees. 37 C.F.R. § 1.17(v)(1)–(3) (2026).
Cumulative count when a threshold is crossed | Applicable size fee |
More than 50 through 100 items | $200 |
More than 100 through 200 items | $500 less applicable size fees previously paid |
More than 200 items | $800 less applicable size fees previously paid |
There is no small- or micro-entity discount for these size fees. The separate timing fee, when required, is $280 for a large entity, $112 for a small entity, and $56 for a micro entity. See U.S. Pat. & Trademark Off., USPTO Fee Schedule, miscellaneous patent fees, https://www.uspto.gov/learning-and-resources/fees-and-payment/uspto-fee-schedule (last visited Nov. 5, 2026); 37 C.F.R. § 1.17(p), (v).
The count generally includes each instance of an applicant-provided item, including repeat listings across IDS submissions. The final rule provides an exception for a particular item resubmitted after it was not considered because it was noncompliant. The count is therefore a record of submissions, rather than simply the number of distinct references. See Setting and Adjusting Patent Fees During Fiscal Year 2025, 89 Fed. Reg. 91,898, 91,924 (Nov. 20, 2024).
For each application, counsel needs to track its own count. A new continuing application starts at zero, while an RCE does not reset the existing count. Earlier submissions also remain relevant when determining whether a later filing crosses a threshold, including in applications pending before the fee rules took effect. IDS Size Fee Guide, questions 11–14.
The form also needs to match current requirements. The USPTO’s forms page identifies the March 2026 SB/08–Patent Center auto-load form as its recommended version and explains that it includes size-fee information and the written assertion. SB/08c supplies an alternative assertion form for use with an appropriate citation list. A PDF generated through the beta needs to be checked for these elements before submission. See U.S. Pat. & Trademark Off., Forms for Patent Applications, “Information Disclosure Statement,” https://www.uspto.gov/patents/apply/forms (last visited Nov. 5, 2026); IDS Size Fee Guide, question 8.
VII A Supplemental IDS Example
Assume a U.S. application has a cumulative applicant-provided count of 40 items. A Global Dossier review identifies 20 candidate references. Twelve are the same documents already properly submitted and considered in that application; eight are additional references that counsel determines warrant disclosure.
After verifying the record, counsel prepares a supplemental IDS listing the eight additional items. The cumulative count becomes 48, so no size fee is due. The submission still requires the no-fee assertion and any applicable timing statement, timing fee, and supporting documents. If counsel instead resubmits all 20 items, the count ordinarily becomes 60, crossing the first threshold and requiring a $200 size fee. See 37 C.F.R. §§ 1.17(v)(1), 1.98(a)(4); IDS Size Fee Guide, question 12.
The example assumes the twelve earlier references were properly considered and require no correction. If an earlier submission was deficient, counsel must resolve that deficiency rather than simply remove the reference from the working list. Reconciliation can prevent unnecessary fees, but the disclosure record controls the filing decision.
VIII Incorporating the Tool Into Prosecution Practice
A practical division of work assigns citation collection, document retrieval, and bibliographic checks to trained prosecution staff, followed by attorney review of materiality, certifications, and filing strategy. The working log can identify each document, its source, the relevant communication and knowledge dates, and its status in each U.S. application. Keeping those fields together makes later IDS preparation easier to audit and reduces reliance on recollection.
After filing, the firm can retain the exact submitted package and receipt, update the cumulative count, and review the returned IDS for indications of consideration. A receipt confirms submission; subsequent examiner treatment supplies a different part of the record. See MPEP § 609.05(b).
Because the interface and exported forms can change, a firm adopting the beta can first validate the current download against a public patent family and its own filing procedures. That review can check selection behavior, exported fields, current form requirements, and how temporary selections are retained. The documented design suggests the greatest benefit where repeated citation entry consumes substantial staff time. Each firm can assess that benefit through preparation time, transcription corrections, and the effort required for final review.
Citation List/eIDS BETA fits best into a process that connects foreign prosecution information to the U.S. disclosure record. Its preparation functions can reduce administrative work, while source verification, timely filing, accurate assertions, and follow-up on examiner consideration preserve the value of the resulting submission.
