Information Disclosure Statement (IDS): Duty of Disclosure, Timing, Fees and Form SB/08

Each individual "associated with the filing and prosecution of a patent application has a duty of candor and good faith in dealing with the Office, which includes a duty to disclose to the Office all information known to that individual to be material to patentability." The rule names who that is:

• each inventor named in the application;
• each attorney or agent who prepares or prosecutes it; and
• every other person substantively involved in preparing or prosecuting it who is associated with the inventor, the applicant, an assignee, or anyone to whom there is an obligation to assign.

Others may comply by telling the attorney, agent or inventor. The duty lasts for each pending claim until it is cancelled or withdrawn, or the application is abandoned.

What is material. Information is material when it is not cumulative of what is already of record and it either establishes a prima facie case that a claim is unpatentable, or refutes or is inconsistent with a position the applicant takes on patentability (§ 1.56(b)). The duty is "deemed to be satisfied" if all known material information was cited by the Office or submitted in an IDS that complies with §§ 1.97(b)-(d) and 1.98. But "no patent will be granted" where fraud on the Office was practiced or attempted, or the duty was violated through bad faith or intentional misconduct.

Material information can come from foreign counterparts’ search reports (§ 1.56(a)) and, per the MPEP, related U.S. applications, litigation and PTAB trials, and regulatory submissions such as those to the FDA. In close cases, the MPEP says, applicants "should consider submitting" it. Filing an IDS is not a representation that a search was made, nor an admission that anything listed is material (§ 1.97(g)-(h)).

Sources: 37 C.F.R. § 1.56; 37 C.F.R. § 1.97(g)-(h); MPEP § 609; MPEP §§ 2001.05-2001.06(e).

• The applicant files it. Third parties cannot; they may use a preissuance submission under 37 C.F.R. § 1.290 or a protest under § 1.291, or give the information to the applicant.
• Nonprovisional, national stage and reissue applications take an IDS. Provisional applications do not; an IDS filed in one will be returned or destroyed.
• Signature. The IDS must be signed under 37 C.F.R. § 1.33(b). Since July 20, 2026, where at least one applicant or patent owner is domiciled outside the United States and its territories, a registered patent practitioner must represent them, and papers including information disclosure statements are not entered unless a registered practitioner signs them.

Sources: MPEP § 609; Required Use by Foreign Applicants and Patent Owners of a Patent Practitioner, 91 FR 13510 (Mar. 20, 2026), effective July 20, 2026.

File early and an IDS costs nothing; file late and it needs a statement, a fee, or both.

For continuations, divisionals and CIPs, the three months run from the actual filing date. A restriction requirement alone is not an action on the merits. A notice of appeal closes prosecution, so a later IDS must meet § 1.97(d). No extensions of time are available (§ 1.97(f)).

After the issue fee, the IDS is not considered unless the application is withdrawn from issue under 37 C.F.R. § 1.313(c) for an RCE or a continuing application, or the USPTO’s Quick Path IDS program (QPIDS), now "fully implemented on a permanent basis," is used: the examiner considers the IDS without an RCE being processed and, if nothing requires reopening prosecution, issues a corrected notice of allowability.

Sources: 37 C.F.R. § 1.97; MPEP § 609.04(b); USPTO, Quick Path Information Disclosure Statement (QPIDS).

A statement under § 1.97(e) must say one of two things:

1. that each item in the IDS was first cited in any communication from a foreign patent office in a counterpart foreign application not more than three months before the IDS is filed; or
2. that no item was cited in a communication from a foreign patent office in a counterpart foreign application, and, to the signer’s knowledge after reasonable inquiry, no item was known to any individual with the duty of disclosure more than three months before the IDS is filed.

The three months run from the date on the foreign office’s communication, not the date anyone received it, and an item first cited a year earlier does not qualify because another office cites it again. A PCT application is not a "counterpart foreign application" here, and the second statement cannot be made for an item naming one of the application’s inventors as an inventor.

The choice matters under § 1.97(c): if the fee is paid, a new rejection based on the IDS may be made final even on unamended claims; with a statement, it may not.

Sources: 37 C.F.R. § 1.97(c)-(e); 37 C.F.R. § 1.17(p); USPTO fee schedule; MPEP § 609.04(b)(II), (V).

Every IDS must include four things under § 1.98(a):

1. A list of everything submitted, with U.S. patents and U.S. patent application publications in a section separate from other documents. Each page must show the application number, a column for the examiner’s initials next to each document, and a heading that identifies it as an information disclosure statement.
2. Legible copies of each foreign patent, each publication (or the relevant portion), each cited pending unpublished U.S. application (specification, claims and drawings, or the relevant portion; the MPEP excuses this when the application is stored in the USPTO’s Image File Wrapper system) and all other information listed. Copies of U.S. patents and U.S. application publications are not required unless the Office asks.
3. For non-English items, a concise explanation of relevance and a copy of any written English translation that is in the possession of, or readily available to, anyone with the duty of disclosure.
4. A size fee assertion: a clear written assertion that the IDS is accompanied by the applicable size fee under § 1.17(v), or that no size fee is required (see the next section).

Section 1.98(b) sets how each item is identified (for a U.S. patent: inventor, number and issue date; for a foreign document: office, number and publication date; for other publications: publisher, author, title, relevant pages, date and place). For substantively cumulative references, one copy may be sent with a statement that the others are cumulative (§ 1.98(c)).

Form PTO/SB/08 is optional, but the MPEP encourages it because the Office keeps it current. The USPTO recommends the Patent Center version, which includes the size fee assertion; Form SB/08c is the assertion alone.

Continuing applications and RCEs. The examiner of a continuation, divisional or CIP considers what was considered in the parent (unless the parent was an international application), so relist those items only if you want them printed on the patent; anything submitted but never considered must be resubmitted. After an RCE, considered information stays in the file. Copies need not be resent if the parent is identified, relied on under 35 U.S.C. § 120, and its IDS complied with § 1.98(a)-(c) (§ 1.98(d)).

Sources: 37 C.F.R. § 1.98; MPEP §§ 609, 609.02, 609.04(a); USPTO patent forms (SB/08, SB/08c).

The USPTO’s fiscal 2025 fee rule added a fee for large disclosures. It is based on the cumulative number of items the applicant has listed on IDSs during the application’s pendency:

The fee schedule lists the same amounts for large, small and micro entities. In practice:

• Every listing counts, even a duplicate, except an item resubmitted after the examiner refused it as non-compliant.
• The count is per application. It restarts at zero in a continuing application, CPA, reissue or post-issuance proceeding, but not after an RCE. Parent items count in a child only if you list them again.
• The assertion should name the paragraph of § 1.17(v) that applies (for example, "the fee due under 1.17(v)(2)") or say no size fee is due. A general authorization to charge "any applicable IDS size fee" to a deposit account does not comply.
• Getting it wrong costs the date. An IDS without the assertion or fee is not considered; a corrected IDS takes its own filing date for the timing tiers.

The USPTO encourages applicants who file a large IDS to highlight the documents of most significance. MPEP Rev. 01.2024 is current only to January 31, 2024, so its text of §§ 1.97 and 1.98 lacks the size fee; the eCFR has it.

Sources: 37 C.F.R. § 1.17(v); 37 C.F.R. § 1.97(a); 37 C.F.R. § 1.98(a)(4); Setting and Adjusting Patent Fees During Fiscal Year 2025, 89 FR 91898 (Nov. 20, 2024), § 6; USPTO fee schedule; MPEP (Rev. 01.2024) currency note.

• A concise explanation is required only for non-English items. It may point to a relevant figure or paragraph. A complete English translation removes the need for one, and the translation need not be verified (the MPEP says this includes "reliable machine translations").
• Accepted substitutes: an English-language equivalent application that is in fact a translation, listed and identified as such; an English abstract, such as one from a foreign patent office; or an English-language version of a counterpart’s foreign search report or action showing the relevance found, even just an "X," "Y" or "A."
• Existing translations must be sent. Any written English translation that anyone with the duty has, or can readily get, must be included (§ 1.98(a)(3)(ii)). None has to be prepared.
• Do not steer the examiner away. The MPEP cites Semiconductor Energy Laboratory v. Samsung (Fed. Cir. 2000): the duty of candor "does not require that the applicant translate every foreign reference, but only that the applicant refrain from submitting partial translations and concise explanations that it knows will misdirect the examiner’s attention."

Sources: 37 C.F.R. § 1.98(a)(3); MPEP § 609.04(a); MPEP § 2001.06(a).

Inequitable conduct is a defense to infringement that, if proven, renders the patent unenforceable. In Therasense, Inc. v. Becton, Dickinson & Co., 649 F.3d 1276 (Fed. Cir. 2011) (en banc), the Federal Circuit tightened the standard to "reduce the number of inequitable conduct cases" and the "overdisclosure of marginally relevant prior art to the PTO." The accused infringer must prove both elements:

• But-for materiality. Withheld prior art is material "if the PTO would not have allowed a claim had it been aware of the undisclosed prior art," judged by a preponderance of the evidence with claims given their broadest reasonable construction. The exception is "affirmative egregious misconduct," such as an unmistakably false affidavit; mere nondisclosure is not.
• Specific intent to deceive, by clear and convincing evidence that the applicant "knew of the reference, knew that it was material, and made a deliberate decision to withhold it." The intent to deceive "must be the single most reasonable inference able to be drawn from the evidence."

The standard still bites: in Belcher Pharmaceuticals v. Hospira (Fed. Cir. 2021), the court affirmed unenforceability where the chief science officer withheld information on prior epinephrine products while arguing to the examiner that the claimed pH range was critical.

The USPTO’s rule is broader. The Office says the Federal Circuit "uses an even higher standard for materiality" than § 1.56(b). It proposed adopting the but-for standard in 2011 and again in 2016, but § 1.56 has not been amended since 2012. Neither standard requires clearly irrelevant or marginally relevant information. In our view the practical lesson is to disclose what is close and not bury the important documents.

Sources: Belcher Pharmaceuticals, LLC v. Hospira, Inc., No. 2020-1799 (Fed. Cir. Sept. 1, 2021) (quoting Therasense, 649 F.3d at 1285, 1290-92); Revision of the Duty To Disclose Information, 81 FR 74987 (proposed Oct. 28, 2016) (quoting Therasense, 649 F.3d at 1291-93); 89 FR 91898, § 6 (Nov. 20, 2024); 37 C.F.R. § 1.56 and its amendment history. The last sentence is our own view, not legal advice.

1. Leaving out the size fee assertion, or relying on a general deposit account authorization. The IDS is not considered, and the corrected one takes a later date.
2. Missing the free window, then finding the § 1.97(e) statement unavailable because the item was known for more than three months.
3. Assuming the § 1.97(e) statement protects patent term. It does not replace the 30-day statement under 37 C.F.R. § 1.704(d) (Form PTO/SB/133); without it, an IDS filed after a reply or after allowance can reduce patent term adjustment.
4. Forgetting related matters: foreign counterparts, other U.S. applications of the same inventors or assignee that disclose similar subject matter, and litigation or PTAB trials.
5. Filing after the issue fee without QPIDS or withdrawal from issue.
6. Copying another application’s SB/08 or PTO-892, with its examiner’s initials, instead of preparing a fresh list (the MPEP strongly discourages it).

Sources: 37 C.F.R. §§ 1.97, 1.98, 1.704(c)-(d); MPEP §§ 609.02, 609.04(a)-(b); MPEP §§ 2001.06(a)-(c); 89 FR 91898, § 6. More on prosecution, and the latest Federal Circuit decisions on each patentability requirement, is on our patent prosecution hub.