[Patentpractice] Information Disclosure Statement (IDS) filings in Divisional or Continuation Applications

[Timothy Snowden]

Which also brings a tangential question: when entering national stage, I 
normally file an IDS citing all art known (including from the ISR and/or 
IPRP) from the international application. However, technically, these 
are the 'same' application -- I've had some applicants push back on 
this. Does anybody have any insight on whether it's /required /(assume 
the benefits have been explained to the applicant, and they don't care 
whether it's listed on the front of the application as being 
considered)? Based on my reading of things, I think the answer is no, 
because the USPTO is 'inheriting' the entire file wrapper from the IB, 
including the ISR/IPEA documents and it's the same application. I'm 
mainly looking whether there's some wrinkle of US law that I haven't 
considered that might change this analysis.

Jamie, I normally file an IDS with all the prior art. I would also be 
interested if anybody has had success getting examiners to acknowledge 
prior art from parent applications without doing so.

On 9/17/2025 8:45 PM, Jamie Sheridan via Patentpractice wrote:
> Listserv Members -
>
> With the new fees for the filing of an Information Disclosure 
> Statement (IDS) and previous guidance in the MPEP regarding prior art 
> submissions, please let me know if anyone is taking steps to alert the 
> patent examiner that the application contains prior art references in 
> a parent application. If so, can you share a copy of the filing 
> template to alert the patent examiner?
>
> Alternatively, in order to have the prior art listed on the patent, 
> Applicants could continue to file IDS in every application. This will 
> incur additional costs (time to prepare the IDS and USPTO fees). 
> However, this seems like the prudent manner to fully ensure that the 
> patent examiner has reviewed the prior art in each application (short 
> of some sort of an acknowledgement by the examiner that all of the 
> parent application prior art has been considered.) I’m just not 
> certain how to get the examiner’s acknowledgement of review of all 
> previously cited prior art in one or more parent application.
>
> Thoughts? Suggestions?
>
> Thank you.
>
> All the best,
>
> -- Jamie
>
> James A. Sheridan | Registered Patent Attorney | Member Manager | 
> Sheridan Law LLC
>
> 14143 Denver West Parkway, Suite 100 | Golden, CO 80401 | T: 
> 303-953-9083 x101 | F: 720-548-9810
>
> _jsheridan at sheridanlaw.com_ | _www.sheridanlaw.com 
> <http://www.sheridanlaw.com>_ | Connect on LinkedIn: 
> _www.linkedin.com/in/jamiesheridan 
> <http://www.linkedin.com/in/jamiesheridan>_
>
> signature_2050086367
>
>
-------------- next part --------------
An HTML attachment was scrubbed...
URL: <http://oppedahl-lists.com/pipermail/patentpractice_oppedahl-lists.com/attachments/20250918/b9f82d4c/attachment.html>
-------------- next part --------------
A non-text attachment was scrubbed...
Name: image001.png
Type: image/png
Size: 224173 bytes
Desc: not available
URL: <http://oppedahl-lists.com/pipermail/patentpractice_oppedahl-lists.com/attachments/20250918/b9f82d4c/attachment.png>