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

Thu Sep 18 19:17:33 UTC 2025

I too have been contemplating these issues… along with whether to simply file the US patent publication rather than the foreign patent pub and then additionally citing the related US application for the English translation…

What has kept me from doing so thus far is record keeping and the fact that foreign associates like seeing the actual foreign patent pub being submitted because of their own record keeping as well.

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From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> On Behalf Of Timothy Snowden via Patentpractice
Sent: Thursday, September 18, 2025 9:23 AM
To: patentpractice at oppedahl-lists.com
Cc: Timothy Snowden <tdsnowden at outlook.com>
Subject: Re: [Patentpractice] Information Disclosure Statement (IDS) filings in Divisional or Continuation Applications

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

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