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

Fri Sep 19 05:56:45 UTC 2025

Jamie, in response to your inquiry, I use my own IDS form, which includes a section titled "Other Information" where the examiner can confirm compliance with MPEP 609.02.
[cid:321e5c93-ab92-4844-9d28-e69b764e6220]
I also include the following paragraph in the body of the IDS:
According to MPEP 609.02(I) and (II)(A)(2), any information previously reviewed in a parent application will automatically be considered in a continuing application. There is no need to resubmit this information. The “Other Information” table above includes an item for information from parent patent applications. Applicant requests that the Examiner initial the space next to this item to confirm that all information considered in the parent patent application(s) has been considered as part of evaluating this application.
Examiners occasionally cross out this line due to the absence of a publisher name, title, date, etc. However, I can typically resolve this by calling them, explaining that this information is not required, and resubmitting the IDS for consideration.

Timothy, in response to your question, my notes from MPEP 609.03, which I compiled when the IDS fee was introduced in January, state that the examiner is required to consider certain items from the international phase but can disregard others. Additionally, the examiner is not required to provide any record indicating that the information was considered.

The examiner is required to consider:
i. International search report (including supplementary ISR) and written opinion as long as form PCT/DO/EO/903 (issued by USPTO) says copies are in the file (usually the case).
ii. US references even if they are not in the file.
iii. Non-US references in English that form PCT/DO/EO/903 says are in the file.

The examiner is not required to consider:
i. IPEA documents including any newly cited references, written opinion of IPEA, IPRP, etc.
ii. Non-English references
iii. Non-US references in English but not listed on form PCT/DO/EO/903

If there are any items in the international phase that the examiner is not required to consider, then you must file an IDS. However, if there are only items the examiner must consider, then I have another line in my "Other Information" table that says:
[cid:6f5cb42c-4a98-451e-93a1-ff40b5d42cc5]
I also include the following paragraph in the body of the IDS:

According to MPEP 609.03 and 1893.03(g), the examiner must consider the following information identified during the international phase without requiring any further action from the applicant:
1. All U.S. patents identified in the international search report and written opinion (ISRWO) and/or any supplemental international search report and written opinion (SISRWO).
2. All U.S. patent application publications identified in the ISRWO and/or SISRWO.
3. All U.S. unpublished pending applications identified in the ISRWO and/or SISRWO.
4. Any of the following items identified in the national phase acceptance letter (Form PCT/DO/EO/903) as being present in the file: (i) the ISRWO, (ii) any SISRWO, and/or (iii) any other documents cited in the ISRWO or SISRWO.
The "Other Information" table above includes an item for information from the international phase. Applicant requests that the Examiner initial the space next to this item to confirm that the above information from the international phase has been considered as part of evaluating this application.

Scott Nielson

801-660-4400

________________________________
From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> on behalf of Timothy Snowden via Patentpractice <patentpractice at oppedahl-lists.com>
Sent: Thursday, September 18, 2025 7:23 AM
To: patentpractice at oppedahl-lists.com <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

14143 Denver West Parkway, Suite 100 | Golden, CO 80401 | T: 303-953-9083 x101 | F: 720-548-9810

jsheridan at sheridanlaw.com<mailto: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/20250919/9a9b1aa5/attachment.html>
-------------- next part --------------
A non-text attachment was scrubbed...
Name: image001.png
Type: image/png
Size: 224173 bytes
Desc: image001.png
URL: <http://oppedahl-lists.com/pipermail/patentpractice_oppedahl-lists.com/attachments/20250919/9a9b1aa5/attachment.png>
-------------- next part --------------
A non-text attachment was scrubbed...
Name: image.png
Type: image/png
Size: 24876 bytes
Desc: image.png
URL: <http://oppedahl-lists.com/pipermail/patentpractice_oppedahl-lists.com/attachments/20250919/9a9b1aa5/attachment-0001.png>
-------------- next part --------------
A non-text attachment was scrubbed...
Name: image.png
Type: image/png
Size: 25098 bytes
Desc: image.png
URL: <http://oppedahl-lists.com/pipermail/patentpractice_oppedahl-lists.com/attachments/20250919/9a9b1aa5/attachment-0002.png>