[Patentpractice] Information Disclosure Statement (IDS) filings in Divisional or Continuation Applications
Carl Oppedahl
carl at oppedahl.com
Fri Sep 19 06:03:23 UTC 2025
I never thought of this. This is smart. Thank you for posting.
On 9/18/2025 10:56 PM, Scott Nielson via Patentpractice wrote:
> 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.
> 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:
> 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
>
>
>
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