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

Fri Sep 19 18:00:33 UTC 2025

Scott - Thanks.  I will update my own forms, accordingly.  Rick

On Fri, Sep 19, 2025 at 2:04 AM Carl Oppedahl via Patentpractice <
patentpractice at oppedahl-lists.com> wrote:

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