[Pct] IDS in a US National Phase Application

[Susan Piperno]

Dear Knowledgeable Community,

We have a client who would like to avoid unnecessary patent prosecution expenses (who doesn't) and the question arose as to the need to file an IDS for a US National Phase of a PCT application filed with the US as both the Receiving Office and the International Searching Authority.

According to the MPEP, 609.03 Information Disclosure Statements in National Stage Applications [R-07.2022]
When examining a PCT national stage application, the examiner will consider all U.S. patents, U.S. patent application publications, and U.S. pending applications cited in the international search report that are stored electronically in the USPTO's Image File Wrapper (IFW) system. The examiner will consider other documents cited in the international search report when the Form PCT/DO/EO/903 in the national stage application indicates that both the international search report and the copies of the documents are present in the national stage file. In such a case, the examiner should consider the documents from the international search report and indicate by a statement in the first Office action that the information has been considered. There is no requirement that the examiner list the documents on a PTO-892 form and there is no requirement for the applicant to provide a separate listing of the references. However, the citations will not be printed on the face of the patent unless listed on a list that lends itself to easy capture of the necessary information by the Office printing contractor. See MPEP § 609.06.

The PCT Search Report identifies 6 Non-Patent Literature references and 1 US published application.  It is my understanding that it would NOT be necessary to file an IDS to cite the US Published application BUT since the PCT/DO/EO/903 (aka 371 Acceptance Notice) does list the International Search Report but does not list the NPL references (see snippet below), an IDS IS required....am I correct to advise the client that an IDS is required?

[cid:image003.png at 01DA1C69.560E4310]
Thank you in advance!

Kind regards,
Susan

Susan Piperno
Patent Paralegal
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