This module allows you to quickly check if you need to file an additional IDS on your US application. For each published U.S. application, this module analyzes citations already known to the U.S. office (by automatically importing patents from previously filed IDS, office actions, etc.) and compares them with citations from all members of the patent family. It will help you automatically detect prior art that may have been cited to the USPTO and, if necessary, generate the IDS to comply with US patent regulations.
The IDS analyzer has three major objectives and allows to:
- Verify if prior art cited in other family members' procedures have already been correctly submitted to the USPTO.
- Verify and monitor the interest in submitting new prior art by providing access to patent descriptions
- Facilitate the generation of a new IDS by pre-filling the IDS Generator fields.
This module is accessible for each US patent and the analysis can only be launched when the patent is published.
Module Description:
The module is split into 5 parts:
- List of cited prior art for USxx/xxx,xxx
This section lists all the patents and NPLs (Non Patent Literature) that are cited in the US prosecution. These patents (or foreign equivalents) and NPLs are not intended to be resubmitted to the USPTO. Links to the official documents are available to simply check if all citations are correctly listed.
It is also possible to manually add one or more missing citations if needed.
- List of prior arts cited by USxx/xxx,xxx family members
This part lists all the family members of the studied US patent (based on the FAMPAT structure).
For each member, the system lists the patents and NPLs (Non Patent Literature) that have been cited in their respective prosecutions. If these patents (or foreign equivalents) or NPLs have not yet been cited with the USPTO, they should be checked to evaluate the relevance of adding them in a new IDS.
The "status" column indicates whether the citation has already been cited or not. If the citation is not relevant, simply deselect it and it will not be added to the new IDS suggestion.
A link to the description is available by clicking on the number.
It is also possible to manually add one or more missing citations. This will relaunch the analysis.
- List of prior arts cited in related matter families
If a family is technically very close to the US studied patent (for example with a common priority), it may be interesting to add it and to also analyze their citations. The system will then list all the citations of all the members of the "related family". These citations will also be analyzed.
In the same way as before, it is possible to view all citations by clicking on the number and deselect it if it is not relevant. It will then be removed from the IDS suggestion.
In case of common priority, the system can automatically make one or more related families suggestions.
- List of other prior art
Independently, this section allows you to add prior art (patent or NPL). These citations will also be taken into account during the analysis.
For example, if you are aware of patents or documents relevant to this invention, you can check if they have already been cited in other related prosecution easily.
It is possible to add manually or via a csv file your prior art (templates are attached to this article).
- New IDS suggestion: 3 patent(s) and 2 NPL (on the right)
Based on the citations known by the USPTO and the citations from the different family members (+ those from related families and those added manually in the "List of other prior art" section), the system lists the citations unknown to the USPTO and suggests the creation of a new IDS.
It is possible to view the descriptions by clicking on the number and to remove them if necessary.
The "Generate report" button allows you to export in csv format all the citations.
The button "Generate IDS " allows to create the IDS in the official format.
FAQ :
What is an IDS for a US patent?
An IDS ("Information Disclosure Statement") is a document that is submitted by an applicant or their representative to the US Patent and Trademark Office (USPTO) to disclose any prior art, i.e., any publications, patents, or other documents that may be relevant to the patentability of the invention being claimed in the patent application.
The purpose of submitting an IDS is to fulfill the duty of disclosure that applicants have to the USPTO. This duty requires applicants to disclose to the USPTO any information that may be relevant to the patentability of their invention. Failure to disclose such information can lead to the patent being invalidated or rendered unenforceable later on.
By submitting an IDS, an applicant can provide the USPTO with relevant prior art that they are aware of, which can help ensure that the USPTO has a complete understanding of the prior art landscape and can make an informed decision on the patentability of the claimed invention.
Why is it important to cite all known family citations in US patent proceedings?
In US patent proceedings, it is important to cite all known family citations via an IDS (Information Disclosure Statement) for an applicant because it is a requirement of the duty of disclosure.
Family citations refer to any related patent applications or patents that are related to the invention being claimed in the current patent application, such as a priority application, a continuation or divisional application, or a counterpart patent application filed in a foreign country. These family citations can be important to the patentability of the current invention because they may contain information that is relevant to the claims being made in the current application.
Therefore, it is important for an applicant to cite all known family citations via an IDS because failure to do so can result in the patent being invalidated or declared unenforceable due to the failure to comply with the duty of disclosure. Additionally, the USPTO may impose penalties or sanctions on an applicant who fails to comply with the duty of disclosure.
When should I do an IDS (Information Disclosure Statement) ?
As an inventor or patent applicant, you should consider submitting an IDS to the USPTO if you become aware of any new prior art that could affect the patentability of your invention. This includes any relevant publications, patents, or other public disclosures that were not cited in the original patent application.
The USPTO requires applicants to submit an IDS within a certain time frame after becoming aware of new prior art, typically within three months of discovery or before the issuance of a notice of allowance, whichever occurs first. However, it's generally advisable to submit an IDS as soon as possible to ensure that all relevant prior art is considered during the patent examination process.
Is it possible to file more than one IDS (Information Disclosure Statement)?
Yes, it is possible to submit multiple IDS (Information Disclosure Statement) during the patent prosecution process. IDS is a mechanism for disclosing relevant prior art to the patent office during the examination process. If new prior art comes to light, or you discover additional prior art that was not previously disclosed, you can submit another IDS to the patent office.
What sources are used to perform the citation analysis?
The system uses the Questel - Orbit Intelligence database to perform the analysis:
- The CT field is used to list the citations.
- Importing citation from previously filed IDS
- The FAMPAT grouping is used as a basis to list the members of the families to be analyzed.
The complete description of the FAMPAT families and the CT field is available by clicking on this link :
The system also provides the documents (IDS, patent description, office action etc...) and the link to the register to allow the user to check the list of citations.