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An Information Disclosure Statement (IDS) filed with the USPTO lists the references you are submitting for consideration. For U.S. patents the list is usually enough. For foreign patent documents, and for references that are not in English, the rules ask for more. This guide summarizes those rules and how to collect the documents.
What 37 CFR 1.98 asks for
An IDS must include a list of all patents, publications, applications and other information submitted for consideration (37 CFR 1.98(a)(1)). It must also include a legible copy of each foreign patent and of each publication, or the portion that caused it to be listed (37 CFR 1.98(a)(2)).
U.S. patents and foreign patent documents
Copies are not required for U.S. patents and U.S. patent application publications, unless the Office requires them (37 CFR 1.98(a)(2)(ii)). Foreign patent documents need a legible copy (subject to the exceptions below).
References that are not in English
For each listed reference that is not in English, the IDS must include a concise explanation of its relevance, as presently understood by the person designated in 37 CFR 1.56(c) who is most knowledgeable about its content (37 CFR 1.98(a)(3)(i)).
A translation is required only if a written English translation, or a translation of a portion, is already within the possession, custody or control of, or is readily available to, a person designated in 37 CFR 1.56(c) (37 CFR 1.98(a)(3)(ii)). You are not required to have a translation prepared (MPEP 609.04(a)).
When the reference was cited by a foreign patent office in a counterpart application, an English-language version of that search report or action which indicates the degree of relevance found by the foreign office can satisfy the concise-explanation requirement. An English-language abstract, such as one generated by a foreign patent office, may also fulfill it (MPEP 609.04(a)).
References submitted in an earlier application
A copy is still required even if the reference was submitted to, or cited by, the Office in an earlier application. The exception applies only when the earlier application is properly identified in the IDS and relied on for an earlier effective filing date under 35 U.S.C. 120, and the IDS filed in that earlier application complied with the rules (37 CFR 1.98(d)).
Cumulative references
When two or more listed patents or publications are substantively cumulative, a copy of one of them may be submitted without copies of the others, provided the IDS states that the others are cumulative (37 CFR 1.98(c)).
Where the foreign references usually come from
Foreign references in an IDS are usually the documents cited in Office Actions or search reports on counterpart applications, for example from the EPO, JPO, CNIPA, KIPO or TIPO. Those actions list the cited documents, often with a relevance category for each.
Collecting the copies
- Obtain the original-language PDF of each cited foreign patent document.
- For a reference that is not in English, check whether an English family publication exists.
- An English family publication can help you understand the reference and prepare the concise explanation; it does not replace the copy of the cited document itself.
- Keep the English-language search report or action, if you have one, with the file.
How DownloadPatent helps
Upload the foreign Office Action or search report to collect cited references. DownloadPatent extracts the cited patent documents, downloads the available PDFs into one ZIP, and lists available English counterparts separately from the originals. Non-patent literature is listed for your review rather than downloaded.
Before you file
This guide summarizes the rules; it is not legal advice. Check the current rule text before filing, and make the disclosure decision with your prosecution team.
Sources: 37 CFR 1.98 and MPEP 609.04(a).