Office of Patent Legal Administration << Pre-OG Notices << Information Disclosure Statements May Be Filed Without Copies of U.S. Patents and Published Applications in Patent Applications filed after June 30, 2003

Background
The U.S. Patent and Trademark Office (USPTO or Office) regulations concerning Information Disclosure Statements (IDSs) currently require that copies of the cited references be submitted with the IDS listing. See 37 CFR 1.98 (a)(2). In a prior notice in the Official Gazette this requirement was partially waived with respect to U.S. patents and U.S. patent application publications when an applicant submitted an IDS using the Office's electronic filing system (as an electronic IDS, eIDS). See Legal Framework for the Use of the Electronic Filing System, 1263 Off. Gaz. Pat. Off. 60, 10/8/2002, Part V.

All U.S. applications [1] filed after June 30, 2003 are stored in electronic form in the Office's Image File Wrapper (IFW) system. [2] IDSs submitted for these electronic applications are processed by Office staff to create an electronic link which permits cited U.S. patents and U.S. patent application publications to be conveniently viewed by examiners through the Office's patent search system. This feature enables the Office to avoid scanning these documents into IFW, obviating the need for their submission.

Waiver
The Office hereby waives the requirement under 37 CFR 1.98 (a)(2)(i) for submitting a copy of each cited U.S. patent and each U.S. patent application publication for all U.S. national patent applications filed after June 30, 2003 and for all international applications that have entered the national stage under 35 USC § 371 after June 30, 2003. See 37 CFR 1.491(b). For all patent applications filed on or before June 30, 2003, copies of cited U.S. patents and patent application publications are still required unless an eIDS is filed.

Applicants are still required to submit copies of foreign patent documents and non-patent literature in accordance with 37 CFR 1.98(a)(2).

FOR FURTHER INFORMATION CONTACT:

Questions concerning this waiver may be submitted to Jay Lucas by e-mail at Jay.Lucas@uspto.gov or by telephone at (703) 308-6868. Comments may also be submitted by mail addressed to: Commissioner for Patents, Box Comments - Patents, Post Office Box 1450, Alexandria, VA 22313-1450, or by facsimile to (703) 305-2919, marked to the attention of Jay Lucas.

[1] Except in special situations, such as in applications under secrecy order or containing national security markings.

[2] See Notification of United States Patent and Trademark Office Patent Application Records being Stored and Processed in Electronic Form, 1271 Off. Gaz. Pat. Off. 100, 6/17 2003.