Application Prosecution Timeline

Changes to Information Disclosure Statement (IDS) Requirements Notice of Proposed Rulemaking (NPR)
71 FR 38808 (2006)
XX Off. Gaz. YY (2006)

Time Periods 1- 4

Slide Notes:

1^st period: All documents when cites exceed 20 (cumulatively)*. *Exceptions during first period: cites submitted with a §1.97(e)(1) timeliness certification and copy of foreign search report, or cites responsive to an Office § 1.105 requirement.

2^nd Period: No timeliness certification per § 1.97(e)(1) or (2) , or fee, is required. What is the “non-cumulative description” that would also be required for any IDS submitted after a 1st action? A description of how each document is not merely cumulative of any other document. **Exceptions during second period: A certification that each document in the IDS is being filed within three months of the date it was first cited by any foreign patent office in a counterpart foreign application and an accompanying search report, or cites responsive to an Office § 1.105 requirement.

3^rd Period: An IDS may be submitted, but only with a § 1.97(e)(1) or (2) timeliness certification (a certification that each document in the IDS is being filed within three months of the date it: (a) was first cited by any foreign patent office in a counterpart foreign application), or (b) first became known to the applicant, and one of the 2 permitted “patentability justifications.”

4^th Period: An IDS may be submitted, but only with a § 1.97(e)(1) or (2) timeliness certification (a certification that each document in the IDS is being filed within three months of the date it: (a) was first cited by any foreign patent office in a counterpart foreign application), or (b) first became known to the applicant, a petition to withdraw the application from issue, an amendment to the claims admitted to be unpatentable, and the “patentability justification” for the amendment.

More Information

The below listed documents may be accessed via the “More Information” hyperlink associated with the Notice’s title at the following USPTO webpage: http://www.uspto.gov/web/offices/pac/dapp/ogsheet.html
• Executive Summary – IDS NPR,
• Detailed Summary – IDS NPR,
• Charts of: “The Four Time Periods for Submitting an IDS and Their Corresponding Requirements,” and
• Application Prosecution Timeline.

For more information, please contact the Office of Patent Legal Administration at (571) 272-7701 or e-mail to PatentPractice@USPTO.gov, or contact one of the following:
• Hiram Bernstein 571-272-7707
• Brian Hanlon 571-272-5407
• Robert J. Spar 571-272-7700

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