A. General rule: IDSs filed during this time period may be submitted without triggering an “explanation” requirement.

B. An “explanation” is required for each of the following (§ 1.98(a)(3)(iv)): 1. Any English-language document over 25 pages (excluding sequence & computer listings);2. Any non-English language document and any submitted translation (See D. below) if the translation exceeds 25 pages (§ 1.98(a)(3)(xi)); and3. ALL documents when their cumulative number exceeds 20 in all IDSs filed in this time period.

An “explanation” requires identification of the specific feature(s), showing(s), or teaching(s) that caused the document to be cited, and a portion(s) of the document where the specific feature(s), showing(s), or teaching(s) may be found; and correlation of the specific feature(s), showing(s), or teaching(s) to corresponding specific claim language, or to a specific portion(s) of the supporting specification, where the document is cited for that purpose.

C. Update of previously filed “explanations” (§ 1.98(a)(3)(ix)): With each amendment to the claims or the specification affecting the scope of the claims filed after an information disclosure statement, applicant must either:

1. Update each “explanation” for all previous information disclosure statements, where necessary, in view of the amendment(s); or
2. Submit a statement to the effect that updating of the previous explanation(s) submitted with information disclosure statement(s) is not needed.

D. Where a non-English language document is submitted, any translation within the possession, custody, or control of, or that is readily available to a § 1.56(c) individual shall be filed (§ 1.98(a)(3)(xi)).

• Documents resulting from a foreign search or examination report in a counterpart foreign application where the report is submitted. (§1.98(a)(3)(viii)(A))
• Documents submitted in reply to a requirement for information (§ 1.105) (§1.98(a)(3)(viii)(C)).
• The certification of § 1.97(e) is not required, hence the three month time frame is not a requirement.

Starts - at end of Period 1

Ends - {Notice of Allowance, or a NIRC in a reexamination proceeding} (§ 1.97(c))

The following apply to documents cited during this time period regardless of page length or the number of previously cited documents:

A. An “explanation” for each cited document (see time period 1).

B. A “non-cumulative description” for each cited document (§ 1.98(a)(3)(v)).

A “non-cumulative description” is a description how each document is not merely cumulative of any other document cited in any prior or current IDS, or any information cited by the examiner.

C. Update of previously filed “explanations” (see time period 1):

D. Where a non-English language document is submitted, any translation within the possession, custody, or control of, or that is readily available to a § 1.56(c) individual shall be filed (§ 1.98(a)(3)(xi)).

• Documents filed with a 37 CFR 1.97(e)(1) timeliness certification and a copy of the foreign search or examination report for a counterpart foreign application. (§ 1.98(a)(3)(viii)(B))
• Documents filed in response to a requirement for information (§ 1.105) (§ 1.98(a)(3)(viii)(C)).

The following apply to documents cited during this time period regardless of page length or the number of previously cited documents:

A. A timeliness “certification” per § 1.97(e)(1) or (e)(2) to certify:

1. That each item of information contained in the information disclosure statement was first cited in any communication from a foreign patent office in a counterpart foreign application not more than three months prior to the filing of the information disclosure statement (§ 1.97(e)(1)); or
   
2. That no item of information contained in the information disclosure statement was cited in a communication from a foreign patent office in a counterpart foreign application, and, to the knowledge of the person signing the certification after making reasonable inquiry, no item of information contained in the information disclosure statement was known to any individual designated in § 1.56(c) more than three months prior to the filing of the information disclosure statement (§ 1.97(e)(2)).

B. One of the “patentability justifications” defined in § 1.98(a)(3)(vi)(A) or (B). Each “patentability justification” requires an “explanation” (see time period 1), a “non-cumulative description” (see time period 2), and either:

1. Where a § 1.98(a)(3)(vi)(A) patentability justification is chosen: Reasons why the independent claims are patentable over the information in the IDS being submitted, considered together, and in view of any information already of record; or
2. Where the § 1.98(a)(3)(vi)(B) “patentability justification” is chosen:

• a. Reasons why the amendment causes claims, admitted to be unpatentable over the information submitted in the IDS, to be patentable over such information when considered together, and in view of any information already of record,
• b. An unequivocal statement that one or more claims are “unpatentable” in view of at least the cited information, and
• c. An amendment to the claims admitted to be “unpatentable” in the unequivocal statement.

C. Where a non-English language document is submitted, any translation within the possession, custody, or control of, or that is readily available to a § 1.56(c) individual shall be filed (§ 1.98(a)(3)(xi)).

D. Update of previously filed “explanations” (see time period 1).

Starts - at {payment of issue fee, or mailing of NIRC in reexamination proceeding}

Ends – {lack of sufficient time for the examiner to consider the IDS prior to issuance} (§ 1.97(d)(2))

The following apply to documents cited during this time period regardless of page length or the number of previously cited documents:
• A. A timeliness “certification” per § 1.97(e)(1) or (e)(2) (see time period 3),
• B. A petition to withdraw an application from issue (§ 1.313(c)(1)), or a reexamination proceeding from publication (§ 1.98(a)(3)(iii)(B)), and
• C. The “patentability justification” defined in § 1.98(a)(3)(vi)(B) (see time period 3).
• F. Where a non-English language document is submitted, any translation within the possession, custody, or control of, or that is readily available to a § 1.56(c) individual shall be filed (§ 1.98(a)(3)(xi)).
• G. Update of previously filed “explanations” (see time period 1).