Issue 29 | September 21, 2002
Electronic Submission of
Information Disclosure Statements
 Information disclosure statements (IDS) may now be electronically submitted to the United States Patent and Trademark Office via the Office's Electronic Filing System (EFS). When making an EFS submission of an IDS, paper copies of U.S. patents and US patent application publications cited in the IDS do not have to be provided. However, the new electronic form allows only for citation of US patents and published US patent applications. For citing foreign patent documents, non-patent literature, or unpublished US applications, applicants still need to submit those citations on a separate, conventional paper PTO-1449 form (or revised form PTO/SB/08).

These changes follow from an EFS software upgrade that added an IDS (submitted under the provisions of 37 CFR 1.97 and 1.98) as the sixth type of electronic submission that may be made via the Office's EFS. Applicants file the electronic IDS by (1) entering the references' citation information in an electronic data entry form, equivalent to the paper PTO-1449 form; and (2) transmitting the electronic data entry form data to the Office. The electronic IDS form contains preprinted certification statements that allow the user to make one of the two certifications required under 37 CFR 1.97(e), regarding citation of the documents in a communication from a foreign patent Office and knowledge of the cited documents by individuals under 37 CFR 1.56(c), by clicking on the appropriate certification. The electronic IDS form also contains a free form text area to allow the user to include statements of relevance or other remarks with regard to the cited documents. Upon receipt, the Office will send to the filer an electronic post card "Acknowledgement Receipt", itemizing a server date stamp, a unique server number (also known as the EFS ID), the application number, and confirmation of the names, types, and sizes of the files received by the USPTO.

For information regarding the software, including installing and operating the software, the technical requirements and data definitions and requirements, contact the Electronic Business Center Help Desk by telephone at (703) 305-3028 or (703) 308-6845 or by electronic mail at efs@uspto.gov. For information regarding how the electronic IDS transmittals interact with the prosecution process, including legal and regulatory requirements, contact Anton Fetting in the Office of Patent Legal Administration by telephone at (703) 305-8449, by facsimile at (703) 746-3312, or by electronic mail at anton.fetting@uspto.gov.

To discuss this topic further, please contact the author, Bill Heinze, at Thomas, Kayden, Horstemeyer & Risley. The information contained in this email is provided for informational purposes only and does not represent legal advice. Neither the APLF nor the author intends to create an attorney client relationship by providing this information to you through this message.


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