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United States Patent and Trademark Office › Information Disclosure Statement

The U.S. Patent and Trademark Office is an agency of the United States Department of Commerce that serves a fundamental role in the U.S. intellectual property system by issuing patents and registering trademarks.... more +
The U.S. Patent and Trademark Office is an agency of the United States Department of Commerce that serves a fundamental role in the U.S. intellectual property system by issuing patents and registering trademarks.    less -
Foley & Lardner LLP

New IDS Requirement In USPTO Fee-Setting Proposal

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The U.S. Patent and Trademark Office’s (USPTO’s) proposed rulemaking that focuses on “fee adjustments” for 2025 includes a trap for the unwary related to Information Disclosure Statements (IDSs) that could complicate...more

WilmerHale

USPTO Issues Guidance on Using Artificial Intelligence Tools

WilmerHale on

On April 10, 2024, the United States Patent and Trade Office (USPTO) announced guidance regarding the use of artificial intelligence (AI) tools before the USPTO. ...more

McDonnell Boehnen Hulbert & Berghoff LLP

USPTO Guidance on Use of AI-Based Tools

McDonnell Boehnen Hulbert & Berghoff LLP on

The USPTO has issued several recent Federal Register Notices this calendar year. The latest, entitled Guidance on Use of Artificial Intelligence-Based Tools in Practice Before the United States Patent and Trademark Office, 89...more

Seyfarth Shaw LLP

Revolutionizing the Patent Landscape: Navigating the USPTO’s Bold Fee Overhaul for 2025

Seyfarth Shaw LLP on

The United States Patent and Trademark Office (USPTO) has proposed significant changes to patent fee structures for the 2025 fiscal year. These proposed changes mark a pivotal shift in the Office’s financial approach toward...more

Mintz - Intellectual Property Viewpoints

Practical Guidelines for Avoiding Patent Term Adjustment Penalty

Mintz - Intellectual Property Viewpoints on

The duty to disclose required by 37 CFR § 1.56 is a constant weight on patent practitioners and applicants to cite references via an Information Disclosure Statement (IDS). The indiscriminate or reflexive filing of an IDS...more

Foley & Lardner LLP

Which Significant USPTO Fee Increases Might We See in 2025?

Foley & Lardner LLP on

If the U.S. Patent and Trademark Office (USPTO) is going to implement fee changes in January 2025, we should see a Federal Register Notice detailing the proposed fees soon. The USPTO started this round of fee-setting in April...more

Foley & Lardner LLP

Don't Miss Out On Patent Term -- Use The USPTO IDS PTA Safe Harbor Form

Foley & Lardner LLP on

Effective July 17, 2023, the USPTO will "require" Information Disclosure Statement (IDS) Patent Term Adjustment (PTA) safe harbor statements to be made on a specific USPTO form and electronically filed under a specific...more

Fox Rothschild LLP

Cha-Ching: USPTO Proposes Increases in Patent Fees

Fox Rothschild LLP on

The U.S. Patent and Trademark Office (USPTO) has proposed a significant increase in patent fees, including the implementation of entirely new fees and revamped fee structures. The USPTO has indicated that the fee proposal is...more

Procopio, Cory, Hargreaves & Savitch LLP

U.S. Patents Will Soon Be Issued Electronically: What Does This Mean to You?

Procopio, Cory, Hargreaves & Savitch LLP on

After centuries of issuing paper patents to inventors, the U.S. Patent and Trademark Office will soon transition to only electronic issuance, with patent holders able to receive a printed “ceremonial” copy to display proudly...more

McDermott Will & Emery

PTO Proposes Standardization of the Patent Term Adjustment Statement Regarding Information Disclosure Statements

McDermott Will & Emery on

The US Patent & Trademark Office (PTO) announced on July 12, 2022, that it intends to revise the rules pertaining to patent term adjustment to require that the patent term adjustment statement regarding information disclosure...more

Foley & Lardner LLP

USPTO Proposes To Require Form For IDS PTA Safe Harbor

Foley & Lardner LLP on

The USPTO Patent Term Adjustment (PTA) rules include a “safe harbor” that avoids a PTA deduction for “Applicant delay” for Information Disclosure Statements that are accompanied by a certain statement averring that the items...more

Rothwell, Figg, Ernst & Manbeck, P.C.

Suspending the Rules: A Year’s Worth of USPTO Petitions

Rothwell, Figg, Ernst & Manbeck, P.C. on

In some circumstances, patent applicants may petition the Patent Office to suspend non-statutory rules under 37 CFR § 1.183. As the text of the rule indicates, the Patent Office will only grant such petitions “[i]n an...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Patent Prosecution Tool Kit: Patent Term Adjustment

Sterne, Kessler, Goldstein & Fox P.L.L.C. on

In 1999, Congress created a system of patent term adjustment (PTA) that adds additional time to patent terms to remedy certain delays caused by the U.S. Patent and Trademark Office (PTO) in issuing a patent....more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Patent Prosecution Tool Kit: Information Disclosure: Avoiding Common Pitfalls

Sterne, Kessler, Goldstein & Fox P.L.L.C. on

An essential part of U.S. patent prosecution is the duty of disclosure, which requires the disclosure of all known information that is material to patentability. 37 C.F.R. § 1.56....more

Mintz - Intellectual Property Viewpoints

USPTO Releases Final Rules on PTA Calculations in view of Supernus

Mintz - Intellectual Property Viewpoints on

On June 16, 2020, the U.S. Patent and Trademark Office (USPTO) released final rules (the “Rules”) implementing changes to how Patent Term Adjustment (PTA) is calculated in certain circumstances in view of Supernus Pharms.,...more

Faegre Drinker Biddle & Reath LLP

After Supernus: It’s Up to You to Keep Your Patent Alive All Its Days

Faegre Drinker Biddle & Reath LLP on

Patentees may obtain additional PTA if the USPTO’s calculation of “applicant delay” includes a period of time during which the patentee could have taken “no identifiable effort” to avoid. However, the onus is entirely on the...more

McDermott Will & Emery

“Equal to” Means “Not Exceed” when Determining Patent Term Adjustment

McDermott Will & Emery on

The US Court of Appeals for the Federal Circuit found that the US Patent and Trademark Office (PTO) erred in calculating a patent term adjustment (PTA) for a patent covering an oral osmotic form of an antihypertensive drug,...more

Jones Day

Supernus: Federal Circuit Provides Clarity on USPTO Discretion on Patent-Term Adjustment Calculations

Jones Day on

The Situation: The USPTO took a long time to issue Supernus's patent application. Although Supernus would otherwise have been entitled to significant patent term adjustment, the USPTO ruled that the accumulated term should be...more

Nelson Mullins Riley & Scarborough LLP

IDS-Related USPTO Announcements

Nelson Mullins Riley & Scarborough LLP on

The USPTO recently issued two announcements related to Information Disclosure Statements. Interim Procedure for Requesting Recalculation of Patent Term Adjustment With Respect to Information Disclosure Statements Accompanied...more

Mintz - Intellectual Property Viewpoints

Information Disclosure Statements: When and How to File?

Mintz - Intellectual Property Viewpoints on

Under U.S. patent law, while there is no duty to perform a search of relevant art, inventors and those associated with filing or prosecuting patent applications as defined in 37 C.F.R. § 1.56 have a duty to disclose to the...more

Foley & Lardner LLP

USPTO Expands Collaborative Search Pilot Program

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As announced in this October 30, 2017 Federal Register notice, the USPTO is expanding the Collaborative Search Pilot Program under which applicants can request that multiple intellectual property offices exchange search...more

Mintz - Intellectual Property Viewpoints

Calculating Patent Term Adjustment: Part 2

Mintz - Intellectual Property Viewpoints on

This article is second in a series focusing on various issues related to Patent Term Adjustment for U.S. patent applications. While Part 1 is a general overview of how to calculate patent term adjustment (“PTA”), this...more

McDermott Will & Emery

PTO Extends Pilot Programs

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The US Patent and Trademark Office (PTO) has extended the After Final Consideration Pilot 2.0 (AFCP 2.0) and the Quick Path Information Disclosure Statement (QPIDS) pilot programs until September 30, 2017. ...more

Foley & Lardner LLP

USPTO Proposes New IDS Framework

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Tucked into the USPTO’s proposed patent fee changes is a proposal to change the Information Disclosure Statement (IDS) framework. While applicants may welcome the simplified procedures for obtaining consideration of an IDS,...more

Foley & Lardner LLP

USPTO Plans To Hike Patent Fees

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The USPTO has published proposed changes to patent fees that it says will “slightly” increase patent prosecution fees–even though several common fees will increase by 10% to 25%. The proposed changes to the Information...more

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