[IP Practice Online] Reviewing U.S. patent IDS practice: From "submit everything just in case" to "rule-based selection"
更新日：4 時間前
Article information
Categories: United States
Topics: Duty of disclosure
Published on this website: 2026-09-29
[IP Practice Online] Reviewing U.S. patent IDS practice: From "submit everything just in case" to "rule-based selection"
Shigeki Takeuchi, Partner, Kim and Stewart LLP; California attorney, U.S. patent agent, Japanese patent attorney
(Summary translation; case discussions omitted)
Replace indiscriminate IDS submissions with rule-based selection considering relevance, cumulativeness, timing, cost and future enforceability. This does not mean abolishing IDS submissions: the disclosure duty remains. Adopt reasonable criteria and record non-submission reasons.
1. Framework
Those substantively involved in preparing or prosecuting applications owe candor and disclosure duties to the USPTO, potentially including Japanese patent attorneys. Material information includes information defeating patentability, information inconsistent with the applicant's positions, public use, sales, offers for sale, test results and regulatory submissions. Intentional nondisclosure may render the entire patent unenforceable.
2. Timing and cost
Stages: before the first substantive office action; thereafter until final rejection or allowance; thereafter until issue-fee payment; and after payment. Later submission may require certifications, additional fees, RCE or QPIDS. Approximate fees: Japanese counsel JPY 20,000; U.S. counsel USD 200.
3. Selection and records
Generally submit references cited in the Japanese specification, X/Y references, material references in related U.S. applications, and potentially inconsistent information. Individually assess search results, inventor-known references, A references and cumulative references. An A classification alone does not justify withholding.
Record the reference number, acquisition date and circumstances, non-submission reasons, cumulativeness, consistency with patentability arguments, decision-maker and date.
4. Conduct and translations
Avoid careless emails about relevance, translations omitting important portions, inconsistent positions across offices/regulators/litigation, false explanations, concealment and discovery obstruction. Record assessments objectively.
Translation priority: existing translation, English counterpart, foreign-office English text/abstract, machine translation, then a relevance explanation if full translation is unavailable. Consider accurate human translation for key prior art or error-prone fields.
5. Enforcement
Disclosure is required without enforcement plans. Patents may support counterclaims or licensing; related patents and individuals may be affected. Cross-check related filings and regulatory/litigation materials. Generally submit within three months of receiving foreign-office notices. Keep uniform records, recheck withheld references before enforcement/licensing, and correct errors promptly despite costs.
Originally posted on LinkedIn: https://www.linkedin.com/feed/update/urn:li:activity:7509876411118309376/
