Strategic Considerations for Managing USPTO Information Disclosure Statement (IDS) references

Fee Structure for Excess References

The fee structure has four main bands, adding up the cumulative number of references cited throughout prosecution (not just in the IDS currently being filed).

• Cumulative references up to 49 will trigger no fees. 

For applications citing between:

• 50-100 cumulative references, the additional IDS fee is $200 USD
• 101-200 cumulative references, the additional IDS fee is $500 USD
• 201 or more cumulative references, the additional IDS fee reaches $800 USD

Notably, these fees apply universally with no discounts available for small or micro entities, making cost management particularly important for resource-constrained applicants.

Balancing Disclosure Obligations with Strategic Filing

The duty of candor and good faith in patent prosecution remains unchanged, requiring disclosure of all information material to patentability. However, applicants may want to evaluate whether each reference truly meets that threshold before inclusion in an IDS.

One area requiring particular attention involves corresponding applications from different jurisdictions. For instance, citing both a US patent application and its corresponding European counterpart is unnecessary. The European application would not add materially different information beyond what the US application already provides to the Examiner.

Continuation and Divisional applications do not have to disclose references which were considered by the examiner in a parent application because such references are deemed to be considered. However, these references will not be listed on an issued patent if they are not specifically cited in an IDS. 

Practical Implications for Patent Strategy

These new fees encourage Applicants to be more selective when disclosing references to the USPTO. However, it is still important for Applicants to cite anything which falls within the required “material to the patentability of the claims” as the consequences for not citing such references can be dire to the enforcement of any eventual patent issued.

The fee structure particularly impacts prosecution of applications in technology areas where extensive prior art searches are common. If applicants are confident that they will disclose more than 200 references, they may accept the fees and not worry about evaluating every reference. If an applicant may be have a list of references that is on the verge of reaching the next tier of fees, they may review references to manage costs. 

While the duty to disclose material information remains paramount, these new fees create an opportunity to refine disclosure practices. By focusing on materiality and eliminating cumulative references, practitioners can fulfill their disclosure obligations while managing costs effectively.