37 CFR 1.98 - Content of information disclosure statement

Cite as37 CFR 1.98
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77 practice notes
  • Patent cases: Patent business goals; implementation,
    • United States
    • Federal Register October 05, 1998
    • October 5, 1998
    ...submission of voluminous material (37 CFR 1.96, 1.821); (9) Imposing limits/requirements on information disclosure statement submissions (37 CFR 1.98); (10) Refusing information disclosure statement consideration under certain circumstances (37 CFR (11) Providing no cause suspension of acti......
  • Avocent Huntsville Corp. v. Clearcube Technology, No. CIVA CV03S2875NE.
    • United States
    • United States District Courts. 11th Circuit. United States District Court of Northern District of Alabama
    • July 12, 2006
    ...by submitting an "Information Disclosure Statement," which in turn complies with the requirements set forth in 37 C.F.R. §§ 1.97 and 1.98. See id. Section 1.98 states the requisite contents of the Information Disclosure Statement, and section 1.97 provides the procedural filing requirements......
  • Purdue Pharma L.P. v. Boehringer Ingelheim Gmbh, No. 99 Civ. 3658 (SHS).
    • United States
    • United States District Courts. 2nd Circuit. United States District Courts. 2nd Circuit. Southern District of New York
    • May 16, 2000
    ...nor Goolkasian has cited any authority for imposing such higher burdens of disclosure on patent applicants and their attorneys. Cf. 37 C.F.R. § 1.98(a)(3) (1999). Accordingly, these additional arguments must also be Keeping in mind Roxane's ultimate burden of proof by clear and convincing e......
  • Ariad Pharmaceuticals, Inc. v. Eli Lilly & Co., CIvil Action No. 02-11280-RWZ.
    • United States
    • United States District Courts. 1st Circuit. United States District Courts. 1st Circuit. District of Massachusetts
    • July 6, 2007
    ...and quotations marks omitted). 38. References normally must be submitted with an IDS to be considered by the PTO. See 37 C.F.R §§ 1.97, 1.98. The MPEP at the time of the '516 prosecution provided an exception for references submitted with an Office Action response, in pertinent part as To t......
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54 cases
  • Avocent Huntsville Corp. v. Clearcube Technology, No. CIVA CV03S2875NE.
    • United States
    • United States District Courts. 11th Circuit. United States District Court of Northern District of Alabama
    • July 12, 2006
    ...by submitting an "Information Disclosure Statement," which in turn complies with the requirements set forth in 37 C.F.R. §§ 1.97 and 1.98. See id. Section 1.98 states the requisite contents of the Information Disclosure Statement, and section 1.97 provides the procedural filing re......
  • Purdue Pharma L.P. v. Boehringer Ingelheim Gmbh, No. 99 Civ. 3658 (SHS).
    • United States
    • United States District Courts. 2nd Circuit. United States District Courts. 2nd Circuit. Southern District of New York
    • May 16, 2000
    ...nor Goolkasian has cited any authority for imposing such higher burdens of disclosure on patent applicants and their attorneys. Cf. 37 C.F.R. § 1.98(a)(3) (1999). Accordingly, these additional arguments must also be Keeping in mind Roxane's ultimate burden of proof by clear and convincing e......
  • Ariad Pharmaceuticals, Inc. v. Eli Lilly & Co., CIvil Action No. 02-11280-RWZ.
    • United States
    • United States District Courts. 1st Circuit. United States District Courts. 1st Circuit. District of Massachusetts
    • July 6, 2007
    ...and quotations marks omitted). 38. References normally must be submitted with an IDS to be considered by the PTO. See 37 C.F.R §§ 1.97, 1.98. The MPEP at the time of the '516 prosecution provided an exception for references submitted with an Office Action response, in pertinent part as To t......
  • Leviton Mfg. Co., Inc. v. Shanghai Meihao Elec., Civil No. AMD 05-889.
    • United States
    • United States District Courts. 4th Circuit. United States District Court (Maryland)
    • May 12, 2009
    ...by the patent examiner. Reference to the Germain application and to related litigation was not included in the IDS form or format. See 37 C.F.R. § 1.98(a)(1)(i)-(iii). Meihao states, correctly, that the examiner does not seem to be under any obligation to consider information not complying ......
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11 firm's commentaries
  • Intellectual Property Basics
    • United States
    • JD Supra United States
    • January 2, 2018
    ...on or after March 16, 2013, failure to comply with the best model requirement no longer invalidates the patent. 137 37 C.F.R. §§1.56, 1.97, 1.98 (“Each individual associated with the filing and prosecution of a patent application has a duty of candor and good faith dealing with the Office, ......
  • MBHB Snippets: Review of Developments in Intellectual Property Law - Volume 8, Issue 3 - Summer 2010
    • United States
    • JD Supra United States
    • September 1, 2010
    ...with the duty of disclosure provided in 37 CFR 1.56.” (emphasis added)); MPEP § 609 (“Once the minimum requirements of 37 CFR 1.97 and 37 CFR 1.98 are met, the examiner has an obligation to consider the information.”); 37 C.F.R. § 1.97(i) (“[if an IDS] does not comply with either this secti......
  • Intellectual Property Basics
    • United States
    • JD Supra United States
    • November 11, 2011
    ...the disclosure’s inadequacy was unintentional. U.S. Gypsum Co. v. Nat’l Gypsum Co., 74 F.3d 1209 (Fed. Cir. 1996). 143 37 C.F.R. §§1.56, 1.97, 1.98 (“Each individual associated with the filing and prosecution of a patent application has a duty of candor and good faith dealing with the Offic......
  • Intellectual Property Basics (Updated)
    • United States
    • JD Supra United States
    • November 24, 2014
    ...on or after March 16, 2013, failure to comply with the best model requirement no longer invalidates the patent. 143 37 C.F.R. §§1.56, 1.97, 1.98 (“Each individual associated with the filing and prosecution of a patent application has a duty of candor and good faith dealing with the Office, ......
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2 books & journal articles
  • Patents
    • United States
    • ABA General Library The Intellectual Property Handbook: A Practical Guide for Franchise, Business, and IP Counsel, Second Edition
    • September 26, 2016
    ...consideration by the [Patent] Office,” as well as an explanation of the relevance of these documents of which the applicant is aware. 37 C.F.R. § 1.98(a)(1). The IDS must contain anything that is relevant to the patent. If an applicant knows of relevant information and fails to present the ......
  • Fixing continuing application practice at the USPTO.
    • United States
    • Marquette Intellectual Property Law Review Vol. 13 Nbr. 2, June 2009
    • June 22, 2009
    ...when determining patentability. MPEP [section] 609 ("The provisions of 37 C.F.R. 1.97 [filing of information disclosure statement] and 37 C.F.R. 1.98 [content of information disclosure statement] provide a mechanism by which patent applicants may comply with the duty of disclosure provided ......
2 forms
  • Request For Supplemental Examination Transmittal Form-SB/59
    • United States
    • United States Patent and Trademark Office, Patent Trial and Appeal Board
    • Invalid date
    ...submitted as part of this request is provided in Part B of this form. Where appropriate, the list must meet the requirements of 37 CFR 1.98(b). 37 CFR 1.605(a), [Page 1 of 2] This collection of information is required by 37 CFR 1.610. The information is required to obtain or retain a benefi......
  • Request for Expedited Examination of a Design Application (37 CFR 1.155)-SB/27
    • United States
    • United States Patent and Trademark Office, Patent Trial and Appeal Board
    • Invalid date
    ...pursuant to Hague Agreement Article 10(3). The fee set forth in 37 CFR 1.17(k). An information disclosure statement in compliance with 37 CFR 1.98. Note: The Office will not grant a request for expedited examination if all of the requirements of 37 CFR 1.155 are not In addition, the Office ......

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