Information Disclosure Statements in Continuing Patent Applications

When filing a continuing patent application, such as a continuation, continuation-in-part, or a divisional, it may not be necessary to submit a new Information Disclosure Statement.

When a continuing application claims benefit to a U.S. parent application, it is not necessary to submit an IDS that identifies the prior art cited by the Examiner in the parent application. The only reason to do so is if the applicant wishes such prior art information to be printed on the issued patent. The Examiner will consider prior art that was made part of the file history of the parent application regardless of whether it is presented in a new IDS or not.

However, that does not absolve an applicant from ignoring the IDS. A continuation-in-part will present new material, and will claim new material. Such new claimed subject matter could rope in different relevant art, and it would be appropriate to file an IDS that identifies at least that new art. A continuation or divisional application – even though they don’t present new subject matter – could claim subject matter not claimed before, and thus could require submission of a new IDS.

In short, if newly claimed subject matter is presented, an IDS may very well be likely. If the same subject matter is claimed, an IDS might not need be filed. However, caution, and the risks associated with not disclosing information, might direct one to file an IDS in a continuing patent application.