USPTO IDS Fees and Continuing Applications: The Value of a Clear Prosecution Record
Last year, the USPTO implemented fee tiers for information disclosure statements (“IDSs”), triggered when an applicant cites (in one or more IDSs) more than 50, 100, or 200 references. The corresponding fees are $200, $500, and $800, respectively, less any fees previously paid in the same application.
This new fee structure changed the United States IDS practice. Previously, applicants routinely relisted a parent application’s IDS references in continuing applications. After the fee structure was implemented, however, some applicants have tried to avoid IDS fees by omitting redundant listings of IDS references already considered in parent applications.
We caution applicants against cutting costs in this area of U.S. prosecution. While the United States Manual of Patent Examining Procedure (“MPEP”) does not require continuing applications to relist references already cited in the parent application. Section 609.02(II)(A)(2) of the MPEP states that Examiners considering continuing applications “will” consider IDS references submitted in parent applications. The presumption of consideration, however, only exists within the prosecution record. Prior art considered in a parent application but not cited in an IDS in the continuing application will not be listed on the face of the issued patent.
For an applicant-provided reference to appear on the face of an issued patent, the applicant must cite the reference in an IDS filed in the continuing application itself. This establishes active consideration by the Examiner, rather than reliance on a presumption of Examiner consideration. Proof of active consideration makes it harder for a challenger to argue in later litigation or inter partes review proceedings that the Examiner overlooked the reference's teachings.
Accordingly, applicants filing a continuing application should consider the value of a clear prosecution record before omitting references solely to reduce IDS fees. In many cases, the additional IDS fee may be modest compared to the value in litigation of a record that demonstrates the Examiner actively considered a particular piece of relevant prior art.
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