Common IDS Pitfalls: Avoiding Inequitable-Conduct Risk and Examiner “Burying”

An IDS should be complete enough to put material information before the examiner and organized enough to be useful. Two opposite mistakes create risk: withholding information that should be disclosed and submitting a poorly managed mass of duplicative or irrelevant material.

This article is an operational guide, not a legal opinion about inequitable conduct in any particular case.

The duty is materiality-based

37 CFR § 1.56 requires individuals associated with filing or prosecution to disclose information known to them to be material to patentability. The duty is not limited to information discovered in a formal prior-art search. It can extend to material information from related U.S. applications, foreign applications, litigation, technical work, and other sources. The USPTO discusses these sources in MPEP § 2001.06.

The existence of a duty does not mean that every potentially related document must be submitted without review. The prosecution team should identify what is known, evaluate materiality under the governing standard, and make a documented filing decision.

What “burying” usually means in practice

“Burying” is often used to describe submitting a large volume of references without useful organization or context, making it harder to identify the most important information. A long list is not automatically improper, and an IDS does not require the applicant to prove that each reference is material. But quantity can reduce clarity when the list contains:

• Multiple copies of the same reference under slightly different identifiers.
• Entire families when one publication would provide the relevant disclosure.
• References unrelated to the claims under examination.
• Repeated citations submitted in successive IDS packages.
• Foreign documents without the required identification, copies, or explanations.

The goal is not to submit fewer references at all costs. The goal is to submit the information the examiner should consider in a clean, accurate, reviewable record.

Five controls for a defensible IDS workflow

1. Preserve the source and the decision

Keep the document, where it came from, the date it was received, the application reviewed, and the reason it was considered. A short internal note is often more useful than a vague label such as “related art.”

2. Deduplicate by document identity

Patent numbers may appear with or without country codes, with different kind codes, or in family-member formats. Deduplicate using normalized identifiers and verify that two records are actually the same document before merging them.

3. Separate relevance review from form preparation

First decide which information should be disclosed. Then format the selected references. Mixing those tasks encourages teams to file whatever happens to be easiest to copy into a form.

4. Use concise explanations where required

For non-English information, 37 CFR § 1.98 requires a concise explanation of relevance as presently understood by the most knowledgeable covered individual, and may require an available written translation. A focused explanation helps the examiner understand why the document is present.

5. Check cumulative history

Review previous IDS submissions in the same application. This catches duplicates, supports the current size-fee assertion, and shows whether a reference was already submitted under the applicable earlier-application exception.

How IDS Generator supports the controls

IDS Generator validates reference data, maps related applications, tracks prior citations, and automatically removes duplicate records from the generated package. It also retrieves available foreign PDFs and English abstracts and resolves DOI-based literature citations.

That automation reduces clerical noise, but it does not make the legal decision. Counsel still determines what is material, whether a reference is cumulative, whether an explanation is accurate, and whether a certification or fee is appropriate.

What prosecution case law teaches about IDS practice

A few Federal Circuit decisions illustrate why related-application review and a documented IDS process matter:

• Dayco Products, Inc. v. Total Containment, Inc., 329 F.3d 1358, 1365-69 (Fed. Cir. 2003). The court recognized that information about a copending application—including substantially similar claim activity—may be material to patentability. The practical lesson is that a prosecution team should not assume the examiner already knows what happened in another application.
• Brasseler U.S.A. I, L.P. v. Stryker Sales Corp., 267 F.3d 1370, 1380-81 (Fed. Cir. 2001). The court explained that when counsel or an applicant has notice of specific information that appears material and questionable, the person cannot simply ignore that notice to avoid the duty of disclosure. The lesson is to investigate a concrete warning or lead; it does not require counsel to conduct an unlimited search for possible information.
• Therasense, Inc. v. Becton, Dickinson & Co., 649 F.3d 1276, 1290–91 (Fed. Cir. 2011) (en banc). The court held that inequitable conduct requires separate proof of materiality and intent to deceive, and that intent must be the single most reasonable inference from the evidence. The practical lesson is to avoid describing ordinary clerical errors as inequitable conduct while still maintaining a careful, documented disclosure process.
• Regeneron Pharmaceuticals, Inc. v. Merus N.V., 864 F.3d 1343, 1350-51 (Fed. Cir. 2003). The Federal Circuit reiterated that materiality and intent to deceive are separate requirements and that intent cannot be inferred from materiality alone. The lesson is that an IDS workflow should support careful factual review and documentation, not treat every filing mistake as inequitable conduct.

These decisions do not establish a rule that every reference from every related application must be submitted. They reinforce a more practical point: when a prosecution team knows of specific information that may matter, it should evaluate that information deliberately, preserve the basis for its decision, and submit material information in a timely and accurate IDS when appropriate.

A final quality review

Before filing, ask whether the package is complete, accurate, timely, and understandable. Confirm that the list does not omit a known material reference, but also confirm that each included item is correctly identified and not merely duplicated. Check the requirements of 37 CFR §§ 1.97 and 1.98, including the current IDS size-fee assertion.

An organized IDS gives the examiner a better record and gives the prosecution team a better explanation of what it knew, what it reviewed, and what it submitted.

This article is educational information, not legal advice. Consult patent counsel for a case-specific duty-of-disclosure or inequitable-conduct analysis.