Information Disclosure in Patent Prosecution: IDS Filings, Key Considerations, Strategies for Disclosure

Course Details
- smart_display Format
On-Demand
- signal_cellular_alt Difficulty Level
Intermediate
- work Practice Area
Patent
- event Date
Thursday, November 2, 2023
- schedule Time
1:00 p.m. ET./10:00 a.m. PT
- timer Program Length
90 minutes
-
This 90-minute webinar is eligible in most states for 1.5 CLE credits.
This CLE course will guide patent counsel on disclosing relevant information in patent prosecution and post-issuance patent proceedings such as supplemental examination. The panel will discuss the considerations for the elements of the information disclosure statements, including the information disclosure statements (IDS) pleading, Form PTO/SB/08a and 08b, and addressing the timing of the filing. The panel will also examine the considerations for PTAs, continuing applications, and national phase applications. The panel will offer best practices for information disclosure in patent prosecution.
Faculty

Ms. Burgy focuses on opinion work, client counseling, patent prosecution and management, and litigation in the chemical, pharmaceutical, and biotechnology arts. She counsels her clients on a diverse range of patent issues. She assists clients on single-patent issues as well as complex matters involving multiple patents and applications requiring ongoing advice on patent portfolio strategy and development, with an eye towards litigation. She has assisted clients in the early stages of development through due diligence and patent portfolio analysis.

Mr. Irving has 47 years of experience in the field of IP law. His practice includes due diligence, patent prosecution, reissue and reexamination, patent interferences, and counseling, including prelitigation, Orange Book listings of patents covering FDA-approved drugs, and infringement and validity analysis in the chemical fields, as well as litigation. He has served as lead counsel in many patent interferences.

Ms. O’Brien has more than 20 years of experience representing domestic and foreign clients of all sizes in patent procurement, litigation, and client counseling, with a particular emphasis on chemical, biochemical, and pharmaceutical technologies. Exemplary areas of her technical expertise include polymer chemistry; ceramics; glass; food chemistry; cosmetics; paper products; adhesives; and pharmaceutical products, including new chemical entities and formulations and novel solid forms, including polymorphs, cocrystals, and amorphous forms of compounds.

Mr. Mulcahy focuses on patent litigation before both the ITC and federal district courts. His litigation experience includes examining expert witnesses at deposition and trial; preparing Markman, summary judgment, and various post-trial motions; and participating in settlement negotiations. He also has extensive experience in the strategic use of reexaminations in litigation and has filed numerous successful requests. He has successfully argued before the PTAB, and has filed and prosecuted numerous applications.
Description
The duty of disclosure is a critical requirement of U.S. patent prosecution. Each individual involved with filing and prosecuting the application must disclose what they know is material to patentability.
This duty continues until a patent is issued and may arise again if the patent is involved in USPTO post-issuance proceedings. To meet the duty to disclose, patent applicants and their counsel should keep several considerations in mind when preparing and submitting IDS to the USPTO.
Failing to comply with the duty of disclosure requirements can be costly. It could lead to an inequitable conduct ruling, an unenforceable patent, and damages.
Patent counsel should also consider the timing of IDS submissions. As the prosecution progresses, these submissions may become more costly and challenging. As a result, counsel should encourage clients to disclose early and disclose new relevant information that comes to light.
Listen as our authoritative panel of patent attorneys examines the composition of an IDS filing. The panel will discuss the various considerations for the elements of the filing, including the IDS pleading, Form PTO/SB/08a and 08b, and addressing the timing of the filing. The panel will also discuss the considerations for PTAs, continuing applications, and national phase applications. The panel will offer best practices for information disclosure in patent prosecution.
Outline
- IDS filings: a brief overview
- Considerations for elements of the IDS filing
- Form PTO/SB/08a
- Form PTO/SB/08b
- Timing
- Other considerations
- PTAs
- Continuing applications
- National phase applications
- Best practices for disclosure
Benefits
The panel will review these and other key issues:
- What considerations for Form PTO/SB/08a or Form PTO/SB/08b should patent counsel keep in mind?
- What should be disclosed related to a continuing application?
- What role do IDSs play in a supplemental examination?
- What strategies should counsel employ when determining whether and when to disclose?
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