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Cantor Colburn Client Alert: Costs of Filing “Fat” and “Skinny” Information Disclosure Statements with the USPTO
Cantor Colburn Client Alert: Costs of Filing “Fat” and “Skinny” Information Disclosure Statements with the USPTO
Background
A new update to the U.S. Patent and Trademark Office (USPTO) fee schedule (effective January 19, 2025) warrants reconsideration of Information Disclosure Statements (IDS) best practices, but ultimately does not change the duty of disclosure or the standard for determining if an item should be disclosed in an IDS. A USPTO Quick Reference Guide provides helpful details, but generally the new costs are:
- $200 for an IDS that causes the cumulative number of items to be 51-100
- $500 (less any previous IDS size fee) for an IDS that causes the cumulative number of items to be 101-200
- $800 (less any previous IDS size fee) for an IDS that causes the cumulative number of items to be 201+
Implications
While a “fat” or over-inclusive IDS is now more expensive than it would have previously been, there are also costs associated with a “skinny” or minimally-inclusive IDS. Confirming that potentially relevant items are not material to patentability takes time and, in some cases, could be more costly than simply disclosing them out of an abundance of caution. Worse, failure to disclose a potentially relevant item could increase the risk of litigation asserting a breach of the duty to disclose.
What This Means to You
Determination of whether an item should be included in an IDS remains an important legal question, governed by 37 CFR 1.56. The new IDS size fees now effectively reward the non-disclosure of items known to be immaterial to patentability but present danger to those who prioritize avoidance of the fees over other cost concerns. In some cases, payment of the IDS size fees is the best option. The maximum cumulative IDS size fee to be paid is $800.
For Further Information and Assistance
Cantor Colburn’s Patent Practice has substantial experience representing clients in Intellectual Property matters. Please do not hesitate to contact Peter McFadden, Brad Lawrence, or any other Cantor Colburn attorney with any questions you may have regarding this matter and your IP in general.
Please note that each situation has its own unique circumstances and ramifications. This Client Alert is for informational purposes only and is not legal advice.
