The Duty of Disclosure and the Role of the IDS
Patent applicants and practitioners must disclose all information material to the patentability of a patent application to the United States Patent and Trademark Office (USPTO) while the application is pending. This duty of disclosure, commonly referred to as the duty of candor, is implemented in practice through the submission of an Information Disclosure Statement (IDS). An IDS lists references such as prior patents, published applications, articles, standards documents, product manuals, or other materials that might impact the patentability of an invention.
Historical Practice: When in Doubt, Cite It
For years, the prevailing best practice in patent prosecution was straightforward: when in doubt, cite it. Applicants frequently erred on the side of over-disclosure, particularly in complex technology areas or in portfolios involving multiple related applications. As families of related applications expanded, such as through continuation, divisional, and continuation-in-part filings, the volume of cited references often expanded as well. It became common to see each new application in a family accompanied by a growing IDS, sometimes duplicating references already cited and considered in earlier-filed parent cases.
Litigation Advantages of Extensive Disclosure
Generally, all references listed in an IDS are reviewed by patent examiners and, if considered, are listed on the face of any issued patent. Having references listed on the face of the patent can provide practical litigation advantages. When a reference is considered by an examiner during prosecution, later validity challenges based on that reference may face a more difficult path. Courts often acknowledge that an issued patent enjoys a presumption of validity and challengers often encounter a heavier burden when arguing invalidity based on references that the USPTO has already considered. Thus, extensive disclosure by applicants and practitioners served dual purposes of satisfying the duty of disclosure and, at least in theory, strengthening the patent by ensuring key references were formally considered and recorded.
The 2025 USPTO IDS Size Fees
However, as of January 2025, the USPTO began imposing cumulative size fees on IDS submissions. Under the revised fee structure, additional fees are triggered when the total number of references cited exceeds certain thresholds, beginning at 50 references and increasing at higher tiers. For large patent families, particularly in industries where global prosecution generates extensive prior art, the financial impact can be significant. What was once a low-cost, routine filing of a voluminous IDS has become a potentially material budget item.
Impact on Continuation and Divisional Practice
These new cumulative IDS size fees are especially relevant in continuation and divisional practice. In many patent families, the majority of references cited in later-filed applications are not newly discovered art, but rather are references that were already cited, considered, and listed in a parent application. Under prior practice norms, those references were often simply resubmitted in each child application as a matter of course so that the references are listed on the face of an eventual issued patent. Under the new fee regime, that approach may impose avoidable costs.
USPTO Guidance Under the MPEP
The USPTO’s own guidance provides important context. According to section 609.02(II)(2) of the Manual of Patent Examining Procedure, the guidelines by which patent examiners are expected and instructed to examine patent applications, “the examiner will consider information which has been considered by the USPTO in a parent application” when examining continuation, divisional, or continuation-in-part applications. The MPEP further explains that “a listing of the information need not be resubmitted in the continuing application unless the applicant desires the information to be printed on the patent.” In other words, the USPTO’s examination policy suggests an assumption that examiners will review and consider prior art that was already considered in the parent case, even if the applicant does not resubmit that art in the child application.
Presumption of Validity Without Resubmission
Accordingly, it is unnecessary to cite information already considered in a parent application when filing a follow-on application solely to secure the strengthened presumption of validity against that information. USPTO policy expressly provides that examiners will consider previously considered parent art without the need for resubmission. If an applicant’s objective is simply to ensure that the examiner evaluates the same references and an eventually issued patent enjoys a strengthened presumption of validity over those references, that objective is satisfied under existing USPTO procedures.
Important Nuances and Strategic Considerations
There are, however, important nuances. The MPEP distinguishes between information that was submitted in a parent application and information that was actually “considered” by the USPTO. If references were cited in a parent case but, for some procedural reason, were not considered by the examiner, different considerations may apply. Additionally, applicants may still choose to resubmit certain references in a continuation or divisional for strategic reasons, such as if the applicant wants those references to appear on the face of the issued child patent or to ensure clarity in the prosecution record.
Habitual Resubmission and Cost Consequences
Despite this guidance from the USPTO, many applicants continue to submit references already considered in parent applications as a matter of habit. In the absence of size-based IDS fees, this approach carried little downside beyond minor administrative burden. Under the new fee structure, however, that routine duplication can generate unnecessary fees, particularly in large patent families with extensive global prosecution histories, increasing the cost of an already fee-heavy process.
Portfolio Management Implications
From a business and portfolio-management perspective, the implications are meaningful. Companies with robust continuation strategies may see cumulative IDS size fees multiply across related applications. If each continuation mechanically carries forward dozens or hundreds of previously considered references, the aggregate fees over the life of a portfolio can be substantial.
Practical Guidance for Applicants
Given these changes, applicants should implement a more deliberate IDS strategy in follow-on applications. Rather than automatically resubmitting every reference cited in the parent, applicants should assess:
- Whether the reference was actually considered in the parent application.
- Whether there is a specific business or litigation reason to have the reference printed on the face of the child patent beyond a desire for a strengthened presumption of validity against the reference.
How Applicants Should Proceed
In many cases, particularly where no new material information has arisen, it may be sufficient to rely on examiner consideration of parent art without resubmitting references in the continuation or divisional. This approach can reduce unnecessary cumulative IDS size fees while remaining fully compliant with the duty of disclosure and consistent with USPTO policy, allowing companies to manage costs more effectively while preserving the legal and strategic benefits of a well-developed prosecution record.
For companies managing active patent portfolios or continuation strategies, a thoughtful approach to IDS practice can help control prosecution costs while preserving important legal protections. Contact Conley Rose to discuss how your organization can implement a more efficient disclosure strategy aligned with current USPTO practice.