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I filed a PCT application in 2019.

I also filed a US patent application WITHOUT claiming priority from the PCT application in 2019. I received "Written Opinion of the International Search Authority" in 2019. The examiner referenced few patent applications in the search report.

37 CFR 1.97 (e) says,

(e) A statement under this section must state either:

(1) That each item of information contained in the information disclosure statement was first cited in any communication from a foreign patent office in a counterpart foreign application not more than three months prior to the filing of the information disclosure statement; or

(2) That no item of information contained in the information disclosure statement was cited in a communication from a foreign patent office in a counterpart foreign application, and, to the knowledge of the person signing the certification after making reasonable inquiry, no item of information contained in the information disclosure statement was known to any individual designated in § 1.56(c) more than three months prior to the filing of the information disclosure statement.

I have not received first office action for my US application. The status says "Docketed New Case - Ready for Examination".

I have few questions:

  1. It seems like I have to disclose "counterpart foreign application". I believe my PCT application would fall under "counterpart foreign application" category. Is that correct?

  2. Since I have not received the first office action, do I have to pay any fees if I disclose the references cited by ISA examiner?

  3. Do I have to add any certification statement?

Thanks

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Since it is before the first actions on the merit there are no fees due of any certificate needed. You already may know that it is best practice to error on the side of disclosure.

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  • I was really nervous before your answer. You made me ease. Thanks :-) Oct 12 '20 at 7:55

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