How does the applicant of a patent cite prior art? Is it necessary to cite prior art that I'm aware of in a first filing (provisional)?

1 Answer 1


It is done by filing a document called an Information Disclosure Statement with the USPTO in the case file. An IDS is only allowed in a regular non-provisional application, not in a provisional application IDS directions for on-line submittal (link fixed)

From Provisional Application for Patent page at USPTO

No information disclosure statement may be filed in a provisional application.

This may be obvious, but you only need to cite what you are aware of - no positive requirement to go looking for it, but you should look so you will know what you are up against and can tailor your application accordingly.

  • Ok, thanks. I was a bit confused because I had seen some background sections including references to prior art patents, but I also read that the background section should be brief and mostly high level description. Would you happen to know if in the UK they use these same IDS?
    – martinako
    Jan 31, 2013 at 11:10
  • Oh, the link you pass in your answer sends me a google patent, I think you may have copied the wrong address
    – martinako
    Jan 31, 2013 at 11:12
  • 2
    Thanks I fixed the link and added another link. My answer is specific to to the U.S. system. Regarding citing ref. in a background section - in the US - it used to be a standard thing to do. Now there is a big concern that anything mentioned in a background section will be used against you somehow. If you do mention something in the body of the application but do not have it on an IDS the examiner is not required to look at it. You want him to look at it and check it off - less likely to come back and hurt you later.
    – George White
    Jan 31, 2013 at 17:57

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