IDS & 37 CFR 1.97

Five thousand cases pulled back from issue, almost all for an IDS

In 2025 more than 5,000 allowed applications were withdrawn from issue after the issue fee had been paid. The decision letters don't say why, so we checked the file histories. Nearly every one had an IDS filed the same day.

A petition to withdraw an application from issue after the issue fee is paid is almost always filed to put an RCE on the case (37 CFR 1.313(c)(2)). The question is what the RCE was for. The petition decisions don't say. The file wrapper does.

What the file histories show

We looked at the documents filed alongside a sample of recent withdrawals. In 97% of them an information disclosure statement was filed the same day, and most of those went through the USPTO's Quick Path IDS program (QPIDS). Only a few percent were for a claim amendment. Almost every withdrawal from issue is a reference that arrived too late.

What it costs after the issue fee

Once the issue fee is paid, a new IDS can only be considered if the case comes back out of issue. Through QPIDS that takes a petition to withdraw from issue (its fee is never refunded), the IDS with a 37 CFR 1.97(e) statement and fee, and an RCE with its fee. If the examiner finds nothing that requires reopening prosecution, the RCE fee comes back and the case goes back to issue. If prosecution is reopened, the case returns to examination, and the issue fee already paid is not refunded, though it can be applied if the case is allowed again.

Without a 1.97(e) statement, QPIDS is not available at all, and the only route is a full RCE.

What it costs one step earlier

Before the issue fee is paid, the same IDS can be filed under 37 CFR 1.97(d) with the same statement and the fee. No petition, no RCE, no trip out of issue. The difference between the two routes is often a matter of days.

Before the issue fee: a statement and a fee. After it: a petition, an RCE and weeks of delay.

The statement has its own clock. Under 37 CFR 1.97(e)(1), each reference must have been first cited in a communication from a foreign patent office in a counterpart application no more than three months before the IDS is filed. Miss that, and even QPIDS is closed. We covered that trap in when a wrong IDS certification becomes an RCE.

Getting it in on time

Forward a foreign office action to IPPrep Pro and it reads the citations, checks them against what is already of record, works out which certification and fee apply for where the case stands, and prepares the IDS. It sets the deadline from the office action date and sends reminders while the simple route is still open, and after allowance it tells you the IDS has to go in before the issue fee is paid. See the IDS walkthrough.

Figures come from the USPTO Petition Decisions data on the Open Data Portal (decisions through October 2026); fees are the USPTO's large-entity amounts. This article is general information about USPTO practice, not legal advice. Confirm current rules and fees against the MPEP and the USPTO fee schedule for any specific matter.

File the IDS before the issue fee

IPPrep Pro reads the foreign office action, prepares the IDS, and reminds you while the simple route is still open. Now in beta.

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