Using the USPTO Citation List and eIDS BETA
Executive Summary
Chinese applicants can reduce the cost of preparing an information disclosure statement (IDS) by giving their U.S. patent practitioner a complete, organized set of references and source reports. The USPTO’s free Global Dossier service and Citation List/eIDS BETA can help collect citation data and reduce manual entry. Further savings can come from checking earlier disclosures, using suitable existing English materials, and sending CNIPA communications promptly. These steps can reduce retrieval, translation, and repeat preparation work. Government fees and professional fees remain separate, and actual professional-fee savings depend on the agreed scope and pricing. The central task is to make the required disclosure less expensive to prepare while preserving an accurate filing and examination record.
I Where the Preparation Costs Arise
An IDS brings information to the USPTO’s attention during prosecution of a U.S. patent application. For a Chinese applicant with a U.S. counterpart, a CNIPA search report or examination opinion may identify documents that warrant disclosure. The underlying duty concerns information material to patentability; it does not disappear because the examiner might find the same document independently or because the information appears in a foreign file. See 37 C.F.R. § 1.56(a)–(b) (2026).
Preparation becomes more expensive when U.S. counsel must reconstruct a citation list from scans, locate missing documents, clarify publication numbers, commission unnecessary translations, or determine whether the same references were already submitted. Much of that administrative work can be completed once by the applicant’s Chinese IP team or Chinese patent agency and reused across the family, with separate filing records for each U.S. application. U.S. counsel can then concentrate on disclosure requirements, timing, and the final submission.
For applicants domiciled in China, the division of work also needs to reflect the current representation rule. Since July 20, 2026, applicants domiciled outside the United States and its territories generally must be represented before the USPTO by a registered patent practitioner, either an attorney or a patent agent. The Chinese team can assemble the materials; the practitioner retains responsibility for the required legal review and signed submission. The rule turns on domicile, rather than Chinese nationality alone. See 37 C.F.R. § 1.31(a)(2) (2026); U.S. Pat. & Trademark Off., Requirement for Foreign Applicants to Use Patent Practitioner 1–2 (July 17, 2026), https://www.uspto.gov/sites/default/files/documents/memo-uscounsel-17jul2026.pdf.
II Use the Free Citation Tool to Reduce Manual Entry
Global Dossier is a free USPTO service that provides access to available published patent-family information and prosecution records. Its Citation List/eIDS BETA features can help collect citations associated with a family, identify the applications citing a document, and export a selected list to an editable PDF. USPTO training materials describe selecting family citations, filtering by office, and building a temporary collection of selected citations. For a Chinese team already reviewing a published family, these functions offer a starting point for an IDS package and can reduce retyping. See U.S. Pat. & Trademark Off., Global Dossier, https://www.uspto.gov/patents/basics/international-protection/global-dossier-initiative (last visited Nov. 5, 2026); Nelson Yang, U.S. Pat. & Trademark Off., Global Dossier 2024, slides 18–24 (2024), https://www.japio.or.jp/english/fair/files/2024/2024e04.pdf.
Use the export as preparation data. Check the original reports, confirm document identity, and complete the current filing requirements. The export itself does not file an IDS or establish that every relevant document has been captured. For an unpublished Chinese application or a family with incomplete public records, assemble the package directly from the actual search reports and examination communications. Waiting for publication or for a database update can undermine the timing savings discussed below.
III Prepare a Complete Handoff
A consistent package is often more useful than a large email attachment containing unindexed PDFs. The following items make the work easier to quote and perform. Confirm in advance whether counsel accepts an editable spreadsheet, a checked beta export, or both.
| Material from the Chinese team | How it reduces repeat work |
|---|---|
| Editable citation list with document numbers, kind codes, dates, and titles where applicable | Avoids rebuilding the bibliography and resolving ambiguous identifiers. |
| Legible, numbered copies of foreign references and nonpatent literature | Reduces retrieval time and makes each attachment easy to match to the list. |
| Original CNIPA report or opinion, its communication date, and the relevant family application numbers | Preserves the source and date information needed for timing and disclosure review. |
| Existing English abstracts, translations, and English search materials, identified by source | Lets counsel assess whether suitable English materials are already available. |
| Prior IDS filing and consideration records for each U.S. application | Supports duplicate checks, cumulative counting, and confirmation of examination status. |
Document identity matters. A Chinese application publication and the later granted patent may contain different information; matching their numeric stems does not establish that they are interchangeable. Likewise, an English-language member of a family may have different claims or disclosure. Keep the cited original identifiable and let counsel decide how to treat related versions. U.S. patent and published U.S. application copies ordinarily need not accompany an IDS, while foreign documents and nonpatent literature generally require legible copies, subject to applicable exceptions. See 37 C.F.R. § 1.98(a)(2), (b), (d) (2026).
IV Avoid Ordering Unnecessary Full Translations
A full, certified English translation of every Chinese reference is not an automatic IDS requirement. For information in another language, the rules require a concise explanation of relevance as presently understood by the individual designated under the rule as most knowledgeable about the information. A written English translation, or a relevant portion, must also be supplied if it is in the possession, custody, or control of, or readily available to, an individual covered by the disclosure duty. This is different from a blanket obligation to commission a new full translation for each reference. See 37 C.F.R. § 1.98(a)(3)(i)–(ii) (2026).
The MPEP identifies less burdensome ways to meet the explanation requirement. An English abstract may be sufficient. An English version of a foreign search report or office action can also suffice when it indicates the relevance of the cited information. The MPEP further states that an English translation need not be verified and recognizes reliable machine translations. An English-language family document can serve this purpose when it is actually a translation of the cited foreign document; family membership alone does not establish that equivalence. See U.S. Pat. & Trademark Off., Manual of Patent Examining Procedure § 609.04(a), pt. III (9th ed., rev. 01.2024, Nov. 2024) [hereinafter MPEP], https://www.uspto.gov/web/offices/pac/mpep/s609.html.
The practical cost step is to send available English materials with the Chinese original before commissioning translation work. Ask U.S. counsel to identify what is still needed: a concise relevance explanation, a better translation of particular passages, or more extensive translation for substantive analysis. A machine translation that satisfies a filing requirement may still be inadequate for understanding a technically difficult reference. Separate those tasks in the quote so that translation costs follow the actual need.
V Check Earlier Disclosures Before Paying to List Them Again
Duplicate checking can reduce professional work and official fees. The IDS size fee depends on the cumulative number of applicant-provided items in the particular U.S. application. Ordinarily, the same document listed twice counts twice, including when it appears in different IDS filings. An RCE does not reset the count. A child application has its own count; documents in a parent do not enter the child’s count merely because of the family relationship. Whether a document needs to be submitted in the child is a separate question for counsel. See U.S. Pat. & Trademark Off., Quick Reference Guide to the Information Disclosure Statement (IDS) Size Fee and Size Fee Assertion, questions 11–14, https://www.uspto.gov/sites/default/files/documents/quick-reference-guide-to-the-information-disclosure-statement-ids.pdf (last visited Nov. 5, 2026) [hereinafter IDS Size Fee Guide].
Consider an application with a cumulative count of 40 items. A new CNIPA report cites 20 documents, of which 12 are the same documents already properly submitted and considered in that U.S. application. Assuming counsel confirms that no new information requires an additional submission of those 12 documents, listing the eight new documents brings the count to 48. Listing all 20 again brings it to 60 and crosses the $200 size-fee threshold. This illustration concerns the size fee; any timing fee is assessed separately. See 37 C.F.R. § 1.17(v)(1) (2026); IDS Size Fee Guide, supra, question 12.
The check must include examination status, rather than the existence of an old submission receipt alone. A noncompliant IDS or an item the examiner did not consider may need corrective action. Also review the new report itself and any new reasoning it contains. Removing a duplicate document from the working list does not resolve whether the communication supplies additional material information.
VI Send CNIPA Communications Promptly to Preserve Filing Options
Early filing can avoid the separate IDS timing fee. Section 1.97(b) provides several alternative windows, including within three months of the relevant U.S. national filing or national-stage entry, or before the first office action on the merits. A further window applies before the first office action after an RCE. These windows do not remove an applicable size fee. After the early windows and before final rejection, allowance, or another action closing prosecution, section 1.97(c) generally requires a qualifying timing statement or the timing fee. The later stage governed by section 1.97(d), through payment of the issue fee, generally requires both. See 37 C.F.R. § 1.97(a)–(d) (2026).
For the foreign-office route under section 1.97(e)(1), each listed item must have been first cited in a communication from a foreign patent office in a counterpart foreign application no more than three months before the IDS filing. The relevant date is the office communication date, rather than the date the Chinese agent forwards it or U.S. counsel downloads it. A later repeated citation does not restart that period. Forward the complete communication promptly, identify its date, and let counsel assess the available statement and filing route. See 37 C.F.R. § 1.97(e)(1) (2026).
Identify the capacity in which CNIPA issued the document. A Chinese national application communication and a PCT search report issued by CNIPA as an International Searching Authority are not interchangeable for this purpose. The MPEP explains that a PCT application designating the United States is not a counterpart foreign application under section 1.97(e)(1). Counsel may need to evaluate a different statement or filing route. Delaying transmission can also increase the work needed after final rejection or allowance, sometimes including an RCE; an RCE is not an automatic consequence of every late reference. See MPEP § 609.04(b), pts. IV–V; 37 C.F.R. § 1.97(d)–(e) (2026).
VII Budget Official Fees Separately
As of November 5, 2026, the size-fee tiers are shown below. A filing within a tier already reached does not trigger that tier’s fee again. These fees have no small-entity or micro-entity discount. Previously paid applicable size fees are credited when a higher tier is reached. See 37 C.F.R. § 1.17(v) (2026); IDS Size Fee Guide, supra, questions 9, 18; U.S. Pat. & Trademark Off., USPTO Fee Schedule, https://www.uspto.gov/learning-and-resources/fees-and-payment/uspto-fee-schedule (last visited Nov. 5, 2026).
| Cumulative applicant-provided items | Size fee when crossing into the tier |
|---|---|
| 50 or fewer | $0 |
| 51–100 | $200 |
| 101–200 | $500 less applicable size fees already paid |
| 201 or more | $800 less applicable size fees already paid |
When required, the separate timing fee under section 1.17(p) is $280 for a large entity, $112 for a small entity, and $56 for a micro entity. Eligibility for entity discounts is a separate determination. A timely IDS with 50 or fewer cumulative items may therefore have no USPTO IDS fee, while an IDS filed in an early window can still incur a size fee if its cumulative count crosses a threshold. See 37 C.F.R. §§ 1.17(p), 1.97(b)–(d) (2026); U.S. Pat. & Trademark Off., USPTO Fee Schedule, supra.
Dividing the references into several smaller IDS filings does not avoid the cumulative size thresholds and can create additional preparation charges. Conversely, waiting to combine documents into one filing can sacrifice an available timing window. Each IDS also requires the applicable size-fee assertion, including when no size fee is due. Use the current USPTO forms and have counsel check the count and assertion before submission. See IDS Size Fee Guide, supra, questions 2–3, 9–10, 16; U.S. Pat. & Trademark Off., Patents Forms, https://www.uspto.gov/patents/apply/forms (last visited Nov. 5, 2026).
VIII Turn Better Preparation into an Agreed Fee
Before the next IDS, ask counsel to quote a defined routine service based on a complete applicant-supplied package. Agree whether the price includes review of the source communication, duplicate and consideration checks, the relevance explanation, timing analysis, the size-fee assertion, filing, and a reporting copy. Identify separately priced work, such as missing-document retrieval, substantive analysis of a difficult reference, new translation, or a later-stage prosecution procedure. A beta export or applicant-prepared list does not by itself change an existing flat fee; the pricing arrangement needs to reflect the agreed allocation of work.
