An IDS is Now a Powerful IPR Shield: Ecto World v. RAI

2025 thus far has brought a lot of attention to prior art search firms. 

Most recently, Ecto World, LLC v. RAI Strategic Holdings, Inc involved a post-grant challenge using prior art that had already been disclosed during prosecution. The USPTO Director clarified that when prior art is listed in an Information Disclosure Statement (IDS) and was considered by the examiner, it generally can’t be used later in an Inter Partes Review (IPR), unless the challenger can show the examiner made a material error. 

This creates a powerful tool for patent owners to potentially shield their patents from IPR challenges. However, the decision also introduces an important exception for “mega-IDSs,” where applicants submit an unusually large number of references without identifying particularly relevant ones when requested by the examiner.

The decision is likely to have significant implications for IPR strategies, encouraging patent owners to submit comprehensive IDSs during prosecution as a defensive strategy against future IPR challenges.  

From our perspective, this places significant value on the IDS, and the quality of prior art included therein. If you want to strengthen a patent, the clear message here is to put more emphasis on the front-end before and/or during filing by performing robust searching. Put the best prior art in front of the Examiner.

We are working with many of our clients now, on what we are calling “Ecto IDS searches” - which have the goal of putting the best prior art on the IDS to provide an effective IPR shield around the patent.  Think of this as a patentability search on steroids.    

Director Coke also echoed this recently, touting private sector search firms that can specialize in third party submissions and post-grant validity searching.