[author: Courtenay C. Brinckerhoff]
The USPTO has announced a new pilot program to permit Applicants to obtain consideration of certain Information Disclosure Statements (IDSs) after the Issue Fee has been paid without having to reopen prosecution. The “Quick Path Information Disclosure Statement (QPIDS) Pilot Program” takes effect May 16, 2012 and will run through September 30, 2012 unless it is extended.
The Current IDS Rules
As recognized in the Federal Register Notice, the current IDS rules do not provide a mechanism to obtain consideration of a reference discovered after the Issue Fee has been paid, without reopening prosecution.
[A]pplicants who determine that they need to file an IDS after payment of the issue fee must either file a petition under 37 CFR § 1.313(c)(2) to withdraw the application from issue in order to permit entry of an RCE and have the accompanying IDS considered by the examiner, or file a petition under 37 CFR § 1.313(c)(3) to withdraw the application from issue for express abandonment in favor of a continuing application.
Applicants may go through this expensive and time-consuming process even if the reference is not believed to impact the patentability of the allowed claims, in order to ensure compliance with the USPTO’s “duty of disclosure” rules (which still have not been updated after Therasense!).
The QPIDS Pilot Program
Under the QPIDS Pilot Program, an Applicant will be able to obtain consideration of an IDS after the Issue Fee has been paid under certain, limited circumstances. Importantly, the Applicant must be able to make one of the statements set forth in 37 CFR § 1.97(e) regarding the items of information being submitted:
(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.
(If appropriate, a statement under 37 CFR § 1.704(d) also can be included to avoid a Patent Term Adjustment (PTA) deduction under 37 CFR § 1.704(c)(10).)
The filing as a whole must include
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A transmittal form that designates the submission as a QPIDS submission, such as form PTO/SB/09
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An IDS accompanied by a timeliness statement as set forth in 37 CFR § 1.97(e)
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The IDS fee set forth in 37 CFR § 1.17(p)
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An ePetition to withdraw the application from issue under 37 CFR § 1.313(c)(2)
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The petition fee set forth in 37 CFR § 1.17(h)
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An RCE, which will be treated as a “conditional” RCE
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The RCE fee under 37 CFR § 1.17(e).
All papers must be filed via the USPTO’s Electronic Filing System-Web (EFS-Web) and all fees must be paid by authorization to charge a deposit account.
Processing of a QPIDS Pilot Program IDS
According to the Federal Register Notice, if all papers are “compliant” with the QPIDS Pilot Program, the following will occur:
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the petition to withdraw will be granted immediately
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the IDS will be placed on the Examiner’s “expedited” docket
If the Examiner determines that prosecution does not need to be reopened:
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a corrected Notice of Allowability will be issued that acknowledges consideration of the IDS
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the RCE fee automatically will be refunded
If the Examiner determines that prosecution does need to be reopened:
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the RCE will be processed and placed on the Examiner’s docket
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the IDS fee automatically will be refunded
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a notice will be issued that prosecution is being reopened
On the other hand, if the QPIDS submission is not fully compliant with the Pilot Program, but “otherwise complies with the [RCE] requirements,” it will be treated as an RCE.
As always, Applicants “are strongly encouraged to file IDS submissions . . . as soon as the applicants become aware that it is necessary to submit an IDS.”
What About The Rest Of The RCE Problem?
While the QPIDS Pilot Problem may save some applications from languishing on an Examiner’s “special new” docket, it does not justify other USPTO policies that permit—or require—Examiners to put off reconsideration of an RCE for months or even years. Even under the QPIDS program, an RCE will be required if a foreign patent office identifies a relevant reference after the Issue Fee has been paid. That means that instead of considering the impact of the new reference while the invention and other prior art are fresh in the Examiner’s mind, the application will be put aside for as long as it takes to reach the top of the Examiner’s “special new” docket. By that time, the Examiner will have to refamiliarize him/herself with the case, and it will require more time to conduct the same analysis that could have been completed more efficiently when the RCE and IDS first were filed.
All in all, I find the USPTO’s treatment of RCEs wholly at odds with the agency’s focus on compact prosecution and efficiency. Prompt examination of all RCEs would reduce pendency and “promote efficiency in the examination process.”
