| Examination Instructions and Guidelines |
Referenced Items (240, 241, 242, 243, 244, 245, 246, 247, 248, 249, 250, 251, 252, 253, 254, 255, 256, 257, 258, 259, 260) |
(248) DEPARTMENT OF COMMERCE
Patent and Trademark Office
[Docket No.: PTO-P-2018-0051]
Access to Relevant Prior Art Initiative
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Notice.
SUMMARY: The United States Patent and Trademark Office (USPTO) is
implementing the first phase of the Access to Relevant Prior Art Initiative
("RPA Initiative") to import citations (e.g., bibliographic data on forms
PTO/SB/08 and PTO-892) from the immediate parent application into the
continuing application. The citations corresponding to the documents
considered by the examiner in the continuing application will be printed on
the face of the patent issuing from the continuing application without the
applicant having to resubmit the information on an Information Disclosure
Statement. Additionally, an applicant's duty to disclose information in the
continuing application will continue to be satisfied for information
considered in the parent application and will be satisfied for any
additional information made of record by the Office in the continuing
application. The RPA Initiative is being developed in response to public
input following an August 29, 2016, notice and September 28, 2016,
roundtable event on leveraging electronic resources to retrieve information
from applicant's other applications. The USPTO plans to implement the RPA
Initiative in phases to consider and address public and examiner feedback
at each phase and determine how to effectively expand the RPA Initiative in
future phases.
DATES: Applicable Date: November 1, 2018.
ADDRESSES: The RPA Initiative will be implemented in stages without a
comment deadline. Comments will be accepted on an ongoing basis.
Written suggestions and comments should be sent by electronic mail to
PriorArtAccess@uspto.gov or via the IdeaScale tool available at
https://uspto-priorart.ideascale.com. Comments also may be submitted by
postal mail addressed to: Mail Stop Comments - Patents, Commissioner for
Patents, P.O. Box 1450, Alexandria, VA 22313-1450, marked to the attention
of Michael Neas, Deputy Director, International Patent Legal
Administration.
FOR FURTHER INFORMATION CONTACT: For questions or comments regarding the
RPA Initiative in general, please contact Michael Neas, Deputy Director,
International Patent Legal Administration, by telephone at 571-272-3289, or
by email to michael.neas@uspto.gov or Matthew Sked, Senior Legal Advisor,
Office of Patent Legal Administration, by telephone at 571-272-7627, or by
email to matthew.sked@uspto.gov. Questions regarding a specific application
should be directed to the Technology Center examining the application.
SUPPLEMENTARY INFORMATION:
I. Background
On August 29, 2016, the USPTO issued a notice seeking public feedback
regarding how to efficiently utilize information from applicant's other
applications having the same or substantially the same disclosure to
provide examiners with relevant information at the earliest stage of
examination. See Request for Comments and Notice of Roundtable Event on
Leveraging Electronic Resources to Retrieve Information from Applicant's
Other Applications and Streamline Patent Issuance, 81 FR 59197 (August 29,
2016). The notice announced a Roundtable that was held on September 28,
2016 and requested written comments by October 28, 2016. In response, the
Office received twenty-six comments from a diverse group of stakeholders
including intellectual property organizations, companies, law firms and
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individuals. Most of the stakeholders supported a program where the USPTO
would automatically monitor related applications for relevant information
therein for consideration during the examination of a U.S. application.
However, stakeholder views varied on the optimal scope of the program and
best method for implementation. Accordingly, the USPTO will implement the
RPA Initiative in phases to consider and address public and examiner
feedback at each phase. This feedback will be used to determine if the
first phase needs adjustment, and how to expand the RPA Initiative
effectively in future phases.
Applicants and other individuals substantively involved with the
preparation and/or prosecution of a U.S. non-provisional application have a
duty to submit to the USPTO information which is material to patentability
as defined in 37 CFR 1.56. The provisions of 37 CFR 1.97 and 37 CFR 1.98
provide a mechanism by which patent applicants may comply with the duty of
disclosure provided in 37 CFR 1.56. An information disclosure statement
(IDS) filed in accordance with the provisions of 37 CFR 1.97 and
37 CFR 1.98 will be considered by the examiner assigned to the application.
Citations listed in an IDS (e.g., on form PTO/SB/08 and equivalents) and
considered by the examiner will be printed on the patent and distinguished
from citations that were cited by the examiner and listed on a form PTO-892
(examiner citations will be marked with an asterisk). See Manual of Patent
Examining Procedure, Rev. 08.2017, Jan. 2018 (referred to herein as "MPEP")
§§ 609 and 609.06.
Under current practice, when filing a continuing application that claims
benefit under 35 U.S.C. 120 to a parent application (other than an
international application for patent under the Patent Cooperation Treaty
(PCT) that designated the United States), a listing of information which
has been considered by the examiner in the parent application need not be
resubmitted in the continuing application unless the applicant desires the
information to be printed on the patent. Specifically, "(t)he examiner will
consider information which has been considered by the Office in a parent
application . . . when examining: (A) A continuation application filed
under 37 CFR 1.53(b), (B) a divisional application filed under
37 CFR 1.53(b), or (C) a continuation-in-part application filed under
37 CFR 1.53(b)." MPEP § 609.02(II)(A)(2).
II. RPA Initiative
After careful consideration of the input from the public and examiners
on the prior art initiative announced in the August 29, 2016 notice, the
USPTO is implementing the RPA Initiative that will leverage electronic
resources to improve examiner's access to relevant information from
applicant's other related applications. As indicated previously, the USPTO
will be implementing the RPA Initiative in phases to evaluate public and
examiner feedback at each phase to address concerns and determine the ideal
course for future expansion of the RPA Initiative.
In the first phase of the RPA Initiative, the USPTO will import the
citations listed on forms PTO/SB/08 (or equivalents) and PTO-892 in the
immediate parent application into the continuing application. If compliant
with 37 CFR 1.98 in the parent application, the examiner will consider the
documents that correspond to these citations and the citations will be
printed on the patent. This will eliminate the need for applicant to submit
an IDS in the continuing application for the purpose of having these
citations printed on the patent. Additionally, an applicant's duty to
disclose information under 37 CFR 1.56 in the continuing application will
continue to be satisfied for information considered in the parent
application and will be satisfied for any additional information made of
record by the Office in the continuing application.
In subsequent phases of the RPA Initiative, the USPTO will consider
providing examiners access to citation information from other sources such
as other related U.S. applications, international applications under the
PCT, and counterpart foreign applications of the same applicant. The
selection of these sources and the timetable for expansion will be
dictated, at least in part, by evaluating the first phase including
feedback on the RPA Initiative from the public and examiners.
This first phase will also begin with a targeted release of a newly
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developed interface to a subgroup of examiners from a limited number of
selected art units. In subsequent phases of the RPA Initiative, the USPTO
plans to provide the interface to more examiners when the RPA Initiative
proves scalable.
III. Structure of the First Phase of the RPA Initiative
(1) Overview
In the first phase of the RPA Initiative, applicants of a continuing
application included in the RPA Initiative will not need to submit an IDS
in a continuing application for information cited in the parent application
in order for the corresponding citations to appear on the face of any
patent issuing from the continuing application. Instead, IDS citations
listed on form PTO/SB/08 (or equivalents) in the parent application, as
well as citations listed on form PTO-892 (Notice of References Cited) in
the parent application, will be imported into the continuing application.
Those citations considered by the examiner in the continuing application
will be printed on any patent issuing from the continuing application and
distinguished from the other citations of record. This first phase will be
targeted to a select group of examiners and limited to continuing
applications filed on or after the effective date of November 1, 2018 with
a single parent application.
(2) Conditions for Inclusion
An application included in the first phase of the RPA Initiative will
meet the following conditions.
i. Types of Applications. The application is a non-reissue, non-
provisional application filed under 35 U.S.C. 111(a) with a claim for
benefit under 35 U.S.C. 120 or 121 of only a single prior U.S. application
(i.e., immediate parent application, referred to herein as "parent
application"). The parent application must have been filed under
35 U.S.C. 111(a) or have entered the national stage pursuant to
35 U.S.C. 371. The parent application can claim priority or benefit of
other applications only under 35 U.S.C. 119. For example, it cannot include
any claims for benefit under 35 U.S.C. 120, 121, 365(c) or 386(c).
ii. Art Unit Requirement. The application is assigned to one of the
art units that will be listed on the RPA Initiative website
https://www.uspto.gov/patents-getting-started/PriorArtAccess.
iii. Timing. The RPA Initiative will initially apply to a small group of
continuing applications filed on or after the effective date of November 1,
2018. The RPA Initiative will then expand to a larger group of applications
filed on or after January 1, 2019. This information will be listed on
the RPA Initiative website
https://www.uspto.gov/patents-getting-started/PriorArtAccess. The claim for
benefit to a parent application must be made in the continuing application
and reflected on the filing receipt before the continuing application
completes pre-examination processing.
The USPTO cannot accept requests to have an application entered in the
first phase of the RPA Initiative.
(3) Art Units in the First Phase
The first phase will begin with a small group of examiners on
November 1, 2018, and increase to a larger group on January 1, 2019.
The art units will be listed on the RPA Initiative website
https://www.uspto.gov/patents-getting-started/PriorArtAccess before the
November 1, 2018 effective date.
The art units participating in the first phase of the RPA Initiative
will be chosen to ensure that within the first twelve months of the RPA
Initiative, data is acquired on approximately 175 applications across the
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examining corps. Specifically, the USPTO is considering each art unit's
current backlog of continuing applications and the projected number of
continuing application filings expected in the first year of the RPA
Initiative. This targeted selection of art units and the number of
applications is designed to provide relevant feedback in a timely manner
and allow the RPA Initiative to expand to the next phase in an expeditious
manner.
Note, if the application is initially assigned to an art unit within the
RPA Initiative and is later transferred to an art unit outside the RPA
Initiative, the application will remain in the RPA Initiative and will be
treated in accordance with this notice.
(4) Determination of Applications for Inclusion in the RPA Initiative
The USPTO will determine whether an application meets the conditions for
inclusion in the first phase of the RPA Initiative after the Office of
Patent Application Processing completes pre-examination processing of the
continuing application. That is, a filing receipt has been issued, there
are no outstanding pre-examination notices (e.g., Notice to File Missing
Parts), and the application has completed classification. At this point,
the continuing application will be evaluated for inclusion in the RPA
Initiative. Once it has been determined that the continuing application
meets the conditions for inclusion in the first phase of the RPA
Initiative, the citations from the parent application, as specified herein,
will be imported into the continuing application. Concurrent with the
importation, a Notice of Imported Citations will be generated and provided
to the applicant.
The Notice of Imported Citations will indicate that the continuing
application has been entered in the first phase of the RPA Initiative and
will list the citations that have been imported into the continuing
application under examination. There is no requirement for the applicant to
reply to the Notice of Imported Citations. However, applicant may inspect
the Notice of Imported Citations to determine what citations have been
imported into the continuing application under examination.
Applications included in the RPA Initiative will not be expedited or
given special status due to inclusion into this RPA Initiative. The
continuing application will be taken up for examination in the order it is
filed in accordance with MPEP 708. Once the continuing application is taken
up for action, the examiner will consider the imported information in due
course, similar to the consideration of other IDSs filed in the
application. There is no mechanism for removing an application from the RPA
Initiative.
(5) Citations Imported
All citations, both considered and unconsidered in the parent
application, will be imported into the continuing application. The
citations are those corresponding to U.S. patent documents, foreign patent
documents, and non-patent literature (NPL) documents, contained on an IDS
listing (e.g., PTO/SB/08 or equivalents) or PTO-892 in the file wrapper
record of the parent application at the time inclusion into the RPA
Initiative is determined. If available in the parent application, the
examiner will be provided ready access to copies of the foreign patent
documents and NPL documents associated with the imported citations as well
as any corresponding translations or explanations of relevance. Though
copies of documents corresponding to the imported citations will not be
available in the electronic file wrapper of the continuing application to
applicants and the public, such copies can be accessed in the electronic
file wrapper of the parent application by the applicant of the parent
application through the USPTO's Private Patent Application Information
Retrieval (PAIR) system
(https://ppair.uspto.gov/TruePassWebStart/AuthenticationChooser.html), or
by the public by obtaining a certified copy of file history of the parent
application (http://ebiz1.uspto.gov/oems25p/index.html). This is consistent
with current practice where a copy of a document considered by the examiner
in the parent application (except where the parent is an international
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application) is not required to be filed in the continuing application for
consideration, and, therefore, is not available in the electronic file
wrapper of the continuing application. See 37 CFR 1.98(d) and
MPEP § 609.02. Any citations in the parent application not contained on an
IDS listing or PTO-892 form will not be imported, including, for example,
citations in a third-party submission under 37 CFR 1.290, Office actions,
applicant responses, citations listed in the specification, affidavits/
declarations, etc.
Note that in the first phase of the RPA Initiative, the Office will
perform only a single importation of citations from the parent application.
Any citations from IDS listings or PTO-892 forms appearing in the parent
application after this single importation occurs will not be imported. To
have such later-appearing citations printed on a patent issued from the
continuing application, applicant must submit an IDS with the later-
appearing citations.
(6) Examiner Consideration
Examiners will consider all documents corresponding to the imported
citations that are compliant with 37 CFR 1.98 in the parent application. As
explained previously, the imported citations will be listed on the Notice
of Imported Citations, which will be given to the applicant at the time of
importation and will be viewable in the electronic file wrapper record of
the continuing application via the USPTO's PAIR system. The examiner will
consider the information corresponding to the imported citations to the
same extent as information submitted by the applicant in an IDS. See MPEP
§ 609.05(b).
The examiner will indicate consideration of the imported citations in a
Notice of Consideration. Examiners will strike through each citation whose
document was not considered in the continuing application. This includes
any citation that was not compliant with 37 CFR 1.98 in the parent
application (e.g., no copy was submitted) or the examiner was unable to
consider the relevance of the imported citation for some other reason.
However, citations that were not compliant under 37 CFR 1.97 in the parent
application will be considered by the examiner in the continuing
application, if compliant with 37 CFR 1.98. The examiner should inform the
applicant in the first Office action of the reason(s) a citation was not
considered. Applicant may then file an IDS to correct the deficiency in the
imported citations. Note that the date the IDS is filed to correct the
deficiency in the continuing application is the date for determining
compliance with the timing requirements of 37 CFR 1.97. See MPEP
§ 609.05(a).
The examiner's signature on the Notice of Consideration will indicate
that the documents corresponding to all citations that have not been lined
through have been considered. The Notice of Consideration should be
provided with the first Office action on the merits in the continuing
application.
(7) Publication of Imported Citations
All citations that have been imported from the parent application and
indicated as considered on the Notice of Consideration will be printed on
the patent issuing from the continuing application. These imported
citations will be marked with a double-dagger on the patent to distinguish
them from the other citations of record. If an item of information is cited
more than once on the record (e.g., in a Notice of Consideration and on an
IDS), the citation will be listed only once on the patent and will be
distinguished as a citation that has been imported from a related
application.
IV. Future Phases
As indicated previously, this RPA Initiative seeks to import relevant
information for consideration by the examiner at an early time in
prosecution while reducing the need for applicants to submit this same
information in later-filed applications. The RPA Initiative will begin with
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the first phase outlined in section III. The USPTO expects to expand this
RPA Initiative in subsequent phases to further enhance examination quality
and reduce the need for applicants to resubmit citation lists and
references.
The USPTO is evaluating how to expand the RPA Initiative in future
phases and will use the data acquired in the first phase in making this
determination. Currently, the USPTO is considering a first expansion of the
RPA Initiative (second phase) to include the importation of U.S. and
foreign patent citation information from related PCT and counterpart
foreign applications. However, this could change based on the feedback
received from examiners and stakeholders in the first phase. Further, the
RPA Initiative may be expanded to increase the number of times information
is imported from the parent application, as well as encompass more art
units within the USPTO so that it will eventually be applicable in all
applications regardless of classification.
The timetable for expansion and the chosen sources of expansion will be
determined based upon the feedback obtained in the first phase. Applicants
are encouraged to provide their feedback on the RPA Initiative to help the
USPTO determine how best to expand the RPA Initiative in the next phase and
in any future phases. Comments are preferred using the IdeaScale tool which
is available at https://uspto-priorart.ideascale.com.
October 19, 2018 ANDREI IANCU
Under Secretary of Commerce for Intellectual Property and
Director of the United States Patent and Trademark Office
[1456 OG 200]