83 FR 53853 - Access to Relevant Prior Art Initiative

DEPARTMENT OF COMMERCE
Patent and Trademark Office

Federal Register Volume 83, Issue 207 (October 25, 2018)

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.

[Federal Register Volume 83, Number 207 (Thursday, October 25, 2018)]
[Notices]
[Pages 53853-53856]
From the Federal Register Online  [www.thefederalregister.org]
[FR Doc No: 2018-23338]


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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.

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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

[[Page 53854]]

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 
[email protected] 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 [email protected] or Matthew Sked, 
Senior Legal Advisor, Office of Patent Legal Administration, by 
telephone at 571-272-7627, or by email to [email protected]. 
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 
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'') 
Sec. Sec.  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 
Sec.  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 
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

[[Page 53855]]

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 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 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 Sec.  609.02. Any

[[Page 53856]]

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 Sec.  
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 Sec.  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 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.

    Dated: October 19, 2018.
Andrei Iancu,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 2018-23338 Filed 10-24-18; 8:45 am]
 BILLING CODE 3510-16-P