July 18, 2019

July 17, 2019

Subscribe to Latest Legal News and Analysis

July 16, 2019

Subscribe to Latest Legal News and Analysis

July 15, 2019

Subscribe to Latest Legal News and Analysis

USPTO Access To Relevant Prior Art Initiative

In an October 25, 2018 Federal Register Notice, the USPTO announced staged implementation of the first phase of an initiative aimed at “leveraging electronic resources to retrieve information” of record in one patent application for consideration in another. While the first phase of the Access to Relevant Prior Art Initiative is limited to importing citations from a parent application into its immediate child, it represents an important first step towards reducing the burdens of satisfying the Duty of Disclosure.

The Duty Of Disclosure In Continuing Applications

The substantive aspects of the Duty of Disclosure to the USPTO are set forth in 37 CFR § 1.56, while the procedural rules governing how to comply (i.e., the rules governing Information Disclosure Statements) are set forth in 37 CFR §§ 1.97 and 1.98. Further guidance is provided in MPEP § 609. As most stakeholders know, citations listed in an IDS and considered by the examiner are printed on the front page of the patent. (Citations cited by the examiner also are listed, and identified with an asterisk).

Under MPEP § 609.02(II)(A)(2), an applicant is not required to re-cite items in a continuing application that were cited in a parent application in order to satisfy the Duty as to those items. However, items cited in a parent application will not be printed on the front page of the continuing patent unless they are re-cited in the continuing application, i.e., unless the Applicant files an IDS citing the items. The first phase of the RPA will eliminate the need to re-cite such items in order to have them printed on the patent.

The Access to Relevant Prior Art Initiative

As set forth in the Federal Register Notice, under the first phase of the RPA:

[T]he 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.

However, the Notice cautions that during the first phase, “the Office will perform only a single importation of citations from the parent application.” Thus, any citations “appearing in the parent application after this single importation occurs will not be imported”–and so will not be printed on the continuing patent unless cited in an IDS in the continuing application.

RPA Applications

As set forth in the Notice, the first phase of the RPA Initiative will apply to only “a small group of continuing applications filed on or after … November 1, 2018,” and then will be expanded “to a larger group of applications filed on or after January 1, 2019.” The pools of applications are limited both by the types of applications and their priority claims and the Art Units in which they are examined.

  • The continuation application must be a non-reissue, nonprovisional application filed under 35 USC § 111(a) with a claim for benefit under 35 USC 120 or 121 of only a single prior U.S. application (the parent application).
  • The parent application must have been filed under 35 USC § 111(a) or have entered the national stage pursuant to 35 USC § 371. The parent application only can claim priority or benefit of other applications under 35 USC § 119 (e.g., to U.S. provisional or foreign applications).
  • The November 1, 2018 implementation will be for Art Unit 2131 only.
  • The January 1, 2019 implementation will be for eight additional art units: 1616, 1731, 2431, 2675, 2879, 2922, 3635, and 3753.
  • Future expansions to additional Art Units may be announced on the USPTO RPA Initiative webpage.

If a continuing application qualifies for the RPA Initiative, the qualified citations from the parent application will be imported into the continuing application and a Notice of Imported Citations listing the imported citations will be provided to the applicant.

  • All references cited in the parent application will be imported, even if they were not considered in the parent.
  • The examiner will consider all imported citations that complied with 37 CFR § 1.98 in the parent, and so indicate on a Notice of Consideration.
  • Imported citations will be marked with a double-dagger on the continuing patent.

The Duty Of Disclosure Under The RPA

The Notice draws an interesting distinction between which parent citations will be printed on a continuation patent and the Duty of Disclosure. In particular, the Notice states that “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.” Thus, while an IDS is required to have later-cited parent items printed on the continuation patent, and IDS is not required to satisfy the Duty of Disclosure as to those items.

Future Phases of the Access to Relevant Prior Art Initiative

While the USPTO is not committing to specifics of future phases, the Notices indicates that a next phase could include “providing examiners access to citation information from other sources such as other related U.S. applications, [PCT] applications …, and counterpart foreign applications of the same applicant.” Your feedback on phase one will be critical to expansion of the RPA, because “[t]he 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.”

© 2019 Foley & Lardner LLP


About this Author

Courtenay C. Brinckerhoff, intellectual property  law attorney, Foley & Lardner  Law Firm

Courtenay Brinckerhoff is a partner and intellectual property lawyer with Foley & Lardner LLP. Ms. Brinckerhoff’s practice focuses on client counseling in all aspects of obtaining, licensing and enforcing patents and conducting freedom-to-operate and due diligence investigations. She is chair of the firm’s IP Law and Practice committee, immediate past vice chair of the firm’s Chemical, Biotechnology & Pharmaceutical Practice and a member of the firm's Patent Trials group, Appellate Practice and Life Sciences Industry Team. She also is involved with Foley’s...