USPTO To Implement Pilot Program For Considering Information Disclosure Statements Filed in Allowed Cases

by Brian Fletcher on May 10, 2012

More good news from the United States Patent and Trademark Office (USPTO).  The USPTO will implement a pilot program, Quick Path IDS (QPIDS), for considering Information Disclosure Statements (IDS) filed in allowed cases that have not yet issued.  The QPIDS pilot program will run from May 16, 2012 to September 30, 2012.  The purpose of the pilot is to eliminate, or at least reduce, the need for filing a Request for Continued Examination (RCE) after allowance in order to have an IDS considered. Examiners will be authorized non-production time to consider IDSs for these applications, both before and after payment of the issue fee.

There will be two paths for this pilot, depending on when the IDS is filed relative to the payment of an issue fee:

IDS filed prior to or on the same day as payment of the Issue Fee

This portion of the QPIDS Pilot Program is available for utility, plant, reissue, and design applications.  If an IDS is filed in a utility, plant, or reissue application prior to or on the same day as the payment of the issue fee, the examiner will be authorized three hours of nonproduction time to review the IDS.  For design applications, one hour of non‐production time is authorized for review of the IDS.  The processing and handling of the IDS will be unchanged from current practice, unless the examiner determines that the IDS necessitates reopening of prosecution. If the examiner determines that the IDS necessitates reopening of prosecution, the examiner will complete a PTO‐2300 (Notification Of Reopening Of Prosecution Due To Consideration Of An Information Disclosure Statement Filed After Mailing Of A Notice Of Allowance) to notify the applicant of the need to reopen prosecution. The examiner will post the form to the Technology Center (TC) Director for signature. Posting of the form to the TC Director will stop the examiner’s docket management clock, and notify the Office of Publications of the withdrawal. In that case, the disposal count will not be withdrawn from the examiner. The application will be withdrawn from issue and placed on the examiner’s Amendments tab. When the application is subsequently acted on, the examiner will be credited with additional appropriate credit as with any other amended application (0.25 counts for a final rejection and 0.50 counts for a disposal, or 0.75 counts for the disposal if no final rejection is done).

IDS filed after payment of the Issue Fee

This portion of the QPIDS Pilot Program is available only for utility and reissue applications. Design applications are not eligible because 37 CFR 1.114 is not applicable to design applications. Plant applications are not eligible because ePetitions may not be filed in plant applications.  Under this pilot program, an IDS filed after the payment of the issue fee must be filed with the necessary statement under 37 CFR 1.97(e) and fee, a provisional RCE, authorization to charge the RCE fee, and a grantable e‐petition and fee to withdraw the application from issue pursuant to 37 CFR 1.313(c).  The examiner will be authorized three hours of non-production time to consider the IDS. The processing and handling of the IDS will be unchanged from current practice, unless the examiner determines that the IDS necessitates reopening of prosecution. If the examiner determines that the IDS necessitates reopening of prosecution, the examiner will complete a PTO‐2300 form to notify applicant that the RCE will be processed. After reopening of prosecution, the application will be placed on the examiner’s Continuing New tab. As with current practice, no credit will be withdrawn due to the filing of the RCE and the examiner will receive production credit as appropriate for work on the RCE.  If processing of the provisional RCE is unnecessary, the examiner will mail a Corrected Notice of Allowability and the RCE fee will be refunded to applicant. If any amendments (e.g. under 37 CFR 1.312) are filed with the provisional RCE, the RCE will be automatically processed and placed on the examiner’s Continuing New tab.

Again, this is a welcome development from the USPTO. Applicants are seldom thrilled to file an RCE to get an IDS considered when a new reference comes to light after receiving a Notice of Allowance. This initiative serves to promote the disclosure of references that may be material to the patentability of an applicant’s claims and helps to promote strong patents.

{ 2 comments }

Drea June 27, 2012 at 11:55 am

I see the QPIDS information on the USPTO site for IDS’s filed after payment of the issue fee, but I can’t find the information for IDS’s filed before or on the same day as the issue fee. Can you please share where you found this information? Thank you!

Brian Fletcher August 22, 2012 at 2:03 pm

The info in the post was perhaps wishful thinking and was based on another source. The QPIDS info on the USPTO cite should be used.

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