July 13, 2016
American Intellectual Property Law Association
The United States Patent and Trademark Office (USPTO) has recently introduced several initiatives and renewed some existing pilot programs that provide opportunities to reduce pendency and streamline prosecution with aims toward improving overall examination. For example, the USPTO recently introduced the Automated Interview Request (AIR) Tool and the Collaborative Search Pilot (CSP) Program, and it continues to renew the Quick Path Information Disclosure Statement (QPIDS) and the After Final Consideration Program 2.0 (AFCP 2.0). The USPTO also proposed a new framework for submitting Information Disclosure Statements (IDSs) throughout the various stages of prosecution. Each of these initiatives provides applicants and examiners with opportunities to reach consensus early in prosecution, reduce miscellaneous correspondence, and shorten application pendency.
Examiner interviews can be a key tool for advancing the prosecution of patent applications.1 A thirty-minute face-to-face or telephonic interview with the examiner often focuses both applicant and examiner on the technology, claim interpretation, and prior art and often replaces several back-and-forth written office actions and responses. This is especially true when there appears to be a lack of mutual understanding through written remarks and arguments. As a result, when "[p]roperly conducted, an interview can bridge the gap between an examiner and an applicant."2
Currently, Applicants can schedule an interview by directly calling the examiner-of-record3 or by submitting an applicant Initiated Interview Request form.4 While these methods are often effective, it can take some time to coordinate schedules and process communications. Recognizing this, in September 2015, the USPTO unveiled a new online interview scheduling tool.5 Designed to streamline the scheduling process, the tool does not change the substantive rules of interview practice before the USPTO.6
The online form for requesting an interview is straightforward, and applicants can request in-person, telephonic, or even video conference interviews. Video conferencing permits face-to-face interviews, which many practitioners believe are helpful, without the necessity for travel, a potentially important consideration given the USPTO’s newly opened satellite offices. Applicants who want to conduct a video conference interview but lack access to their own web cameras can also use the AIR form to request use of a public interview room in Alexandria, Detroit, or Denver.7
The three requirements for requesting interviews via the AIR tool are relatively easy. First, applicants must provide authorization to use the Internet, including the WebEx conference system, for communications about an application.8 Although the USPTO has recently updated its policies to allow for verbal authorization, it continues to recommend submitting written authorization.9 Notably, use of the AIR form to request an interview automatically provides written authorization. Second, interviews requested via AIR must be requested at least one week in advance. And third, the interview request form only allows the applicant to request a single day and time for the interview. In effect, the AIR tool helps streamline interview requests in general, and should make it easier for applicants and examiners to conduct interviews by video conference and make face-to-face interviews more convenient.
In addition, the USPTO recently signed two independent collaborative Memoranda of Cooperation, establishing collaborative search pilot programs with both the Japan Patent Office (JPO) and the Korean Intellectual Property Office (KIPO).10 The purpose of these programs is to provide consistent examination among offices and to provide applicants with search results from two patent offices early in the examination process. The programs will run for two years, with an option to extend. Applicants can petition for entry into the CSP for free, and CSP applications will be taken out of turn, potentially expediting examination.11
In effect, the CSP is actually two pilot programs under one umbrella—the CSP-JPO pilot program for U.S. and Japanese applications and the CSP-KIPO pilot program for U.S. and Korean applications. The CSP-JPO and CSP-KIPO each have their own search and examination processes,12 but to qualify for either CSP program, applicants must meet the same criteria.
To place an application in the CSP program, applicants must file the appropriate petitions in both the USPTO and the JPO or KIPO.13 Both participating offices must approve the respective petitions before an application can be accepted into the program. Applicants must also consent to sharing information about their search results and opinions between the two participating offices.14 Currently, only new applications filed after March 13, 2013 (i.e., post-America Invents Act (AIA) U.S. applications that have not yet been examined) qualify for the CSP program.15 In addition, applications cannot have more than three independent claims and twenty total claims, and all the claims must be directed to a single invention.16 The one substantive requirement is that the claims in the U.S. application must correspond to the claims in the related JPO or KIPO application.17
The USPTO has also incorporated some aspects of the First Action Interview program (which bifurcates the search from substantive examination) into its examination of accepted CSP applications.18 In particular, instead of issuing a written first office action, the USPTO will issue a pre-interview communication providing the results of the prior art searches and the examiner’s initial consideration of the art with respect to the claims. The applicant may then conduct an interview with the examiner to review the search results before the examiner issues an office action. Alternatively, the applicant can submit a formal reply or simply forego the interview.
For the CSP-JPO program, a serial search is conducted with the USPTO and JPO sharing results before examination of the applications in either country.19 The patent office handling the first-filed application conducts an initial search and evaluation. The first office then sends its search results and comments to the second office, where the second office reviews the results and then conducts its own search. For example, if the USPTO is the second office, the USPTO will receive search results from the JPO, and will include those results and its own search results with the pre-interview communication. The USPTO will send its search results to the JPO, so that the JPO can send the USPTO results with a first office action in the Japanese application.
For the CSP-KIPO program, parallel searches in both the USPTO and KIPO are conducted prior to examination of the applications in either country.20 The USPTO generates a pre-interview communication based on its search results and sends it to the KIPO, and the KIPO generates a search report based on its results and sends it to the USPTO. The USPTO then mails its pre-interview communication and the KIPO search results in the U.S. application, and the KIPO sends its search results and the USPTO pre-interview communication in the Korean application.
Although the logistics in sharing the information may appear confusing on first glance, the process is straightforward, and despite a relatively recent institution (August 1, 2015, for CSP-JPO and September 1, 2015, for CSP-KIPO), applicants are already submitting petitions for entry.21 As of April 2016, thirty-one petitions have been received for the CSP-JPO program and fourteen have been granted by both offices. For the CSP-KIPO program, forty petitions have been filed and thirty-one have been granted by both offices. As with the USPTO’s Track One program, each CSP program has a limit on the number of petitions per year—200 for the CSP-JPO program and 400 for the CSP-KIPO program. The petitions filed to date represent approximately 8% of the yearly goals, so there is still an opportunity for applicants to take advantage of the CSP program.
For applicants with a post-AIA application in the United States and a corresponding application in Japan and/or Korea, the CSP provides for expedited examination without an additional program fee. This can be an attractive option for applicants to fast-track pending applications. And, applicants receive a pre-interview correspondence in the U.S. application which provides an opportunity to receive a preliminary analysis and interview early in prosecution. Nevertheless, one possible downside should be noted. Because the claims between the respective applications must correspond, it is possible that the claims in one jurisdiction may be limited by the substantive law in the other jurisdiction. At this time, it is not clear how the CSP program will address potential substantive differences between the countries’ examination practice and procedures.
The USPTO started the QPIDS pilot program in 2012 and has currently extended it through September 30, 2016.22 In short, QPIDS allows applicants to submit new references to the USPTO after the payment of the issue fee and have them considered without withdrawing the application from issue or requiring an automatic Request for Continued Examination (RCE).
All U.S. patent applicants have a duty to disclose information that is material to the patentability of the claims during prosecution.23 This duty extends until claims are cancelled, withdrawn from consideration, or issued in a patent.24 Failure to disclose a material reference may render a patent unenforceable for inequitable conduct during subsequent litigation.25 Although the duty to disclose persists until a patent issues, the ability to submit information for consideration becomes more limited during the later stages of prosecution.26 Before the QPIDS program, the only option to submit information available to applicants was withdrawing the application from issue and filing an RCE. This scenario, paying the issue fee and then learning about information that must be submitted, e.g., prior art cited in a related copending U.S. or foreign application, is not uncommon. Since 2012, the QPIDS program offers applicants in this situation a viable alternative to the costly and time-consuming RCE route.
To submit an IDS under the QPIDS program, an applicant must meet certain requirements. First, an applicant must certify that either (1) each item of information contained in the IDS was first cited in a communication from a non-U.S. patent office in a counterpart non-U.S. application no more than three months prior to the filing of the IDS; or (2) no item of information contained in the IDS was cited in a communication from a non-U.S. patent office in a counterpart non-U.S. application, and, to the knowledge of the person signing the certification after making a reasonable inquiry, no item of information contained in the IDS was known to any individual with a duty of disclosure more than three months prior to the filing of the IDS.27 Second, an applicant must file a petition to withdraw the application from issue to give the examiner time to review the reference(s).28 And third, an applicant must also file an RCE; however, the RCE is conditional and will only be processed if the submitted information requires reopening of prosecution.29
In addition, several fees are required under the QPIDS program, including the IDS fee, the Petition to Withdraw from Issue fee, and the RCE fee.30 These are comparable to the fees that an applicant would be required to pay for formally withdrawing the application from issue and filing an (unconditional) RCE.31 While QPIDS still requires the applicant to withdraw the application from issue, if the submitted information does not require prosecution to be reopened, the conditional RCE is not processed, and the RCE fee is refunded.
Based on anecdotal evidence, the USPTO reopens prosecution in relatively few cases where a reference is submitted using QPIDS. This may be because although information cited in a copending related foreign application may need to be submitted in an IDS, the information may not be more pertinent to the claims in the U.S. application than the art already considered by the examiner. Consequently, the QPIDS program may be a faster and less expensive way to submit an IDS after paying the issue fee and eliminate an unnecessary RCE.
As noted, the current regulatory framework for IDSs encourages prompt and early filing of information with the USPTO. As prosecution proceeds, submitting new information can potentially prolong examination, require additional fees, or in some cases require certifications about the submitted information. For example, if an applicant, late in prosecution, receives an office action in a related foreign application that cites new, never-before-cited references, the applicant can make a certification that such new information was previously unknown to the applicant and submit those references without a fee. But certifications are not without risk. The duty to disclose extends to all individuals involved in prosecution and may raise inequitable conduct issues during subsequent litigation. Specifically, 37 C.F.R. § 1.97(e) requires an applicant to certify that (1) each item of information contained in the IDS was first cited in a communication from a non-U.S. patent office in a counterpart non-U.S. application no more than three months prior to the filing of the IDS; or (2) no item of information contained in the IDS was cited in a communication from a non-U.S. patent office in a counterpart non-U.S. application, and, to the knowledge of the person signing the certification after making a reasonable inquiry, no item of information contained in the IDS was known to any individual with a duty of disclosure more than three months prior to the filing of the IDS.32 Given these stringent requirements, many applicants chose to avoid making such statements whenever possible.
The USPTO has however proposed a new framework that may simplify later-stage IDS practice. Under the proposed framework, applicants who become aware of material in the later stages of prosecution would have the option to either make a certification (like the existing framework) or pay higher fees. Under the current system, this option is during the relatively early stages of prosecution only.33 And in later stages, applicants are required to make a certification and pay a fee to submit an IDS.34 If the certification cannot be made, an applicant must file an RCE to submit the IDS, which can unnecessarily extend prosecution. While the QPIDS program is currently available for submitting information after paying the issue fee, the proposed framework would eliminate the QPIDS program and instead allow applicants to merely pay an additional fee to have their IDS considered after the payment of the issue fee.35 An overview of the proposed IDS framework is provided below:36
Time Period |
Proposed Requirement for Submitting IDS |
Up to three months from filing date or until the first office action on the merits |
No fee |
After the first office action on the merits but before the close of prosecution (e.g., before a final office action, notice of allowance, or Ex parte Quayle action) |
Pay the $300/$150/$75 fee |
After the close of prosecution but before the issue fee is paid |
Pay the $600/$300/$150 fee |
After the issue fee is paid but before the patent issues |
Petition to withdraw from issue, pay the petition to withdraw fee, and pay the $600/$300/$150 fee |
Notably, the fee to submit an IDS after the first office action but before a prosecution is closed would increase from $0 with a certification or $180 without a certification to $300 (with discounts available for small and micro entities).37 However, after prosecution is closed, applicants would be able to submit an IDS without making a certification under 37 C.F.R. § 1.97(e) or filing an RCE and instead could pay a $600 fee (with discounts available).38 Although the proposed fees are higher than the current framework, many applicants may find that the higher fees are less expensive than the alternatives (e.g., RCE, time spent investigating whether the certification can be made, or time spent on issues during later litigation).
The USPTO has also extended another popular program, AFCP 2.0, through September 30, 2016.39 Under the AFCP 2.0 program, examiners are given additional time to consider an applicant’s submissions (remarks and amendments) after a final office action. If the applicant’s submission meets certain requirements. The examiner may then consider the response under the AFCP 2.0 program if the search and consideration of the applicant’s submission can be concluded in the allotted time (three hours for plant and utility applications or one hour for design applications). Although there may be some delay from participating in the program (examiners have forty-five days to respond to a request, plus an additional ten days to conduct an interview), AFCP 2.0 can provide a significantly faster time to allowance than filing an RCE. Since its initial launch on May 19, 2013, the USPTO has extended the AFCP 2.0 program several times and it has received generally positive feedback from applicants and patent practitioners.40
To be eligible, the application must be a utility, design, or plant nonprovisional application that has received a final rejection. Eligible applications include national stage applications and continuing applications (e.g., divisional or continuation applications), but not reissue and reexamination applications. In addition, only one request for consideration under AFCP 2.0 may be filed in response to an outstanding final rejection. Second or subsequent requests for consideration under AFCP 2.0 filed in response to the same outstanding final rejection will be processed consistent with current USPTO practice concerning responses after final rejection under 37 C.F.R. § 1.116. In order to participate in AFCP 2.0, an applicant must include the following at filing:
1. a transmittal form, such as form PTO/SB/434, that identifies the submission as an AFCP 2.0 submission and requests consideration under AFCP 2.0;
2. response under 37 C.F.R. § 1.116, including an amendment to at least one independent claim that does not broaden the scope of the independent claim in any aspect;
3. a statement that the applicant is willing and available to participate in any interview initiated by the examiner concerning the accompanying response; and
4. any fees, such as extension fees under 37 C.F.R. § 1.136(a), that would have been necessary according to current practice concerning an after-final response under 37 C.F.R. § 1.116.41
Under the requirements, applicants must amend at least one independent claim; an applicant cannot just propose new or amended dependent claims. Because many applications include more than one independent claim, however, the program provides applicants an opportunity to amend some claims and present arguments alone with respect to others. The analysis of whether an amendment broadens the scope of the claim is analogous to the guidance for determining whether a reissue claim has been broadened. Thus, the amended claim cannot include subject matter that was not covered by the unamended claim, even if the amended claim may be considered narrower in other aspects.42 Finally, all papers associated with the AFCP 2.0 program must be filed via the USPTO’s Electronic Filing System-Web (EFS-Web).
If the requirements are not met, the examiner will treat the submission as a regular after-final submission under 37 C.F.R. § 1.116. If the requirements are met, the examiner will perform an initial review of the amendment to determine whether additional search or consideration would be required, and if so, whether such search or consideration would be possible within the allotted time. If the examiner decides that the search or consideration cannot be completed within the allotted time, the examiner will process the submission as a regular after-final submission under 37 C.F.R. § 1.116, likely resulting in an advisory action.
If the examiner determines that the amendment does not necessitate additional search or consideration, or if the examiner determines that additional search or consideration is required and could be completed within the allotted time, the examiner will consider whether the amendment places the application in condition for allowance in view of the search (if one is performed). If so, the examiner will enter the amendment and mail a notice of allowance. If the examiner remains unpersuaded, an interview will be conducted to discuss the amendment in view of the additional search.
During the interview, the examiner may discuss any previously cited prior art and any new prior art discovered through the new search. After the interview, the examiner again has the option of either allowing the application or issuing an advisory action. If the applicant declines the interview or is unavailable to schedule the interview within ten calendar days from the date the examiner first contacts the applicant, the examiner will proceed under current after-final practice.
AFCP 2.0 has been widely used by applicants as an opportunity to gain allowance after a final office action or further prosecution before appeal or filing an RCE. For example, by amending claims and presenting additional proposed amendments during the interview, AFCP. 2.0 provides the applicant and examiner an additional opportunity to discuss options that may lead to an allowance even after allowance.
With these new and extended programs, the USPTO offers applicants additional options to expedite and streamline prosecution, ensure timely consideration of references, and opportunities for applicants and examiners to reach consensus earlier in prosecution and work together toward allowance.
1 USPTO, Best Practices in Compact Prosecution Awareness Workshop, http://www.uspto.gov/sites/default/files/patents/law/exam/compact_prosecution.pdf.
2 USPTO Manual of Patent Examining Procedure (MPEP) § 713.
3 USPTO, Frequently Asked Questions (FAQs) for Conducting Interviews, http://www.uspto.gov/patents/law/ipractice/interview-faqs.jsp.
4 SeeMPEP § 713.01(IV).
5 USPTO Automated Interview Request (AIR) Form.
6 37 C.F.R. § 1.133; MPEP § 713; see also USPTO, Interview Practice, http://www.uspto.gov/patent/laws-and-regulations/interview-practice#step4.
7 USPTO, Public Interview Room, available at http://www.uspto.gov/sites/default/files/patents/law/ipractice/pubinterviewroom.pdf.
8 MPEP §§ 502.03, 713(II).
9 Change to Internet Usage Policy to Permit Oral Authorization for Video Conferencing Tools by Patent Examiners, 80 Fed. Reg. 23,787 (Apr. 29, 2015).
10 United States Patent and Trademark Office and Japan Patent Office Collaborative Search Pilot Program, 80 Fed. Reg. 39,752 (July 10, 2015); United States Patent and Trademark Office and Korean Intellectual Property Office Collaborative Search Pilot Program, 80 Fed. Reg. 39,412 (July 9, 2015).
11 USPTO, Collaborative Search Pilot Program (CSP).
12 USPTO, Collaborative Search Pilot Program (CSP), http://www.uspto.gov/sites/default/files/documents/GeneralCSPInfo.pdf.
13 The petition for the CSP-JPO program in the United States is available at http://www.uspto.gov/sites/default/files/sb0437jp.pdf. The petition for the CSP-KIPO program in the United States.
14 USPTO, Collaborative Search Pilot Program (CSP), http://www.uspto.gov/patents-gettingstarted/international-protection/collaborative-search-pilot-program-csp.
15 USPTO, Collaborative Search Pilot Program (CSP), http://www.uspto.gov/sites/default/files/documents/GeneralCSPInfo.pdf.
16 USPTO, Collaborative Search Pilot Program (CSP), http://www.uspto.gov/patents-gettingstarted/international-protection/collaborative-search-pilot-program-csp.
17 Id.
18 USPTO, Collaborative Search Pilot Program (CSP), http://www.uspto.gov/sites/default/files/documents/GeneralCSPInfo.pdf.
19 Id.
20 Id.
21 USPTO, Collaborative Search Pilot Program (CSP).
22 Quick Path Information Disclosure Statement (QPIDS) Pilot Program, 77 Fed. Reg. 27,443 (May 10, 2012); USPTO, Quick Path Information Disclosure Statement (QPIDS), http://www.uspto.gov/patent/initiatives/quick-path-information-disclosure-statement-qpids.
23 37 C.F.R. § 1.56.
24 See MPEP § 2001.
25 See, e.g., Therasense, Inc. v. Becton, Dickinson & Co., 649 F.3d 1276, 1288-89 (Fed. Cir.2011) (en banc); Chromalloy Am. Corp. v. Alloy Surfaces Co., 339 F. Supp. 859, 876 (D. Del.1972); see also MPEP § 2016.
26 37 C.F.R. § 1.97.
27 USPTO, Certification and Request for Consideration of an Information Disclosure Statement Filed After Payment of the Issue Fee Under the QPIDS Pilot Program, USPTO Form PTO/SB/09, http://www.uspto.gov/sites/default/files/forms/sb0009.pdf.
28 Id.
29 Id.
30 Id.
31 Id.
32 Id.
33 MPEP § 609.04(B); 37 C.F.R. § 1.17(p)
34 Id.
35 USPTO, Patent Fee Proposal Detailed Appendix, at slide 75 (Nov. 2015), http://www.uspto.gov/sites/default/files/documents/PPAC Detailed Appendix_Final.pptx.
36 Id. at slide 76.
37 Id. at slide 75.
38 Id.
39 USPTO, After Final Consideration Pilot 2.0.
40 Id.
41 After Final Consideration Pilot Program 2.0, 78 Fed. Reg. 29,117, 29,118 (May 17, 2013).
42 See MPEP § 1412.03.
Originally printed in American Intellectual Property Law Association on July 13, 2016. This article is for informational purposes, is not intended to constitute legal advice, and may be considered advertising under applicable state laws. This article is only the opinion of the authors and is not attributable to Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, or the firm's clients.
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