July 2012 Issue
Did You Know?
Under the new Quick Path Information Disclosure Statement (QPIDS) pilot program, the United States Patent and Trademark Office (USPTO) will allow applicants to submit an Information Disclosure Statement (IDS) after issue-fee payment. The program is intended to reduce the number of Requests for Continued Examination (RCEs) filed solely for the consideration of an IDS after the issue fee is paid.
Under the program, applicants may file an electronic petition in a case where the issue fee has already been paid to request the consideration of references in an IDS. Such references may include, e.g., intervening references published after a notice of allowance is received by an applicant, or references cited in a corresponding foreign application. The QPIDS pilot program will be available from May 16, 2012, to September 30, 2012, with an option to extend if successful.
QPIDS submissions must be made electronically, and will require an RCE, an IDS, and their required fees. The submission will be placed on an examiner’s “expedited docket,” requiring the examiner to review the submission in relatively short order. More particularly, QPIDS “submissions will be considered by the examiner before determining whether prosecution should be reopened. Prosecution will only be reopened where the examiner determines that reopening prosecution is necessary to address an item of information in the IDS. When the items of information in the IDS do not require prosecution to be reopened, the application will return to issue [and the RCE fee will be refunded], thereby eliminating the delays and costs associated with RCE practice.” Press Release, U.S. Patent & Trademark Office, USPTO to Test New Option for Information Disclosure Statements (IDS) (May 10, 2012), available at http://www.uspto.gov/news/pr/2012/12-32.jsp. If, however, the examiner determines that any item of information in the IDS necessitates reopening prosecution, the IDS fee will be refunded, and the examiner will proceed to consider the item(s).Thus, rather than having to file an RCE to ensure the USPTO considers newly discovered references in an already allowed application, applicants can now submit those references via a QPIDS submission. This may avoid the delays associated with current RCE practice, while affording applicants the security of having the references considered by the USPTO.