USPTO Linking Post Grant Proceedings to Related, Pending Applications

As part of its Enhanced Patent Quality Initiative (EPQI), the USPTO is implementing a new program that will identify pending applications that are related to a patent at issue in a post grant proceeding and provide any prior art raised in that proceeding to the examiner handling the pending, related case.

The Office discussed the Post Grant Outcomes Pilot Program a number of times this year, including during an Enhanced Patent Quality Initiative Update at the February 2016 Public Patent Advisory Committee Quarterly Meeting and the January 12, 2016 Patent Quality Chat. At the April 27, 2016 Patent Quality Community Symposium, the USPTO provided additional details about the pilot and announced that the program will kick off within a few days of the Symposium.

The Office’s stated goal of the Post Grant Outcomes Pilot Program is to learn from all post grant proceedings and inform examiners of their outcomes. The program includes three objectives:

1. Enhanced Patentability Determinations in Related Child Cases
2. Targeted Examiner Training
3. Examining Corps Education

Enhanced Patentability Determinations in Related Child Cases

As noted above, the USPTO will identify pending, continuing applications that are related to patents that are the subject of one or more PTAB post grant proceedings and provide examiners with the petition, including prior art and expert witness information, submitted during that proceeding. As of the date of the Symposium, the USPTO already identified 300-400 pending applications that meet the pilot program criteria. Examiners can expect to start receiving access to the relevant petitions in those cases shortly. The USPTO plans for examiners to eventually have seamless access to the petition information in these cases through their desktop systems.

It is notable that examiners will only receive access to the filed petition, not any later-filed papers, such as a patent owner response, or the board’s final decision. For the initial iteration of the pilot program, the applicant of the related, pending case will not receive any notice from the examiner that he or she has received post grant outcome information to consider during examination of the application; rather, the Office believes that the existence of the pilot program is sufficient notice that this type of information will be available for the examiner’s use as he or she sees fit.

Targeted Examiner Training

The USPTO plans to collect data on whether, and how, examiners use post grant proceeding petition information in examining related, continuing applications. The data will be used to identify best practices for using post grant petitions during examination and create targeted examiner training on prior art searching techniques, additional sources of prior art, and claim interpretation.

Examining Corps Education

Currently, the USPTO provides a year-end review of patent case law. To supplement this program, information from the post grant outcomes pilot program, as well as trends and information related to outcomes of reissue and reexamination proceedings and litigation, will be used to create training for the entire examining corps, including periodic reviews of post grant outcomes focusing on technology sectors. The Office hopes that these programs will provide examiners with a fuller understanding of post-grant proceedings.