USPTO Seeks Your Input on the Future of IDS Practice

During the USPTO’s September 13th Patent Quality Chat, the Office provided additional details regarding its announcement that it is seeking to implement a program that will alleviate applicants’ burden in bringing references cited in related applications to the attention of the Office. As we previously reported, the USPTO is exploring how to best utilize available electronic resources to automatically provide examiners with access to information (e.g., prior art, search reports, etc.) from related applications with the aim of increasing patent examination quality and efficiency. Related applications might include, for example, domestic child or parent applications and foreign counterparts.

In particular, the USPTO highlighted the potential use of Global Dossier, which currently permits the sharing of filewrapper information across the world’s five largest patent offices (USPTO, JPO, EPO, SIPO, and KPO) to the public and to examiners in each office. The Office suggested, for example, that search and examination information created by a foreign office could automatically be imported into a pending related U.S. application, giving Examiners early and immediate access to potentially relevant prior art. Although this initiative is still in the exploratory phase, if implemented, such a program could represent a significant reduction in applicant burden and expense. When asked whether this proposed system could extend to domestic applications being prosecuted in parallel by the same applicant, though the applications are not within the same family, the USPTO stated that was also a topic for consideration.

The USPTO also stated that it is considering removing the listing of “References Cited” from the front page of patents. This information can easily be accessed electronically, noted Deputy Commissioners Powell and Bahr, and removing it, perhaps along with other front page information, would streamline the issuance process.

Significant questions about these proposals remain to be addressed. Would an applicant still be required to file an IDS even in view of automatic importing of prior art information from related and counterpart applications? Would an automatic electronic import of all cited art from related applications overburden examiners? Would foreign office actions be imported into the filewrapper? How would removing the listing of references from the front page of the patent impact searching?

The Office clarified that any eventual program is still in the planning stages, and, accordingly, the USPTO is now seeking public comments on the following questions:

1. In balancing the goals of examination quality and efficiency, should the USPTO monitor other applications, besides domestic parent and counterpart foreign applications, for relevant information located therein for consideration in the instant U.S. application? If so, which other applications should be monitored (e.g. siblings, applications involving the same or related technology, etc.)?
2. What is the most convenient way to bring an application to the USPTO’s attention that should be monitored for information during the examination of a U.S. application (e.g., automated system, applicant notifies the USPTO, etc.)?
3. How should the USPTO determine which information from the monitored applications to provide examiners while ensuring they are not overburdened with immaterial and marginally relevant information?
4. If the USPTO were to implement a fully automated system to import information from applicant’s other applications, how should the USPTO document the information automatically imported into the image file wrapper of the instant U.S. application? For example, should the record reflect which domestic parent or counterpart foreign application the information was imported from, the date that the information was imported, and whether the examiner considered the imported information?
5. Taking into consideration the information that is publicly available in PAIR, what information should be part of a patent? For example, should prior art references and classification information still be listed on the front page of a patent?

To facilitate public commentary and discussion, the USPTO is hosting a Roundtable on September 28, 2016. Advance registration is required to attend the program and anyone may also submit a request to present at the roundtable. The deadline to register or submit a request to present is September 21, 2016. More information about the event may be found here.

Written comments may be submitted to the USPTO on or before October 28, 2016.