USPTO Announces Access to Relevant Prior Art Initiative to Import Prior Art Citations into Patent Applications

Patent Office magnified.On Thursday, October 25th, the U.S. Patent and Trademark Office published a notice in the Federal Register announcing the implementation of the first phase of the Access to Relevant Prior Art (RPA) Initiative. The initiative is being designed to reduce the burden placed upon patent applicants to comply with their duty of disclosure through the use of automated tools which import relevant prior art and other pertinent information into pending U.S. patent applications as quickly as possible.

The RPA Initiative was developed in response to public input coming from roundtable events in August and September which focused on leveraging electronic resources to retrieve information from other applications filed by a patent applicant. The USPTO had issued a notice seeking feedback on how to efficiently utilize information found in patent applications which have the same or substantially the same disclosure to other patent applications filed by the same applicant in a way that provides patent examiners with relevant information at the earliest stage of examination.

Patent applicants have a duty to disclose information to the USPTO which is material to patentability under 37 C.F.R. 1.56, typically through the use of an information disclosure statement (IDS). Applicants can currently provide an IDS by citing information from other patent applications on form PTO/SB/08 and those citations considered by an examiner are listed on form PTO-892. The goal of the RPA initiative is to ensure that this type of relevant information from a patent applicant is made more readily available to examiners by leveraging the agency’s electronic resources.

The first phase of the RPA Initiative will involve the importation of citations listed on forms PTO/SB/08 and PTO-892 from an immediate parent patent application into a continuing application. This eliminates the need for the patent applicant to submit an IDS in the continuing application to have those citations printed on the patent and will satisfy the applicant’s duty to disclose information pursuant to 37 C.F.R. 1.56. The USPTO’s notice also indicates that the RPA Initiative’s first phase will involve a targeted release of a newly developed interface to a subgroup of examiners from selected art units and the agency will increase examiner access to the interface as the program proves to be scalable.

The effective date of the RPA Initiative’s first phase was November 1st, when the agency began selecting examiners prosecuting continuing applications which meets certain conditions for inclusion in the program. The selected applications will be non-reissue, non-provisional patent applications which claims a single prior U.S. application, or an immediate parent application, the parent application only claiming priority or benefit of other applications under 35 U.S.C. § 119. Until January 1st, 2019, patent applications for this initiative will only come from Art Unit 2131 for electrical computers and digital processing systems: support. After January 1st, the program will be expanded to Art Unit 1616, drugs, bio-affecting and body treating compositions; Art Unit 1731, compositions: coating, plastic or ceramic; Art Unit 2431, cryptography; Art Unit 2675; Art Unit 2875, electric lamp and discharge devices; Art Unit 2922; Art Unit 3635; and Art Unit 3753, fluid handling. The USPTO will not accept requests to have specific applications included in the first phase of the initiative and there is no mechanism for removing a patent application from the program.

Art units participating in the RPA Initiative’s first phase have been specifically selected to ensure that data will be acquired on approximately 175 patent applications through the first 12 months of the program. For patent applications selected for the program, the USPTO will generate a Notice of Imported Citations that will be provided to the patent applicant. Imported citations will correspond to U.S. patent, foreign patent and non-patent literature documents. The USPTO will only conduct a single importation of citations, so citations provided after the single importation must be included in an IDS.

The USPTO is also currently exploring future phases of the RPA Initiative. A potential second phase being considered by the agency would include the importation of U.S. and foreign patent citation information from related Patent Cooperation Treaty (PCT) and counterpart foreign applications. The agency is also considering increasing the number of times that information is imported and expanding the number of art units encompassed by the program. The timetable for such expansion will be determined based upon feedback from the first phase. Public comments on the RPA Initiative can be submitted to the USPTO through the agency’s IdeaScale tool.


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One comment so far.

  • [Avatar for Mike]
    November 9, 2018 10:38 am

    During the PPAC Quarterly Meeting, a question was brought up by Julie Mar-Spinola regarding the new prior art archive initiative. The question was answered, but I could tell during the live stream that she was not satisfied and had reservations. I share reservations as well.

    The question was: When a patent examiner performs an external search on, what happens to the history of the search with respect to the references the examiner reviewed but considered them irrelevant? And what of the ability to document this or enter this into the prosecution history?

    Knowing that an examiner reviews a closely-related reference yet considers it not relevant to the case is very important. For example, in lieu of prior art challenges and for the purposes of efficiency with respect to IPR, this information would be important for all inventors/stakeholders. Applicants may very well want to know of these references reviewed by the examiner that are considered not-relevant to the case, as they might want to submit them into the record to be listed on the face of the patent, at least as art submitted by the applicant. This information should help increase the reliability of the patent and protect it from unnecessary challenges that have already been considered by the examiner to not be pertinent to the claims.

    I’ve already emailed them, but can someone else reiterate this with the Office, namely, that we desire that
    a) examiners put into the prosecution history (or make available to the applicant) each reference discovered via a tool like that was reviewed yet considered not relevant to the claimed invention, and
    b) any such tools used to the USPTO should be developed to provide or easily allow this capability.

    Like I said, this information should help increase the reliability of the patent, as it will protect it from unnecessary challenges that have already been considered by the examiner to not be pertinent to the claims.

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