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Shouldering the Load: USPTO Begins Reducing Burden on Applicants to Comply with the Duty of Disclosure

Client Updates

The U.S. Patent and Trademark Office (USPTO) recently began a new initiative to reduce the burden on applicants with complying with the duty of disclosure.1  The program, known as the Access to Relevant Prior Art (RPA) Initiative, allows the USPTO to import reference citations into a U.S. patent application.  In the first phase, the program is limited to importing citations from a parent application into a child continuing application.  As such, an applicant can satisfy the duty of disclosure in the child application without citing these references in an Information Disclosure Statement.  The first phase is also limited to a few examining art units, but further phases will expand the program to other examining art units and other sources of reference citations.

Each individual associated with the prosecution of a U.S. patent application (e.g., inventors, in-house patent counsel, outside patent counsel) has a duty to disclose to the USPTO all information known to the individual to be material to patentability.2  If an applicant is aware of such information, the applicant can satisfy this duty of disclosure by submitting to the USPTO an Information Disclosure Statement that cites this information.3  The process to collect and submit this information, however, is often burdensome, and the USPTO is now seeking to relieve this burden to improve the quality of examination through the RPA Initiative.

The first phase of the RPA Initiative is limited to importing cited information from a parent U.S. patent application to a pending continuation application that claims priority to that parent.  The information imported to the continuation application will be the citations from any compliant Information Disclosure Statements in the parent application and the information cited  by the Examiner in the parent application.  The applicant will not need to submit an Information Disclosure Statement in the continuation application to cite this information.  Further, the importation of these citations satisfies the applicant’s duty of disclosure for these citations in the child application.

 If an application is selected for the initiative, the Office will send a Notice of Imported Citations to the applicant.  The Notice will inform the applicant that the application was selected for the initiative and will also list the citations that were imported into the application.  The applicant need not respond to the Notice.  The citations imported from the parent application will be the citations to U.S. patent documents, foreign patent documents, and non-patent literature listed on a Form PTO/SB/08 filed with an Information Disclosure Statement or on a Form PTO-892 provided by the Examiner.  If a citation does not appear on a Form PTO/SB/08 or a Form PTO-892 (e.g., citations listed in a Third Party Submission, an Office Action, an Amendment, or the specification), the USPTO will not import the citation.  Further, during the first phase, the USPTO will perform only a single importation from the parent application to the child application.

During prosecution of the selected application, the Examiner will send a signed copy of the Notice of Imported Citations or a Notice of Consideration to the applicant with the first action on the merits.  The signed copy will indicate that the Examiner considered the citations listed therein.  If a patent issues from the application, the imported citations considered by the Examiner will be listed on the cover of the patent.  To distinguish these citations from others considered by the Examiner, a double dagger will be placed next to these imported citations.

The first phase began on November 1, 2018 and was limited to Art Unit 2131.  On January 1, 2019, the first phase was expanded to include Art Units 1616, 1731, 2431, 2675, 2879, 2922, 3635, and 3753.4  The USPTO is seeking to obtain data on approximately 175 U.S. patent applications within the first twelve months of the initiative.  In further phases, the USPTO intends to import citations from other sources, such as related U.S. patent applications, PCT international applications, and counterpart foreign patent applications.  Additionally, in further phases, the USPTO may import citations more than once per application and may expand the initiative to include additional examining art units.  Although the USPTO aspires to one day apply the initiative to all pending U.S. patent applications, expansion of the RPA Initiative will depend on the success of the first phase.


 

1 83 Fed. Reg. 53,853 (Oct. 25, 2018).

2 37 C.F.R. § 1.56(a).

3 M.P.E.P. § 609.

4 https://www.uspto.gov/patents-getting-started/access-prior-art-project.

 

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