[Federal Register Volume 77, Number 91 (Thursday, May 10, 2012)]
[Notices]
[Pages 27443-27444]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2012-11222]


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DEPARTMENT OF COMMERCE

United States Patent and Trademark Office

[Docket No.: PTO-P-2012-0022]


Quick Path Information Disclosure Statement (QPIDS) Pilot Program

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Notice.

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SUMMARY: The United States Patent and Trademark Office (USPTO) is 
implementing a pilot program intended to reduce pendency and applicant 
costs when an information disclosure statement (IDS) is filed after 
payment of the issue fee. This pilot program will permit an examiner to 
consider an IDS after payment of the issue fee without the need to 
reopen prosecution, effectively obviating the need to pursue a request 
for continued examination (RCE). Where the examiner determines that no 
item of information in the IDS necessitates reopening prosecution, the 
Office will issue a corrected notice of allowability. In addition to 
reducing pendency, this pilot program will promote efficiency in the 
examination process. There will be no fee required to use this program, 
beyond existing fees, e.g., fees for IDS submission.

DATES: Effective Date: May 16, 2012.
    Duration: The QPIDS Pilot Program will run from its effective date 
until September 30, 2012. Therefore, an IDS submitted under this pilot 
program must be filed on or before September 30, 2012. The USPTO may 
extend this pilot program (with or without modifications) depending on 
feedback from the participants and the effectiveness of the program.

FOR FURTHER INFORMATION CONTACT: Nicole D. Haines, Legal Advisor, or 
Raul Tamayo, Legal Advisor, Office of Patent Legal Administration, 
Office of the Deputy Commissioner for Patent Examination Policy, by 
telephone at (571) 272-7717 or (571) 272-7728, respectively, or by mail 
addressed to: Mail Stop Comments--Patents, Commissioner for Patents, 
P.O. Box 1450, Alexandria, VA 22313-1450.

SUPPLEMENTARY INFORMATION: Applicants who become aware of information 
after payment of the issue fee often file RCEs to have this information 
considered by an examiner. This is because 37 CFR 1.97 does not provide 
applicants with the opportunity to file an IDS after payment of the 
issue fee. Thus, applicants who determine that they need to file an IDS 
after payment of the issue fee must either file a petition under 37 CFR 
1.313(c)(2) to withdraw the application from issue in order to permit 
entry of an RCE and have the accompanying IDS considered by the 
examiner, or file a petition under 37 CFR 1.313(c)(3) to withdraw the 
application from issue for express abandonment in favor of a continuing 
application. These applications experience delays associated with the 
filing and processing of the RCE (or continuing application), even if 
the information in the IDS would not have otherwise necessitated 
reopening prosecution.
    In order to reduce pendency delays and costs associated with the 
current process for considering IDS submissions filed after payment of 
the issue fee, IDS submissions made in accordance with this pilot 
program will be considered by the examiner before determining whether 
prosecution should be reopened. Under this pilot program, 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 pass to issue, thereby eliminating 
the delays and costs associated with RCE practice.

A. QPIDS Pilot Program Requirements

    In order to be eligible to participate in this pilot program, an 
application must be a utility or reissue application (i.e., this pilot 
program does not pertain to design or plant applications). In addition, 
as set forth in detail below, a QPIDS submission must include the 
following items: (1) A transmittal form that designates the submission 
as a QPIDS submission, such as form PTO/SB/09; (2) an IDS accompanied 
by a timeliness statement set forth in 37 CFR 1.97(e), with the IDS fee 
set forth in 37 CFR 1.17(p); (3) a Web-based ePetition to withdraw from 
issue under 37 CFR 1.313(c)(2), with the petition fee set forth in 37 
CFR 1.17(h); and (4) an RCE, which will be treated as a ``conditional'' 
RCE, with the RCE fee under 37 CFR 1.17(e). All papers associated with 
this pilot program must be filed via the USPTO's Electronic Filing 
System-Web (EFS-Web), and all fees must be paid by authorization to 
charge a deposit account.

1. Transmittal Form

    A new transmittal form, PTO/SB/09, has been made available at 
http://www.uspto.gov/forms/index.jsp to identify submissions made 
pursuant to this pilot program. Use of this form will help the Office 
to quickly identify QPIDS submissions and facilitate timely processing 
of such submissions. The Office of Management and Budget (OMB) has 
determined that, under 5 CFR 1320.3(h), Form PTO/SB/09 does not collect 
``information'' within the meaning of the Paperwork Reduction Act of 
1995.

2. IDS With Timeliness Statement and Fee

    A submission under this pilot program must include an IDS in 
accordance with 37 CFR 1.97 and 37 CFR 1.98. Because 37 CFR 1.97(d) 
does not provide for the filing of an IDS submission after payment of 
the issue fee, the USPTO is sua sponte waiving 37 CFR 1.97(d) for IDS 
submissions filed under this pilot program to the extent that IDS 
submissions pursuant to this pilot program may be filed after payment 
of the issue fee. However, the requirements of 37 CFR 1.97(d)(1) and 
(d)(2) that the IDS be accompanied by a timeliness statement specified 
in 37 CFR 1.97(e) and the fee set forth in 37 CFR 1.17(p) are not 
waived.
    IDS submissions made under this pilot program must be accompanied 
by either the timeliness statement set forth in 37 CFR 1.97(e)(1) or 
the timeliness statement set forth in 37 CFR 1.97(e)(2). The QPIDS 
transmittal form PTO/SB/09 provides the appropriate timeliness 
statements for selection by applicant. Additionally, the IDS submission 
must include the IDS fee set forth in 37 CFR 1.17(p), by including an 
authorization to charge a deposit account. The QPIDS transmittal form 
PTO/SB/09 provides an authorization to charge a deposit account for 
payment of the IDS fee. A submission that provides for payment of the 
IDS fee (or any other required fee) via a fee transmittal form 
authorizing another form of payment does not comply with the 
requirements of this pilot program. Thus, applicants must have an 
established USPTO deposit account to participate in this pilot program. 
Information on USPTO deposit accounts is available at http://www.uspto.gov/about/offices/cfo/finance/Dep_Account_Rules_and_Info.jsp.

3. Web-Based ePetition and Fee

    A submission under this pilot program must be filed with a 
``Petition to Withdraw from Issue After Payment of the Issue Fee'' (37 
CFR 1.313(c)(2))

[[Page 27444]]

submitted as a Web-based ePetition via EFS-Web with the petition fee 
set forth in 37 CFR 1.17(h). Information regarding submission of Web-
based ePetitions is available at http://www.uspto.gov/patents/process/file/efs/guidance/epetition-info.jsp. Depending on whether a patent 
number has been assigned, applicants must select either the ``Petition 
to Withdraw from Issue after Payment of the Issue Fee (37 CFR 
1.313(c)(1) or (2))'' or the ``Petition to Withdraw from Issue after 
Payment of the Issue Fee (37 CFR 1.313(c)(1) or (2) with Assigned 
Patent Number).'' The RCE that accompanies a QPIDS submission under 
this pilot program will be deemed sufficient to satisfy the requirement 
in 37 CFR 1.313(c)(2) that the petition to withdraw from issue is for 
consideration of an RCE in compliance with 37 CFR 1.114, even though 
the RCE will only be processed if the examiner determines that any item 
of information in the IDS necessitates reopening prosecution.

4. RCE and Fee

    A submission under this pilot program must include an RCE, with the 
IDS meeting the submission requirement for the RCE. The RCE will be 
treated as a ``conditional'' RCE until the examiner determines whether 
any item of information in the IDS necessitates reopening prosecution. 
Additionally, the QPIDS submission must be accompanied by the RCE fee 
under 37 CFR 1.17(e) in order to process the ePetition to withdraw the 
application from issue under 37 CFR 1.313(c)(2).
    Under this pilot program, the RCE will be processed and treated as 
an RCE under 37 CFR 1.114 in the event the examiner determines that any 
item of information contained in the IDS necessitates the reopening of 
prosecution in the application. In this instance, the IDS fee under 37 
CFR 1.17(p) will be automatically returned because the IDS complies 
with 37 CFR 1.97(b)(4). Otherwise, if the examiner determines that no 
item of information in the IDS necessitates reopening prosecution, the 
RCE will not be processed and the RCE fee will be automatically 
returned. This will save applicants both the time and costs associated 
with RCE practice. An RCE filed pursuant to this pilot program complies 
with the timing requirement of 37 CFR 1.114(a)(1). This pilot program 
is an exception to the provision in MPEP 706.07(h), which provides that 
the Office will treat a ``conditional'' RCE as if an RCE had been 
filed. Otherwise, the Office generally treats conditional requests 
without regard to the ``conditional'' designation (see, e.g., MPEP 
201.06(d), MPEP 706.07(g), and MPEP 714.13).

B. Processing of QPIDS Pilot Program Submissions

    A compliant ePetition to withdraw the application from issue, 
pursuant to 37 CFR 1.313(c)(2), will be granted immediately upon 
submission. After the grant of such a petition, the IDS submission made 
under this pilot program will be identified and placed on the 
examiner's ``expedited'' docket for consideration. If the examiner 
determines that no item of information in the IDS necessitates 
reopening prosecution, the examiner will issue a corrected notice of 
allowability (i.e., form PTOL-37). The corrected notice of allowability 
will identify the IDS and be accompanied by a copy of the submitted IDS 
listing (e.g., form PTO/SB/08) as considered by the examiner. See MPEP 
609.05(b). Considered information will be printed on the patent 
pursuant to MPEP 609.06. No applicant response to the corrected notice 
of allowability will be necessary. In this instance, the RCE will not 
be processed and the RCE fee will be automatically returned by the 
Office (the IDS and petition fees will not be returned). In this 
instance, where the examiner has determined that prosecution does not 
need to be reopened, a new notice of allowance and fee(s) due (i.e., 
PTOL-85) will not be issued. To the extent provisions of 37 CFR 
1.313(a) are not consistent with this pilot program, such provisions 
are hereby waived for QPIDS pilot program submissions.
    If the examiner determines that any item of information in the IDS 
necessitates reopening prosecution, the RCE will be processed and 
placed on the examiner's docket. In this instance, the RCE will be 
deemed filed as of the filing date of the QPIDS submission, and the IDS 
fee will be automatically returned by the Office because the IDS 
complies with 37 CFR 1.97(b)(4) (the petition fee will not be 
returned). The applicant will be notified that prosecution is being 
reopened (via a form PTO-2300), and such notification will identify the 
IDS and be accompanied by a copy of the submitted IDS listing (e.g., 
form PTO/SB/08) as considered by the examiner. See MPEP 609.05(b). If 
the application is subsequently again found allowable, the applicant 
may request that the previously paid issue fee be reapplied toward the 
issue fee that is now due in the same application. See MPEP 1306.
    A non-compliant QPIDS submission that otherwise complies with the 
requirements of 37 CFR 1.114 will be treated as an RCE. For example, 
failure to provide an authorization to charge a deposit account for 
payment of the IDS fee or failure to select or otherwise provide an 
appropriate timeliness statement will result in the RCE being 
processed. Similarly, a submission under this pilot program that 
includes an amendment will be processed as an RCE.
    Taking post-issue fee payment processing times into consideration, 
applicants are strongly encouraged to file IDS submissions under this 
pilot program as soon as the applicants become aware that it is 
necessary to submit an IDS. Applicants are reminded, where applicable, 
to include a statement under 37 CFR 1.704(d) so as to avoid reduction 
in patent term adjustment pursuant to 37 CFR 1.704(c)(10). See, 
Revision of Patent Term Adjustment Provisions Relating to Information 
Disclosure Statements, 76 FR 74700, 74701 (December 1, 2011) (final 
rule).
    Additional information regarding this pilot program will be made 
available on the USPTO's Web site at http://www.uspto.gov/patents/init_events/qpids.jsp.

    Dated: May 3, 2012.
David J. Kappos,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 2012-11222 Filed 5-9-12; 8:45 am]
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