[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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