The United States Patent and Trademark Office (USPTO) has recently introduced new initiatives and extended some popular pilot programs geared toward expediting prosecution for applicants and the office alike. This article provides details about the new Automated Interview Request Tool and the Collaborative Search Pilot Program, as well as provides updates about two of the renewed programs—the Quick Path Information Disclosure Statement and the After Final Consideration Program 2.0.
Automated Interview Request (AIR) Tool
Examiner interviews are a key tool for advancing the prosecution of patent applications.1 A thirty minute face-to-face or telephonic interview with the examiner often surpasses the written back-and-forth of office actions and responses. This is especially so when there appears to be a lack of mutual understanding. As a result, when:
In September, the USPTO unveiled the AIR tool, its new online
interview scheduling tool for requesting examiner
interviews.3 This tool, while potentially streamlining
the scheduling process for interviews, does not otherwise change
the rules of interview practice before the USPTO.4
The online form for requesting an interview is simple, and
applicants can request in-person, telephonic, or even USPTO-hosted
WebEx video conference interviews. Applicants who want to conduct a
video conference interview but do not have access to their own web
cameras can also use the AIR form to request the use of one of the
public interview rooms at the USPTO offices in Alexandria
(Virginia), Detroit (Michigan), or Denver
(Colorado).5
According to USPTO procedures, applicants must provide
authorization to use the internet, including the WebEx conference
system, for communications about an application.6
Although the USPTO has recently updated its policies to allow for
verbal authorization, it continues to recommend submitting written
authorization.7 For applicants using the AIR form to
request a WebEx interview, the AIR form provides the added benefit
of automatically providing written authorization.
The value of the new AIR tool seems minimal, however, for
applicants scheduling telephonic or in-person interviews. Notably,
the AIR tool does not replace the standard Applicant Initiated
Interview Request form, which the USPTO urges should still be
submitted after requesting an interview.8 Furthermore,
interviews requested via AIR must be requested at least one week in
advance. And the interview request form only allows the applicant
to request a single day and time for the interview. This limitation
may necessitate several AIR form submissions, depending on a
particular examiner's availability for an interview on the
requested day. As a result, calling the examiner directly appears
to be just as, if not more, efficient than the new AIR tool for
applicants seeking an in-person or telephonic interview or if the
applicant needs to conduct the interview in less than a week.
Nevertheless, the AIR tool provides an additional way to contact an
examiner, which may be helpful if the applicant is having
difficulty reaching the examiner by phone. The AIR tool also
provides a simple way to request video conference or use of one of
the USPTO's public interview rooms.
Whether this form will be widely used by practitioners is unknown,
but if it is, the AIR form may lead the way for other online
initiatives ultimately streamlining the application process.
Collaborative Search Pilot (CSP) Program
Recently, the USPTO signed two independent collaborative
Memoranda of Cooperation, establishing collaborative search pilot
programs with the Japanese Patent Office (JPO) and, separately,
with the Korean Intellectual Property Office (KIPO).9
The purpose of these programs is to provide consistent examination
among offices, and additionally, to provide applicants with search
results from two patent offices early in the examination process.
The programs will run for two years, with the option to extend.
Applicants can petition for entry into the CSP for free, and CSP
applications will be taken out of turn, potentially expediting
examination.10
The CSP is actually two pilot programs under one umbrella—the
CSP-JPO pilot program for U.S. and Japanese applications and the
CSP-KIPO pilot program for U.S. and Korean applications. The
CSP-JPO and CSP-KIPO each has its own search and examination
processes.11 But to qualify for either CSP program,
applicants must meet the same criteria.
Applicants must file the appropriate petitions in both the USPTO
and the JPO or the KIPO.12 Both participating offices
must approve the respective petitions before an application can be
accepted into the program. Applicants must consent to sharing
information about their search results and opinions between the two
participating offices.13 Only new applications filed
after March 13, 2013 (i.e., post-AIA U.S. applications that have
not yet been examined) qualify.14 Applications must
contain no more than 3 independent claims and 20 total claims, all
directed to a single invention.15 And the claims in both
the U.S. and JPO or KIPO applications must correspond to each
other.16
The USPTO has also incorporated some aspects of the First Action
Interview program into its examination of accepted CSP
applications.17 In particular, instead of issuing a
written first office action, the USPTO will issue a pre-interview
communication providing the results of the prior art searches. The
applicant may then conduct an interview with the examiner to review
the search results before the examiner issues an office
action.
For the CSP-JPO program, a serial search is conducted with the
USPTO and JPO sharing search results prior to examination of the
applications in either country.18 The first patent
office conducts an initial search and evaluation. The designation
of the JPO or USPTO as the first office depends on whether the
Japanese or U.S. application was filed first. The first office then
sends its search results and comments to the second office, where
the second office reviews the results and then conducts its own
search.
If the USPTO is the second office, the USPTO will generate a
pre-interview communication and send it with the JPO's search
results to the U.S. applicant. The USPTO will send also its search
results to the JPO, so that the JPO can send the USPTO results with
a First Office Action to the Japanese applicant.
If the JPO is the second office, the JPO will issue a First Office
Action and send it with the USPTO's search results to the
Japanese applicant. The JPO will send also its search results to
the USPTO, so that the USPTO can send the JPO results with a
pre-interview communication to the U.S. applicant.
Of course, the U.S. applicant and the Japanese applicant are likely
the same entity. So the single applicant behind both applications
would receive both a pre-interview communication from the USPTO and
a First Office Action from the JPO, and each of these
communications would include the results of both countries'
searches.
For the CSP-KIPO program, parallel searches in both the USPTO and
KIPO are conducted prior to examination of the applications in
either country.19 The USPTO generates a pre-interview
communication based on its search results and sends it to the KIPO,
and the KIPO generates a search report based on its results and
sends it to the USPTO. The USPTO then sends its pre-interview
communication and the KIPO search results to the U.S. applicant,
and the KIPO sends its search results and the USPTO pre-interview
communication to the Korean applicant.
Again, the U.S. applicant and the Korean applicant are likely the
same entity. So the single applicant behind both applications would
receive both a pre-interview communication from the USPTO and a
search report from the KIPO, and each of these communications would
include the results of both countries' searches.
Although the logistics in sharing the information may be a bit
confusing on first glance, the process is actually straight
forward, and despite its recent institution (August 1, 2015 for
CSP-JPO and September 1, 2015 for CSP-KIPO), applicants are already
submitting petitions for entry.20 By the end of October,
2015, 14 petitions have been received for the CSP-JPO program and 9
have been granted by both offices. For the CSP-KIPO program 21
petitions have been filed and 12 have been approved by both
offices.
The CSP-JPO and CSP-KIPO programs will take up to 200 and 400
petitions per year, respectively, so there is still plenty of room
for other applicants to get in on the action. For applicants with
post-AIA application in the U.S. and Japan and/or Korean, the CSP
provides for expedited examination without an additional program
fee. This is an attractive option for applicants who do not mind
having their claims limited in number.
One possible downside: if the claims must correlate to one another,
it is possible that applicants may find their claims in one country
limited by the substantive law in another country. It is not clear
how the program intends to handle potential differences between the
countries' examination procedures. Thus, potential CSP
petitioners may wish to see what types of claims applicants are
able to obtain under the CSP before jumping into the ring.
Quick Path Information Disclosure Statement (QPIDS)
The QPIDS program was a pilot program started in 2012 that the
USPTO recently extended to run through September 30,
2016.21 In short, QPIDS allows patent applicants to
submit new references to the USPTO after the payment of the issue
fee and have the office consider those references without an
automatic Request for Continued Examination (RCE).
During prosecution, U.S. patent applicants have a duty to disclose
information that is material to the patentability of the
claims.22 This duty extends through the prosecution of
an application until the pending claims are cancelled, withdrawn
from consideration, or issued in a patent.23 Failure to
disclose a material reference may render a patent unenforceable for
inequitable conduct down the road during
litigation.24
Although the duty to disclose persists until a patent issues,
patent applicants have limited options for submitting material
information during the later stages of prosecution.25 In
fact, before QPIDS, an applicant who paid the issue fee had to
withdraw its application from issue and file an RCE to have the
USPTO consider additional materials. The likelihood that Applicants
may pay the issue fee and then learn about a new reference cited in
a related co-pending U.S. application or corresponding foreign
application is not uncommon. Since 2012, the QPIDS program offers
applicants in this tricky situation an alternative to the costly
and time consuming RCE route.
To submit an information disclosure statement (IDS) under the QPIDS
program, an applicant must certify that either (1) each item of
information contained in the IDS was first cited in a communication
from a non-U.S. patent office in a counterpart non-U.S. application
no more than three months prior to the filing of the IDS; or (2) no
item of information contained in the IDS was cited in a
communication from a non-U.S. patent office in a counterpart
non-U.S. application, and, to the knowledge of the person signing
the certification after making a reasonable inquiry, no item of
information contained in the IDS was known to any individual with a
duty of disclosure more than three months prior to the filing of
the IDS.26
In addition, a QPIDS applicant must file a petition to withdraw the
application from issue to give the examiner time to review the
reference(s).27 Applicant must also file an
RCE.28 The RCE is considered to be conditional RCE, and
it will only be processed if prosecution must be
re-opened.29
Several fees are required to request consideration under the QPIDS
program, including the IDS fee, the Petition to Withdraw from Issue
fee, and the RCE fee.30 These are comparable to the fees
that an applicant would be required to pay if withdrawing the
application and filing an RCE.31 But one of the benefits
of the QPIDS program is that, if the examiner does not find that
the submitted references require prosecution to be reopened, the
conditional RCE is not processed, and the RCE fee is
refunded. The only way to submit fees in the QPIDS program is via
deposit account.32
Anecdotally, the USPTO reopens prosecution in relatively few cases
where a reference is submitted using QPIDS. Consequently, this may
be a much faster and cheaper way to submit an IDS after paying the
issue fee. But QPIDS is not without its downside. It can only be
used in cases where an applicant can make a certain timing
certifications under 37 C.F.R. § 1.97(e). Thus, QPIDS is not a
salvo for all scenarios where art is found after the payment of the
issue fee.
After Final Consideration Program 2.0 (AFCP 2.0)
The USPTO has extended another popular program, AFCP 2.0,
through September 30, 2016.33 We previously provided a
detailed explanation of AFCP 2.0.34
Briefly, after a final rejection in the U.S., an applicant is
generally not entitled to further consideration of the application
without filing an RCE. Under the AFCP 2.0 program, however,
examiners are given additional time to consider applicants'
submissions after final rejections. If an applicant's
submission meets the requirements of an AFCP 2.0 program (amendment
to at least one independent claim that does not broaden the claim,
statement that the applicant is willing to conduct an interview,
and required fee), then the examiner may consider the response
under the AFCP 2.0 program if the search and consideration of
applicant's papers can be concluded in the time allotted.
Although there may be some delay in participating in the program
(examiners have 45 days to respond to a request, plus an additional
10 days to conduct an interview), AFCP 2.0 provides a significantly
faster track to allowance than RCE practice. It is not surprising
that this popular program has been extended for another year.
Conclusion
You can't fault the USPTO for trying to find creative ways to streamline the prosecution process. And as the USPTO continues to address its application backlog by instituting new initiatives and renewing popular pilot programs, we will continue to provide updates to help you navigate the new programs.
Footnotes
1 USPTO, Best Practices in Compact Prosecution Awareness Workshop, available at http://www.uspto.gov/sites/default/files/patents/law/exam/compact_prosecution.pdf.
2 M.P.E.P. § 713.
3 USPTO Automated Interview Request (AIR) Form, available at http://www.uspto.gov/patent/uspto-automated-interview-request-air-form.html.
4 37 C.F.R. 1.133; M.P.E.P. § 713; see also "Interview Practice" at http://www.uspto.gov/patent/laws-and-regulations/interview-practice#step3.
5 USPTO, Public Interview Room, available at http://www.uspto.gov/sites/default/files/patents/law/ipractice/pubinterviewroom.pdf.
6 M.P.E.P. §§ 502.03, 713.
7 Change to Internet Usage Policy to Permit Oral Authorization for Video Conferencing Tools by Patent Examiners, 80 Fed. Reg. 23787 (April 29, 2015).
8 USPTO, Applicant Initiated Interview Request Form, available at http://www.uspto.gov/sites/default/files/forms/PTOL413A.pdf.
9 United States Patent and Trademark Office and Japan Patent Office Collaborative Search Pilot Program, 80 Federal Register 39752 (July 10, 2015); United States Patent and Trademark Office and Korean Intellectual Property Office Collaborative Search Pilot Program, 80 Fed. Reg. 39412 (July 9, 2015).
10 USPTO, Collaborative Search Pilot Program (CSP), available at http://www.uspto.gov/patents-getting-started/international-protection/collaborative-search-pilot-program-csp.
11 USPTO, Collaborative Search Pilot Program (CSP), available at http://www.uspto.gov/sites/default/files/documents/GeneralCSPInfo.pdf.
12 The petition for the CSP-JPO program in the U.S. is available at http://www.uspto.gov/sites/default/files/sb0437jp.pdf. The petition for the CSP-KIPO program in the U.S. is available at http://www.uspto.gov/sites/default/files/sb0437kr.pdf.
13 USPTO, Collaborative Search Pilot Program (CSP), available at http://www.uspto.gov/patents-getting-started/international-protection/collaborative-search-pilot-program-csp.
14 USPTO, Collaborative Search Pilot Program (CSP), available at http://www.uspto.gov/sites/default/files/documents/GeneralCSPInfo.pdf.
15 USPTO, Collaborative Search Pilot Program (CSP), available at http://www.uspto.gov/patents-getting-started/international-protection/collaborative-search-pilot-program-csp.
16 Id.
17 USPTO, Collaborative Search Pilot Program (CSP), available at http://www.uspto.gov/sites/default/files/documents/GeneralCSPInfo.pdf.
18 Id.
19 Id.
20 USPTO, Collaborative Search Pilot Program (CSP), available at http://www.uspto.gov/patents-getting-started/international-protection/collaborative-search-pilot-program-csp.
21 Quick Path Information Disclosure Statement (QPIDS) Pilot Program, 77 Fed. Reg. 27443 (May 10, 2012); USPTO, Quick Path Information Disclosure Statement (QPIDS), available at http://www.uspto.gov/patent/initiatives/quick-path-information-disclosure-statement-qpids.
22 37 C.F.R. § 1.56.
23 See USPTO Manual of Patent Examining Procedure § 2001, Duty of Disclosure, Candor, and Good Faith.
24 See, e.g., Chromalloy American Corp. v. Alloy Surfaces Co., 339 F. Supp. 859 (D. Del. 1972); Therasense, Inc. v. Becton, Dickinson & Co., 649 F.3d 1276, 1288-89 (Fed. Cir. 2011); see also USPTO Manual of Patent Examining Procedure § 2016, Fraud, Inequitable Conduct, or Violation of Duty of Disclosure Affects All Claims.
25 37 C.F.R. § 1.97.
26 Certification and Request for Consideration of an Information Disclosure Statement Filed After Payment of the Issue Fee Under the QPIDS Pilot Program, USPTO Form PTO/SB/09, available at http://www.uspto.gov/sites/default/files/forms/sb0009.pdf.
27 Id.
28 Id.
29 Id.
30 Id.
31 Id.
32 Quick Path Information Disclosure Statement (QPIDS) Pilot Program, 77 Fed. Reg. 27443 (May 10, 2012).
33 USPTO After Final Consideration Pilot 2.0, available at http://www.uspto.gov/patent/initiatives/after-final-consideration-pilot-20.
34 Tridico, Anthony C., Ph.D., and Mandy J. Song, Ph.D., Opportunity to Get Your Application Allowed After Final Rejection—Introducing the After Final Consideration Pilot, CIPA Journal, Dec. 2014, available at http://www.finnegan.com/resources/articles/articlesdetail.aspx?news=d9b7b75b-cb17-4490-a624-285c5fd6308d.
Originally printed in CIPA Journal.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.