United States: Designed To Streamline

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:

"[p]roperly conducted, an interview can bridge the gap between an examiner and an applicant."2

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.

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