On November 17, the United States Patent and Trademark Office issued a memorandum announcing that petitioners in IPR and PGR proceedings before the Patent Trial and Appeal Board may voluntarily submit a Search Disclosure Declaration (SDD), which will be considered as a non-exclusive, non-dispositive favorable discretionary factor supporting institution. The new initiative is effective immediately and applies to all IPR and PGR proceedings in which a patent owner preliminary response due date has not yet elapsed. The initiative is designed to strengthen examination quality by improving the USPTO's ability to locate relevant prior art during prosecution.
A petitioner may elect to submit an SDD explaining, in detail:
- The databases and repositories in which the asserted prior art was located;
- The general search approach, search terms, filters, queries, or classification pathways employed;
- Other analytics or publicly accessible resources consulted;
- The amount of time spent on the search; and
- The amount of time spent reviewing search results.
In addition to the above, the SDD may also include any other information relevant to the search methodology employed.
This SDD may not be public, as a petitioner may file its SDD under seal for in camera review. In addition, the Office also noted that deposition testimony related to an SDD will not be permitted absent extraordinary circumstances. However, any proposed protective order must indicate that the Office may use the information in an SDD for internal training, improving examination processes, and analytics, where use by the Office is not precluded by law. In its alert announcing the new practice, the Office explained that information submitted in an SDD "will be used internally to enhance examiner training, refine classification pathways, and inform development of AI-enhanced search tools."
The Office emphasized that a petitioner will not be disadvantaged for not submitting an SDD. However, the submission of an SDD will be a "favorable discretionary factor" in institution decisions, particularly when it "reveals new or underutilized pathways relevant to Office search practice," or in helping demonstrate Office error during examination.
For new petitions, an SDD must be submitted as a standalone exhibit at the time the petition is filed. For currently pending petitions, a petitioner may file an SDD within seven business days of November 17, so long as the patent owner preliminary response deadline has not passed.
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