Another Applicant-Friendly Program of the U.S. PTO
The U.S. Patent and Trademark Office (PTO) has become more and more applicant-friendly with respect to making the patent prosecution process easier and more streamlined. Previous articles by this author include: a) an article on the eterminal disclaimer (eTD) that provides for instant approval of a terminal disclaimer filed this way, and b) an article on an after-final response pilot program that allows for a better chance to get an after-final response entered by an examiner. This article discusses yet another program, called the “Quick Path Information Disclosure Statement” pilot program, or QPIDS.
According to the PTO’s web site,
The Quick Path Information Disclosure Statement (QPIDS) pilot program is part of the USPTO's on-going efforts towards compact prosecution and pendency reduction.
In particular, the QPIDS pilot program eliminates the requirement for processing of a request for continued examination (RCE) with an information disclosure statement (IDS) filed after payment of the issue fee in order for the IDS to be considered by the examiner. Where the examiner determines that no item of information in the IDS necessitates reopening prosecution, the USPTO will issue a corrected notice of allowability.
Prior to the QPIDS pilot program, an applicant would have to file an RCE and a petition to withdraw the application from issue in order to get an IDS considered at the ‘after-issue fee payment’ stage.
In order to comply with the QPIDS pilot program, one must first determine if the references to be submitted in the IDS meet the ‘statement’ requirements as set forth in 37 C.F.R. 1.97(e)(1) or (e)(2). For example, a foreign search report or office action that is less than three months from the present date would qualify for submission in an IDS under the QPIDS pilot program. If that is the case, then an appropriate box is checked on a QPIDS certification and request form (obtainable from the PTO’s web site). After making that determination, one then must include deposit account information in the proper place on the QPIDS certification and request form, b) a separate petition to withdrawn from issue after payment of the issue fee, including the appropriate petition fee (which must be submitted as a web-based ePetition via EFS-Web), and c) a ‘conditional’ RCE and RCE fee.
The RCE is ‘conditional’ in that if the examiner determines that any item of information contained in the IDS requires the reopening of prosecution in the application, the RCE will be processed and the application will go back to the patent prosecution stage. If the examiner determines that none of the items of information contained in the IDS requires the reopening of prosecution, then RCE will not be processed, and the RCE fee will be returned back to Applicant (or more precisely, back to the deposit account of Applicant or Applicant’s representative).
It is important that no amendment accompany the IDS submitted under the QPIDS pilot program, since that would result in an automatic entry of the RCE.
The QPIDS pilot program began on May 16, 2012, and it initially ran to September 30, 2012. It was then extended to December 15, 2012, and then further extended to March 23, 2013, and again extended to September 30, 2013. Hopefully, the QPIDS will be adopted by the PTO as a standard, non-pilot program without an expiration date, like it did for pre-appeal briefs, which has been very successful and liked by patent examiners and by applicants.
Phillip Articola is a patent attorney with Mots Law PLLC. The views expressed in this paper are solely those of Phillip Articola, and should not be attributed to Mots Law PLLC. He can be reached at firstname.lastname@example.org.