By Donald Zuhn --
The U.S. Patent and Trademark Office announced today that it is implementing a pilot program to allow applicants to have an Information Disclosure Statement (IDS) considered after the issue fee has been paid and without having to file a Request for Continued Examination (RCE). The new Quick Path Information Disclosure Statement (QPIDS) pilot program is intended reduce application pendency and applicant costs in certain situations where an IDS is filed after the issue fee is paid.
Under the QPIDS pilot program, which will run from May 16, 2012 to September 30, 2012, an examiner will consider IDS submissions made after the issue fee has been paid (and provided that the confitions below are met) to determine whether prosecution should be reopened. According to the Office's Federal Register notice on the new program (77 FR 27443), "prosecution will only be reopened where the examiner determines that reopening prosecution is necessary to address an item of information in the IDS." Where the examiner determines that no item of information in the IDS necessitates reopening prosecution, the Office will issue a corrected notice of allowability and the application will pass to issue, thereby eliminating the delays and costs associated with RCE practice.
To be eligible to participate in the pilot program, an application must be an allowed utility or reissue application for which the issue fee has been paid and the patent has not yet issued, and a QPIDS submission must be made electronically via the EFS-Web (after May 15, 2012 and before October 1, 2012). The QPIDS submission must include the following:
• A transmittal form that designates the submission as a QPIDS submission (e.g., form PTO/SB/09, which as of this evening was not yet available on the USPTO forms webpage);
• 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) -- while the Office noted that it was sua sponte waiving the 37 C.F.R. § 1.97(d) prohibition against the filing of an IDS "on or before payment of the issue fee," the Office indicated the requirements that the IDS be accompanied by the statement of 37 C.F.R. § 1.97(e)(1) or (2) and the fee set forth in 37 C.F.R. § 1.17(p) were not being waived.
• 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
• An RCE, which will be treated as a "conditional" RCE, with the RCE fee under 37 C.F.R. 1.17(e) -- the Office noted that the IDS fee under 37 C.F.R. § 1.17(p) will be automatically returned if the examiner decides to reopen prosecution, necessitating that the RCE be processed, and that the RCE fee will be automatically returned if the examiner determines that prosecution need not be reopened.
The Office's announcement of the pilot program indicated that there would be no separate fee to participate in the program (apart from the fees specified above); participants will also need to pay the above fees by authorization to charge a deposit account. Depending on the program's effectiveness and participant feedback, the Office indicated that it could extend the pilot program (with or without modifications).
Additional information regarding the QPIDS pilot program can be found in the Office's Federal Register notice (77 FR 27443).