The United States Patent and Trademark Office (USPTO) is implementing the first phase of the Access to Relevant Prior Art Initiative (“RPA Initiative”) to import from the immediate parent application into the continuing application.
RPA Initiative Explained:
In a continuing application, the citations corresponding to the documents considered by the examiner will be printed on the face of the patent issuing from the continuing application without the applicant having to resubmit the information on an Information Disclosure Statement. Additionally, an applicant’s duty to disclose information in the continuing application will continue to be satisfied for information considered in the parent application — and will be satisfied for any additional information made of record by the USPTO in the continuing application.
The USPTO plans to implement the RPA Initiative in phases, to consider and address public and examiners’ feedback at each phase and determine how to effectively expand the RPA Initiative in future phases.
Under current practice, when filing a continuing application that claims benefit under 35 U.S.C. 120 to a parent application (other than an international application for patent under the Patent Cooperation Treaty (PCT) that designated the United States), a listing of information which has been considered by the examiner in the parent application need not be resubmitted in the continuing application unless the applicant desires the information to be printed on the patent. Specifically, “(t)he examiner will consider information which has been considered by the Office in a parent application . . . when examining: (A) a continuation application (B) a divisional application, or (C) a continuation-in-part application.
RPA Initiative: Phase I
In the first phase of the RPA Initiative, the USPTO will import the citations listed on forms PTO/SB/08 (or equivalents) and PTO-892 in the immediate parent application into the continuing application. If compliant with 37 CFR 1.98 in the parent application, the examiner will consider the documents that correspond to these citations and the citations will be printed on the patent. This will eliminate the need for the applicant to submit an IDS in the continuing application for the purpose of having these citations printed on the patent.
Additionally, an applicant’s duty to disclose information under 37 CFR 1.56 in the continuing application will continue to be satisfied for information considered in the parent application and will be satisfied for any additional information made of record by the Office in the continuing application.
RPA Initiative: Beyond Phase I
In subsequent phases of the RPA Initiative, the USPTO will consider providing examiners access to citation information from other sources such as other related U.S. applications, international applications under the PCT, and counterpart foreign applications of the same applicant. The selection of these sources and the timetable for expansion will be dictated, at least in part, by evaluating the first phase including feedback on the RPA Initiative from the public and examiners.
The first phase will begin with a targeted release of a newly developed interface to a subgroup of examiners from a limited number of selected art units. In subsequent phases of the RPA Initiative, the USPTO plans to provide the interface to more examiners when the RPA Initiative proves scalable.
An application included in the first phase of the RPA Initiative will meet the following conditions:
The application must be a non-reissue, non-provisional application filed under 35 U.S.C. 111(a) with a claim for benefit of only a single prior U.S. application (i.e., immediate parent application, referred to herein as “parent application”). The parent application must have been filed under 35 U.S.C. 111(a) or have entered the national stage pursuant to 35 U.S.C. 371. The parent application can claim priority or benefit of other US provisional or foreign applications only.
The RPA Initiative will initially apply to a small group of continuing applications filed on or after the effective date of November 1, 2018. The RPA Initiative will then expand to a larger group of applications filed on or after January 1, 2019. Moreover, the USPTO will perform only a single importation of citations. Thus, any citations occurring after this single importation occurs will not will not be printed on the continuing patent unless cited in an IDS in the continuing application.
Currently, the USPTO is considering a first expansion of the RPA Initiative (second phase) to include the importation of U.S. and foreign patent citation information from related PCT and counterpart foreign applications.
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Silvia Salvadori, PhD