USPTO Offers Patent Applicants Option to Supplement Disclosure of Prior Art After Paying Issue Fee

When filing a patent application, all inventors and others involved with the application are required to inform the U.S. Patent and Trademark Office (USPTO) if they are aware of any prior art that may be material to patentability.  This obligation continues so long as the patent application is pending — even if the patent application is allowed and the applicant has paid the issue fee.

Sometimes, during prosecution, applicants become aware of additional prior art.  For example, if the application is pending in multiple countries, a foreign patent office may cite a patent or other document that the applicant hasn’t seen before.  If so, the applicant must file an Information Disclosure Statement with the USPTO to ensure that the USPTO is informed of that document.  However, if the issue fee has already been paid, previously applicants needed to file a request for continued examination (and a substantial fee) to ensure that the USPTO considered the newly-discovered document.

The USPTO recently announced a four-month pilot program that will obviate the need for a request for continued examination in most such cases.  Under the new “Quick Path Information Disclosure Statement (QPIDS)” pilot.  Under the pilot, a request for examination (but no fee) must be included with the IDS.  However, the USPTO will only require the fee and act on the request for continued examination if the USPTO determines that the new information warrants reopening prosecution.

The QPIDS pilot program will run through September 30, 2012.

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