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Additional Nelson Mullins Alerts

November 19, 2018

IDS-Related USPTO Announcements

By Jill Gorny Sloper

The USPTO recently issued two announcements related to Information Disclosure Statements.

Interim Procedure for Requesting Recalculation of Patent Term Adjustment With Respect to Information Disclosure Statements Accompanied by a Safe Harbor Statement

An Information Disclosure Statement (IDS) filed after a Response is subject to a Patent Term Adjustment (PTA) deduction, unless the IDS is filed with a “safe harbor” statement under 37 CFR 1.704(d) certifying that the IDS is being filed to submit references first cited by the USPTO or a foreign patent office no more than 30 days prior to the filing of the IDS.  Often, the USPTO erroneously takes a PTA deduction even when an IDS is filed with the requisite statement.  The USPTO recently implemented an interim procedure to address this issue.  Effective November 2, 2018, when the only error in the USPTO’s PTA calculation is the failure to recognize a timely filed “safe harbor” statement, a Request for Recalculation can be made by submitting a single request form (PTO/SB/134).  No fee is required. 

In addition, the USPTO has created a new optional form (PTO/SB/133) for an Applicant to use as the “safe harbor” statement when submitting the IDS.  Once the USPTO updates its software, this form will be automatically recognized as a “safe harbor” statement, thereby minimizing PTA calculation errors by the USPTO.

For further information, please see Federal Register Vol. 83, No. 213.

Access to Relevant Prior Art (RPA) Initiative

The USPTO has also announced an initiative under which it will import all citations (both considered and unconsidered) listed on forms PTO/SB/08 and PTO-892 from the immediate parent application into the continuing application(s).  All imported citation documents will be considered by the Examiner and printed on the patent issuing from the continuing application.  This “Access to Relevant Prior Art” (RPA) initiative is already underway in Art Unit 2131 and will ultimately be expanded to other Art Units. 

To be included in the Phase I Initiative, the application must be a non-reissue, non-provisional application filed under 35 U.S.C. 111(a) with a claim for benefit under 35 U.S.C. 120 or 121 of only a single prior U.S. parent application that was filed under 35 U.S.C. 111(a) or entered national stage under 35 U.S.C. 371 (the parent application can claim priority or benefit of other applications only under 35 U.S.C. 119).  Once the USPTO completes pre-examination processing of the continuing application, it will issue a Notice of Imported Citations confirming the application’s inclusion in the Initiative and listing the citations from the immediate parent application that have been imported into the application. 

Subsequent phases of the project will focus on importing from additional sources, such as counterpart foreign and PCT applications, and providing access to text-searchable copies of documents in the master reference list. 

For further information, please see Federal Register Vol. 83, No. 207.