Access to Relevant Prior Art Initiative

The Access to Relevant Prior Art Initiative is an effort underway to increase patent examination quality and efficiency through the development of an automated tool for USPTO examiners in their examination system, which imports relevant prior art and other pertinent information into pending U.S. patent applications as early as possible. The information would be imported from relevant sources such as related U.S. applications, counterpart foreign applications, and related international applications filed under the Patent Cooperation Treaty (PCT). This initiative is envisioned to potentially reduce the burden on applicants with complying with the duty of disclosure.

Access to relevant prior art

 

Envisioned Benefits

  • Simplifies application process for applicant
  • Speeds up examination process
  • Increases efficiency of prosecution procedures
  • Improves prosecution quality

Overview

The USPTO is exploring how to best utilize electronic resources to provide examiners with information (e.g. prior art, search reports, etc,) from applicant’s other applications as early as possible to increase patent examination quality and efficiency. These other applications could have the same or substantially the same disclosure (e.g., domestic parent and counterpart foreign applications) as the U.S. application being examined. In addition to improving patent examination quality and efficiency, automatically import such information early on in the application process may reduce applicant’s burden to provide this information to the USPTO. This initiative has been divided into multiple phases of development and implementation.

Research and evaluation is being conducted to evaluate the potential to import information (e.g., prior art and search reports) into pending U.S. applications from existing resources, including Global DossierCommon Citation DocumentWIPO’s PatentScope, and USPTO internal IT systems.  Functionality is being developed in the new tool to provide notice to the applicant of relevant information and references imported and considered.

Phase 1

The goal for Phase 1 is to develop the automated tool for examiners, providing them with the ability to view a master reference list, including references cited in the instant application (by applicant and examiner) and imported references from immediate U.S. parent applications (cited by applicant and examiner, but not third parties). It is envisioned that the user interface will provide enhanced functionality, such as filtering the reference list and creating a search string of U.S. patent documents that could be imported into existing or new search tools.

The initial implementation will be a targeted release and will not be a corps-wide release. On November 1, 2018, the initiative will be released to Art Unit 2131 in Technology Center 2100. On January 1, 2019, the initiative will be released to the following eight additional art units: 1616, 1731, 2431, 2675, 2879, 2922, 3635, and 3753. The USPTO will determine whether an application meets the conditions for inclusion in the first phase of the RPA Initiative after the Office of Patent Application Processing completes pre-examination processing of the continuing application. You will receive a Notice of Imported Citations informing you of your application’s inclusion in the Initiative and listing the citations from the immediate parent application that have been imported into the application. You can find answers to Frequently Asked Questions (FAQs) here.

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.

Previous User Input

User feedback on this initiative was solicited via a Federal Register Notice (FRN) published on August 29, 2016. The FRN asked for user input on specific aspects of the initiative and announced a public roundtable. The roundtable was held on September 28, 2016.  Written comments in response to the FRN inquiries were accepted until October 28, 2016.

In addition, a Patent Quality Chat was held on September 13, 2016 to discuss this initiative and answer questions from the public. On November 9, 2017, the latest information about this initiative was presented during the Patent Public Advisory Committee (PPAC) quarterly meeting.

We Want to Hear From You

Extensive internal and external stakeholder outreach will continue to better understand the needs of both examiners and applicants, such as how functionality in the tool should be designed and controlled. A Federal Register Notice announcing the release of Phase 1 of this initiative will be published in September.

Provide your feedback on the Access to Relevant Prior Art Initiative on Ideascale or contact us at PriorArtAccess@uspto.gov.