IP Update, Vol. 10, No. 2 (15 May 2012)

Editors: Marc S. Weiner, Esq. and Nicholas P. Godici

New USPTO Program to Implement Post-Issue Fee Payment Consideration of Information Disclosure Statements

The USPTO recently announced a new "Quick Path Information Disclosure Statement" (QPIDS) pilot program. In many instances, the program may reduce the government fees and delay associated with IDSs filed after issue-fee payment (but before grant). From May 16, 2012 through at least September 30, 2012, Examiners should consider whether information disclosed in an IDS, filed in compliance with QPIDS after payment of an issue fee, warrants re-opening prosecution. The fee for either RCE or IDS may be refunded, as described below, in many cases resulting in significant savings.

To benefit from the program an applicant must file the following, via EFS-web, with all fees authorized to be paid by charge to a deposit account:

  1. a QPIDS transmittal (new form PTO/SB/09),
  2. the IDS, with 1.97(e) timeliness statement and fee ($180),
  3. a web-based e-Petition to Withdraw the application from issue, with fee ($130), and
  4. a "conditional" Request for Continued Examination (RCE), with fee ($930 for large entities).

Once the Petition to Withdraw is granted, the IDS is placed on the appropriate Examiner's "expedited" docket for consideration. If re-opening prosecution is determined to be appropriate, the conditional RCE will be processed and the IDS fee "automatically returned" because the IDS will then comply with 37 C.F.R. §1.97(b)(4). Conversely, if prosecution need not be re-opened, a corrected Notice of Allowability will be issued, the RCE will not be processed, and the RCE fee will be "automatically returned."

Either way, this program may result in cost savings to applicants in many instances, and of course will shorten prosecution in cases where prosecution is not re-opened.

The USPTO announcement (including a link to the corresponding Federal Register page) can be found at the following link.

Summary provided by James C. Larsen.