3

In the US, a duty of disclosure to submit information material to patentability extends until the patent is granted. This means that the duty still applies after notice of allowance (NoA) and after issue fee payment, but before issue (usually 6 weeks after issue fee payment). See here.

Therefore, what if the applicant discovers new prior art either after NoA or after issue fee payment, but before issue? Is the applicant required to submit an IDS disclosing this information? What if the new prior art is discovered 1 day before the scheduled issue date?

In general, the applicant must submit known material prior art in order to avoid risk of inequitable conduct (IC) charges. However, when the prior art is discovered close to issue, it appears there may be a "fuzzy" requirement, as it is likely impractical to submit prior art discovered 1 day before issue. Further, third parties may exploit the duty of disclosure by waiting until the end of prosecution, then serving the applicant with material art, which will require additional prosecution fees (e.g. RCE) and time, or else the applicant will be vulnerable to IC charges at a later date.

Note that the USPTO currently offers a "QPIDS" program for IDSes submitted after issue fee payment. However, I have not seen anywhere that the QPIDS route is a "requirement", only an option that "may" be utilized.

Further discussion on recommended practice regarding late-discovered prior art here and here.

  • Are you sure an RCE is needed? Wouldn't it be sufficient to submit the IDS and let the examiner decide if they want to reopen examination? – DonQuiKong May 22 '18 at 5:56
  • @DonQuiKong I think it depends on what time the IDS is filed, but generally it sounds like an IDS filed after issue fee payment is not considered. And further, to have "clean hands", the applicant should re-open prosecution to ensure the IDS-submitted art is considered. – user132162 May 22 '18 at 20:28
  • Without an RCE, the examiner is under no obligation to read the new material. – George White May 26 '18 at 0:55
1

The QPIDS is not a "requirement", it is a way of avoiding filing a petition to withdraw from issue and then file an RCE, because the duty of disclosure is still in force, as noted. Such a petition requires that you identify a defect in the application. Who wants to do that?

The idea behind the QPIDS is that you have art you want the Examiner to consider (so that you have clean hands) but you do not feel affects the patentability. Filing an RCE would be a waste. Instead, you tell Examiner to look at the art and agree ahead of time that examination can be restarted if Examiner wants to. if not reopened, you have filed the art and have "clean hands".

To summarize, the USPTO is making it easy for you to fulfill your duty after payment of issue fee. But note question 9. Sometimes QPIDS is not available and if you want the IDS considered and your duty fulfilled, you do it the hard way.

To answer the question about impracticality, it is possible to file a QPIDS even one day before issue, but that requires (really) special handling. and you always have a choice of filing a continuation on the day before issue.

To answer the legal warfare comment. Filing art by a third party against a competitor just before issue is usually not a good idea. RCE fees are very low compared to IPR and litigation fees, so the competitor is not being bled by the third party. On the other hand, during patent prosecution, the third party is not part of the discussion, allowing the competitor to convince the Examiner that the art is not relevant or fix the patent on the cheap. Now that the art was considered by the Examiner, there will be a presumption that the art is overcome.

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