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Monday Aug 29, 2016

Importing Prior Art Automatically to Streamline Patent Examination Process

Guest blog by Mark Powell, Deputy Commissioner for International Patent Cooperation

As part of our continuing efforts to improve patent examination quality and efficiency, the USPTO will host a roundtable on September 28, 2016 to discuss new ways to more efficiently identify prior art for patent applications. The USPTO plans to leverage electronic resources (e.g., Global Dossier and USPTO internal databases) to automatically import relevant information (e.g., prior art and search reports) into pending U.S. applications from sources such as domestic parent and counterpart foreign applications. This will streamline the patent examination process for both examiners and applicants, as outlined in our Federal Register Notice.

An automated solution to deliver relevant information to the U.S. application file will enhance the examiner’s ability to identify the most relevant prior art as early as possible and likely increase efficiency of prosecution procedures. Of course, it will be critical to ensure our examiners are provided with the most relevant information without being overburdened with immaterial and marginally relevant information. The goal is to create a searchable application file that is built from applicant submissions, the examiner’s own search results, and information retrieved automatically.

This new system will more efficiently identify prior art in applications and streamline the process for both examiners and applicants. We are planning extensive stakeholder outreach to better understand the needs of applicants, such as how such a system should be controlled and what information should be documented relative to the imported information. (e.g., date, source, examiner consideration, etc.) We hope to hear from you on this initiative and look forward to receiving your input at our upcoming roundtable on September 28, 2016.


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