Access to Prior Art Project

About the Project

To increase patent examination quality and efficiency, we continue to explore how to best provide examiners with information such as prior art, search reports, etc. from applicants’ other applications as early as possible. These other applications, for example, could have the same, or substantially the same, disclosures (e.g., domestic parent and counterpart foreign applications) as the U.S. application being examined. Access to this information in an efficient manner could potentially reduce the applicant’s burden to provide this information to the USPTO.

Approach

We are currently conducting research on the electronic tools and resources available (e.g., Global Dossier, Common Citation Document, WIPO’s PatentScope, USPTO internal IT systems, etc.) and how they can be leveraged 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.

We are evaluating this from both the examiner and applicant perspectives. For examiners, we are looking at how to increase awareness of relevant prior art and ensure they have access to it at the earliest point in the examination. This involves exploring how the prior art can be provided in a manner that increases search and examination efficiency and overall quality. We are also investigating how we can ensure that the examiner can determine the relevance of the prior art. Application case studies have been conducted to consider what effects an automated system to import prior art for related applications would have on prosecution and examiners.

Benefits

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 examiners are provided with the most relevant information without being overburdened with immaterial and marginally relevant information.

For applicants, they currently must obtain the information necessary to meet their duty of disclosure and assist the examiner in making a proper patentability determination. This is often cumbersome, costly, and requires time-consuming efforts to monitor prosecution in related or counterpart applications.

User Input

User input on this project was solicited via a Federal Register Notice (FRN) published on August 29, 2016.  The FRN asked for user input on specific aspects of the project 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.

Extensive internal and external stakeholder outreach will continue throughout the project to better understand the needs of examiners and applicants, such as how such a system should be designed and controlled, and what information should be documented relative to the imported information.

Provide your feedback on the Access to Prior Art project on Ideascale.

More Information

If you would like more information about this project or on how you can become involved, please email PriorArtAccess@uspto.gov.