This article first appeared in the AIPLA Patent Law Committee October 2020 Newsletter.

By Hayley Talbert and Michael M. Morris

For the past few years, the USPTO has been quietly testing a way to automatically import prior art references from related applications at the USPTO (i.e., without any prompt from the Applicant) and improve examiner review of those references.  The program, referred to as the Access to Relevant Prior Art (RPA) initiative, launched in November of 2018 and is currently being piloted in one Art Unit in each of the nine technology centers at the USPTO (currently Art Units 2133, 1616, 1731, 2431, 2675, 2879, 2922, 3635, and 3753). Other than a recent announcement regarding the Art Units within the program and the occasional Notice of Imported Citations received by an Applicant—which indicates their application was entered in the program—the USPTO has been relatively silent regarding this initiative. So, earlier this summer, AIPLA Patent Law Committee Members Hayley Talbert and Mike Morris met with USPTO personnel working on this program to understand how the initiative has been going and learn where the initiative may go. The following is a summary of what the USPTO shared with the AIPLA.

The RPA initiative is currently in Phase 1, which is limited to US patent applications with only one non-provisional parent application or patent and in only certain Art Units.  For applications in the initiative, software created to implement the RPA initiative collects prior art from Information Disclosure Statements (IDSs), PTO 892 forms, and Third Party Submissions in the parent application or patent and presents those references to the Examiner as a Master Reference List.  An applicant whose application is included in the RPA initiative receives a Notice of Imported Citations informing them of their application’s inclusion and listing the references on the Master Reference List.  The Applicant, however, need not take any affirmative steps to participate in this program.

Currently, for citations printed on the face of a patent outside of the RPA, the references come from up to three sources (Applicant provided, Examiner cited, Third Party Submission). Under the RPA, the USPTO has now added another category—automatically imported references.  All four of these categories of prior art references will be printed on the face of patent granted from the RPA.

So why was this program created? The USPTO’s primary goals in the program are to increase patent examination quality and efficiency. An automated tool developed for USPTO examiners to help them review the references from the Master Reference List is the primary means to achieve these goals.  While the USPTO is still collecting data on the new tool which is currently available only for cases in the RPA, the general sense is the new automated tool for examiners has increased the number of relevant reference presented to the Examiner and also does aid the Examiner in his/her review of those references.

Another goal of the RPA is to assist Applicants and patent prosecutors in meeting the duty of disclosure under 37 C.F.R. 1.56, and—hopefully—save Applicant’s money during prosecution. Whether this goal is being met is unknown. From informal conversations, many practitioners seem unfamiliar with the program and, therefore, may be surprised when they receive a Notice of Imported Citations—perhaps causing them to spend time investigating the program. Additionally, while some practitioners that receive a Notice of Imported Citations may trust the completeness of the references listed, the AIPLA suspects many practitioners will compare the list of references on the Notice of Imported Citations with the references in their own records of prior art to ensure no relevant reference is omitted.

So what are the USPTO’s plans for future phases of the RPA? While the RPA currently imports references from only an immediate parent application or patent, the USPTO intends to eventually pull references from more distant family members (grandparents, PCTs, etc.). Also, rather than the single import done now, the USPTO plans to import relevant prior art in real-time (e.g., as citations are entered in the parent case). Additionally, the USPTO intends to collect prior art from other patent offices (e.g., the EPO and JPO).

While Phase 1 is about to have its second anniversary, the USPTO has not yet scheduled a transition to Phase 2 of the initiative.  When Phase 2 occurs, however, practitioners may see an increase in the number of Examiners using the Master Reference List and related new tools, expansion in the types of applications allowed in to the initiative (such as applications that have more than one priority claim), and expansion in the sources from which the prior art references are collected. The USPTO is also considering providing a mechanism for Applicants to indicate other applications to be imported, such as cross-cited families that may not share a priority claim.

Takeaway, the USPTO is currently automatically importing references for only certain cases in certain Art Units. If you receive a Notice of Imported Citations, please know that the USPTO is currently doing only a one-time import of references from the parent application.  If the parent application is still pending and additional prior art arises in the parent application after the import into the child application, practitioners will need to identify and provide such references to the USPTO in an IDS if they want such references to be considered by the examiner and listed on the face of any patent issuing from the child application.

More information is available on the Access to Relevant Prior Art webpage of the USPTO website.