Over the last 10 years, patent pendency measured from U.S. filing date until allowance of a patent application has been just over three years. During the pendency of a patent application, the inventor(s) and anyone substantively involved with the preparation and/or prosecution of the application are under a duty to submit information including prior art (e.g., prior publications) that are materially relevant to the patentability of a patent application.

A problem arises when a U.S. patent applicant becomes aware of relevant prior art after receiving a notice of allowance. Prior to May 16, 2012, if an applicant became aware of prior art after receiving a notice of allowance and after paying the issue fee, the only recourse was to file a request for continued examination (RCE) together with a petition to withdraw the application from issuance.

Disclosure Options

Recognizing a need to “reduce pendency and applicant costs when an information disclosure statement (IDS) is filed after payment of the issue fee,” the U.S. Patent Office (USPTO) initiated the Quick Path Information Disclosure Statement (QPIDS) pilot program. Under QPIDS, an applicant files an IDS with a “conditional RCE.” If the examiner determines that no item in the IDS necessitates reopening prosecution, the USPTO will issue a corrected notice of allowability making the IDS of record. If the examiner determines that any item in the IDS necessitates reopening prosecution, prosecution will reopen by activating the provisional RCE.

Prior art that comes to the attention of an applicant after a patent issues requires special consideration. If the prior art should have been submitted before the patent issued (e.g., the submission was inadvertently delayed or overlooked), the failure to submit the prior art could open the door to an assertion of inequitable conduct and unenforceability by third parties. If the prior art was not identified until after the patent issued, and the patentee determines that the patent might not be allowable over the prior art, the validity of the patent based on the prior art could be challenged by third parties. A patentee who becomes aware of prior art after a patent issues has to decide whether to take action to solve the situation or wait and see if the patent ever needs to be enforced or defended and at that time seek to cure the situation.

Review Procedures

Prior to implementation of the supplemental examination procedure, the only recourse to have prior art considered in an issued patent was reexamination that required a $16,000 government fee. The supplemental examination procedure allows a patent owner to seek a low-level review of an issued patent to make sure that it remains allowable over newly submitted information. In an initial review, the USPTO will determine whether the new information raises a substantial new question of patentability; if not, the USPTO will conclude the review and issue a certificate indicating that the information presented in the request does not raise a substantial new question of patentability. If the USPTO finds a substantial new question of patentability exists, the USPTO will order a full (ex parte) reexamination.

Because of the requirement of ordering a full reexamination if a substantial new question of patentability is found, a patentee filing a request for supplemental examination has to pay both the fee for requesting supplemental examination (currently $4,400) and the fee for reexamination (currently $12,100). If the USPTO issues a certificate indicating that the prior art did not raise a substantial new question of patentability, reexamination will not be ordered and the reexamination fee will be refunded. The potential total costs—$16,500—for proceeding with supplemental examiner is a factor that patentees need to weigh against the likelihood of having to enforce or defend a patent in the future when deciding whether or not to request supplemental examination.

Avoiding Reexaminations

The USPTO had estimated that it would receive about 1,430 requests for supplemental examination annually. However, from September 16, 2012, to August 31, 2014, only 81 requests have been filed. As of July 30, 2013, 78% of supplemental examinations resulted in ordered reexamination and/or a finding or a substantial new question of patentability.

There has always been an interest in accelerating examination, and the USPTO has accordingly developed programs such as Track One Prioritized Examination, Accelerated Examination, Petitions to Make Special and the Patent Prosecution Highway to achieve this goal. While obtaining an issued patent quickly is generally desirable, shorting pendency can result in a U.S. patent issuing before all relevant prior art can be uncovered—particularly in cases where foreign prosecution of corresponding applications is not completed. The pendency of applications filed under Track One Prioritized Examination and Accelerated Examined can be less than 12 months. Such a short pendency limits the opportunity to become aware of relevant prior art before such applications issue.

Once a notice of allowance is received, the issue fee will need to be paid within three months. Upon receiving a notice of allowance, it would be prudent for an applicant to determine if any prior art not previously submitted needs to be submitted before the issue fee is paid. After the issue fee is paid, an issue notification will be mailed out listing the date upon which the patent will issue. Upon receipt of the issue notification, an applicant should check and determine if any prior art not previously submitted needs to be submitted before the patent issues to avoid having to consider filing a request for supplemental examination. 

 Any views or opinions expressed in this column are those of the author and do not represent those of Ceramic Industry, its staff, Editorial Advisory Board or BNP Media.