On Thursday, March 15, 2018, Commissioner for Patents, Andrew Hirshfeld, announced that the USPTO is making progress on its “Access to Prior Art Project,” which will serve as an automated tool to identify relevant prior art early in the review process.[1] The goal of the project is to increase patent examination quality and efficiency by providing examiners with access to an initial pool of relevant prior art and search reports from related applications at the earliest point possible.

The idea for the automated search mechanism started back in August of 2016, with a Federal Register Notice asking for user input on specific aspects of the project.[2] The Federal Register Notice explained that the automated tool would first identify the applicant’s other applications that have the same or substantially the same disclosure (e.g., domestic parent and counterpart foreign applications) as the U.S. application being examined. It would then pull all of the cited prior art and search reports from those applications and import them into the U.S. application file for the application currently under review. Written comments in response to the Federal Register Notice were accepted until October 28, 2016.

The Federal Register Notice further announced a public roundtable to provide a forum for discussion, which was subsequently held on September 28, 2016.[3] During the roundtable, the USPTO sought participant feedback on the following questions:

  1. In balancing the goals of examination quality and efficiency, should the USPTO monitor other applications, besides domestic parent and counterpart foreign applications, for relevant information located therein for consideration in the instant U.S. application? If so, which other applications should be monitored (e.g. siblings, applications involving the same or related technology, etc.)?
  2. What is the most convenient way to bring an application to the USPTO’s attention that should be monitored for information during the examination of a U.S. application (e.g., automated system, applicant notifies the USPTO, etc.)?
  3. How should the USPTO determine which information from the monitored applications to provide examiners while ensuring they are not overburdened with immaterial and marginally relevant information?
  4. If the USPTO were to implement a fully automated system to import information from applicant’s other applications, how should the USPTO document the information automatically imported into the image file wrapper of the instant U.S. application? For example, should the record reflect which domestic parent or counterpart foreign application the information was imported from, the date that the information was imported, and whether the examiner considered the imported information?
  5. Taking into consideration the information that is publicly available in PAIR, what information should be part of a patent? For example, should prior art references and classification information still be listed on the front page of a patent?

Since the public roundtable and Federal Register Notice, the USPTO has continued to engage in internal and external stakeholder outreach to better understand examiner and applicant needs and how the system should be designed and controlled. While still in its early stages, the USPTO is currently investigating exactly how to implement the function of identifying related applications and how to leverage the electronic resources currently available to examiners, including Global Dossier, Common Citation Document, WIPO’s PatentScope, and USPTO internal IT systems such as PAIR and EAST, in order to import the most relevant prior art into the file for consideration during prosecution. The system will also be limited to importing only those prior art references and search reports that are likely to provide a running start for the examiner in conducting his or her own search, so as to not overburden the examiner with loads of only marginally relevant information which could prove more time consuming than just starting a search from scratch.

In addition to streamlining the examination process for examiners, the automated tool may also alleviate some of the burden on applicants in meeting their duty of disclosure. As this required disclosure of related prior art to the USPTO is often cumbersome and costly, requiring constant monitoring of the prosecution and prior art considered in related or foreign counterpart applications, the new automated system will likely make it easier for applicants to fulfill this obligation.

As Mr. Hirshfeld noted last week, the scope of the automated searches is still an open question. While the initial design may be limited to just prior art from the patent family, he hopes that it will eventually expand to other related information that may be helpful to the examiner to further improve examination efficiency and examiner performance and ultimately produce stronger patents in a shorter amount of time. Completion of the initial phase of the program is expected sometime this fall.