By David Hricik, Mercer Law School
The USPTO is a couple of years into its Access to Prior Art Initiative, which in its first phase was designed to create for the examining corps a single list of references combining those cited in an application (by applicant and examiner) and references from the immediate U.S. parent applications (cited by applicant and examiner, but not third parties). In the first phase, if an application met criteria for inclusion (among other things, only certain Art Units were included), the Office would notify the practitioner that the prior art was automatically imported, reducing the burden o cite that art. The project was intended to then expand to include foreign counterpart and PCT applications.
In looking for exactly how broadly this has been implemented, I was unable to find much information after January 2019. As Carl Oppedahl recently pointed out, it’s a great idea and means to avoid unnecessary work and issues about disclosure. If you’ve had any involvement and can share, that’d be great. I’m curious, for example, if the process is working: for example, is the importation complete and accurate? I’ll also reach out to the Office and see if I can learn anything and will amend this post if so.
While I can understand why the list might not automatically include third party submissions, the omission does create a potential “trap” where a practitioner in the child fails to cite third-party art from the parent which was material to the parent, or is (or becomes) material to the child.