Access to Prior Art Initiative of the USPTO to Ease Importation of Prior Art References from Parent Cases

Ethics

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.

About David

Professor of Law, Mercer University School of Law. Formerly Of Counsel, Taylor English Duma, LLP and in 2012-13, judicial clerk to Chief Judge Rader.

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4 thoughts on “Access to Prior Art Initiative of the USPTO to Ease Importation of Prior Art References from Parent Cases”

  1. 2

    Right, but not practically available. A child constructively incorporates everything earlier. Great. Now the examiner in the second case needs to look at them. The initiative physically incorporates them — pdfs, not numbers. So it’s a time-saver for everyone.

    1. 2.1

      Thanks David, I was not questioning the expediency or effectiveness, just the implication that a trap for the unwary was present.

  2. 1

    Is this really an issue to begin with?

    Off the cuff, does not a child application already begin with constructive knowledge of the entire file wrapper of the parent? The duty to disclose (for the child) does not include RE-disclosing things that the Office already has possession of (and the limit of requirement of disclosure from the applicant is met with the applicant’s notice to the Office of the ‘chain of title’ and intent to incorporate the record of the parent.

    1. 1.1

      MPEP 609.02 makes it unnecessary to file an IDS in a continuation for references already considered in a parent, so I have the same question: what burden does this eliminate for me?

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