Access to Relevant Prior Art Initiative, 53853-53856 [2018-23338]

Download as PDF Federal Register / Vol. 83, No. 207 / Thursday, October 25, 2018 / Notices daltland on DSKBBV9HB2PROD with NOTICES and the states.1 Specifically, Congress directed NTIA to acquire and display available third-party data sets to the extent it is able to negotiate its inclusion to augment data from the FCC, other federal government agencies, state government, and the private sector.2 The objective of these updates is to identify regions of the country with insufficient broadband capacity, particularly in rural areas. Presently, the only source of nationwide broadband availability data is that collected from broadband service provider responses to the FCC Form 477 Fixed Broadband Deployment data process. Form 477 data are submitted by voice and broadband telecommunications service providers semi-annually and include information on the services each provider offers, at the Census block level.3 While the Census block system provides a very high level of geographic granularity overall—the United States is divided into over 11 million blocks, 95 percent of which do not exceed 1 square mile in land area—it is possible that broadband availability may vary within a single block, (which is most common in rural areas). Additionally, broadband service providers who wish to share more granular data on broadband availability—including regulated and non-regulated entities—have no mechanism to do so. Further, a broadband service provider offering service to any homes or businesses in a Census block is instructed to report that block as served in its Form 477 filing, even though it may not offer broadband services in most of the block. This can lead to overstatements in the level of broadband availability, especially in rural areas where Census blocks are large or when services are only available near the boundaries of a Census block. As a result of these constraints, NTIA intends to collect broadband availability data at a more granular level than that available via the FCC Form 477 process. This data will be used to better assess broadband availability across the country and particularly in rural areas. This information collection covers the 50 states, the District of Columbia, the Commonwealth of Puerto Rico, the Island Areas of American Samoa, the Commonwealth of the Northern Mariana 1 Consolidated Appropriations Act of 2018, Public Law 115–141, Division B, Title I, 132 Stat. 348. 2 Joint Explanatory Statement, 164 Cong. Rec. No. 50—Book II, at H2084–85 (Mar. 22, 2018). 3 ‘‘All facilities-based broadband providers are required to file data with the FCC twice a year (Form 477) on where they offer internet access service at speeds exceeding 200 kbps in at least one direction.’’ See https://www.fcc.gov/general/ broadband-deployment-data-fcc-form-477. VerDate Sep<11>2014 18:10 Oct 24, 2018 Jkt 247001 Islands, Guam, and the United States Virgin Islands. NTIA intends to collect this information from two types of respondents that collect broadband data with more geographic granularity than the Census block level: (1) Owners and operators of broadband networks; and (2) industry associations, data aggregators, and researchers that study or analyze broadband availability. Respondents may include private companies, non-profits, cooperatives, educational institutions, tribal governments, and local, regional, or state governments. This information collection includes the use of both wireline and wireless technologies to deliver broadband services. The data to be collected includes geographic information on service availability—such as address, address range, road centerline, land-parcel identification, or latitude/longitude— and corresponding broadband availability data (such as technology service type, upload and download speed, etc.). Data in a Geographic Information Systems (GIS) format that describe (a) wireless coverage areas based on a propagation model and (b) network infrastructure (such as fiber optic routes) is also responsive. NTIA will not require that respondents modify appropriate data sets, with the exception that Personally Identifiable Information (PII) should be removed prior to transmission to NTIA. Data collection operations will result in respondent burden during: (1) Efforts to assemble their data for transmission to NTIA; (2) removal of PII; and (3) NTIA communications with respondent contacts to ensure NTIA correctly understands the data. II. Method of Collection The information collection will be administered through an online file transfer tool. III. Data OMB Control Number: None. Form Number(s): None. Type of Review: Regular submission. Affected Public: Owners and operators of broadband networks, industry associations, data aggregators, and researchers. Frequency: Annual. Number of Respondents: 600. Average Time per Response: 8 hours. Estimated Total Annual Burden Hours: 4,800 hours. Estimated Total Annual Cost to Public: $200,832. IV. Request for Comments Comments are invited on: (a) Whether the proposed collection of information PO 00000 Frm 00007 Fmt 4703 Sfmt 4703 53853 is necessary for the proper performance of the functions of the agency, including whether the information shall have practical utility; (b) the accuracy of the agency’s estimate of the burden (including hours and cost) of the proposed collection of information; (c) ways to enhance the quality, utility, and clarity of the information to be collected; and (d) ways to minimize the burden of the collection of information on respondents, including through the use of automated collection techniques or other forms of information technology. Comments submitted in response to this notice will be summarized and/or included in the request for OMB approval of this information collection; they will also become a matter of public record. Sheleen Dumas, Departmental Lead PRA Officer, Office of the Chief Information Officer. [FR Doc. 2018–23296 Filed 10–24–18; 8:45 am] BILLING CODE 3510–60–P DEPARTMENT OF COMMERCE Patent and Trademark Office [Docket No.: PTO–P–2018–0051] Access to Relevant Prior Art Initiative United States Patent and Trademark Office, Commerce. ACTION: Notice. AGENCY: The United States Patent and Trademark Office (USPTO) is implementing the first phase of the Access to Relevant Prior Art Initiative (‘‘RPA Initiative’’) to import citations (e.g., bibliographic data on forms PTO/ SB/08 and PTO–892) from the immediate parent application into the continuing application. The citations corresponding to the documents considered by the examiner in the continuing application will be printed on the face of the patent issuing from the continuing application without the applicant having to resubmit the information on an Information Disclosure Statement. Additionally, an applicant’s duty to disclose information in the continuing application will continue to be satisfied for information considered in the parent application and will be satisfied for any additional information made of record by the Office in the continuing application. The RPA Initiative is being developed in response to public input following an August 29, 2016, notice and September 28, 2016, roundtable event on leveraging electronic resources to retrieve SUMMARY: E:\FR\FM\25OCN1.SGM 25OCN1 53854 Federal Register / Vol. 83, No. 207 / Thursday, October 25, 2018 / Notices daltland on DSKBBV9HB2PROD with NOTICES information from applicant’s other applications. The USPTO plans to implement the RPA Initiative in phases to consider and address public and examiner feedback at each phase and determine how to effectively expand the RPA Initiative in future phases. DATES: Applicable Date: November 1, 2018. ADDRESSES: The RPA Initiative will be implemented in stages without a comment deadline. Comments will be accepted on an ongoing basis. Written suggestions and comments should be sent by electronic mail to PriorArtAccess@uspto.gov or via the IdeaScale tool available at https://usptopriorart.ideascale.com. Comments also may be submitted by postal mail addressed to: Mail Stop Comments— Patents, Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313–1450, marked to the attention of Michael Neas, Deputy Director, International Patent Legal Administration. FOR FURTHER INFORMATION CONTACT: For questions or comments regarding the RPA Initiative in general, please contact Michael Neas, Deputy Director, International Patent Legal Administration, by telephone at 571– 272–3289, or by email to michael.neas@ uspto.gov or Matthew Sked, Senior Legal Advisor, Office of Patent Legal Administration, by telephone at 571– 272–7627, or by email to matthew.sked@uspto.gov. Questions regarding a specific application should be directed to the Technology Center examining the application. SUPPLEMENTARY INFORMATION: I. Background On August 29, 2016, the USPTO issued a notice seeking public feedback regarding how to efficiently utilize information from applicant’s other applications having the same or substantially the same disclosure to provide examiners with relevant information at the earliest stage of examination. See Request for Comments and Notice of Roundtable Event on Leveraging Electronic Resources to Retrieve Information from Applicant’s Other Applications and Streamline Patent Issuance, 81 FR 59197 (August 29, 2016). The notice announced a Roundtable that was held on September 28, 2016 and requested written comments by October 28, 2016. In response, the Office received twenty-six comments from a diverse group of stakeholders including intellectual property organizations, companies, law firms and individuals. Most of the stakeholders supported a program where the USPTO would automatically VerDate Sep<11>2014 18:10 Oct 24, 2018 Jkt 247001 monitor related applications for relevant information therein for consideration during the examination of a U.S. application. However, stakeholder views varied on the optimal scope of the program and best method for implementation. Accordingly, the USPTO will implement the RPA Initiative in phases to consider and address public and examiner feedback at each phase. This feedback will be used to determine if the first phase needs adjustment, and how to expand the RPA Initiative effectively in future phases. Applicants and other individuals substantively involved with the preparation and/or prosecution of a U.S. non-provisional application have a duty to submit to the USPTO information which is material to patentability as defined in 37 CFR 1.56. The provisions of 37 CFR 1.97 and 37 CFR 1.98 provide a mechanism by which patent applicants may comply with the duty of disclosure provided in 37 CFR 1.56. An information disclosure statement (IDS) filed in accordance with the provisions of 37 CFR 1.97 and 37 CFR 1.98 will be considered by the examiner assigned to the application. Citations listed in an IDS (e.g., on form PTO/SB/08 and equivalents) and considered by the examiner will be printed on the patent and distinguished from citations that were cited by the examiner and listed on a form PTO–892 (examiner citations will be marked with an asterisk). See Manual of Patent Examining Procedure, Rev. 08.2017, Jan. 2018 (referred to herein as ‘‘MPEP’’) §§ 609 and 609.06. Under current practice, when filing a continuing application that claims benefit under 35 U.S.C. 120 to a parent application (other than an international application for patent under the Patent Cooperation Treaty (PCT) that designated the United States), a listing of information which has been considered by the examiner in the parent application need not be resubmitted in the continuing application unless the applicant desires the information to be printed on the patent. Specifically, ‘‘(t)he examiner will consider information which has been considered by the Office in a parent application . . . when examining: (A) A continuation application filed under 37 CFR 1.53(b), (B) a divisional application filed under 37 CFR 1.53(b), or (C) a continuation-inpart application filed under 37 CFR 1.53(b).’’ MPEP § 609.02(II)(A)(2). II. RPA Initiative After careful consideration of the input from the public and examiners on the prior art initiative announced in the PO 00000 Frm 00008 Fmt 4703 Sfmt 4703 August 29, 2016 notice, the USPTO is implementing the RPA Initiative that will leverage electronic resources to improve examiner’s access to relevant information from applicant’s other related applications. As indicated previously, the USPTO will be implementing the RPA Initiative in phases to evaluate public and examiner feedback at each phase to address concerns and determine the ideal course for future expansion of the RPA Initiative. In the first phase of the RPA Initiative, the USPTO will import the citations listed on forms PTO/SB/08 (or equivalents) and PTO–892 in the immediate parent application into the continuing application. If compliant with 37 CFR 1.98 in the parent application, the examiner will consider the documents that correspond to these citations and the citations will be printed on the patent. This will eliminate the need for applicant to submit an IDS in the continuing application for the purpose of having these citations printed on the patent. Additionally, an applicant’s duty to disclose information under 37 CFR 1.56 in the continuing application will continue to be satisfied for information considered in the parent application and will be satisfied for any additional information made of record by the Office in the continuing application. In subsequent phases of the RPA Initiative, the USPTO will consider providing examiners access to citation information from other sources such as other related U.S. applications, international applications under the PCT, and counterpart foreign applications of the same applicant. The selection of these sources and the timetable for expansion will be dictated, at least in part, by evaluating the first phase including feedback on the RPA Initiative from the public and examiners. This first phase will also begin with a targeted release of a newly developed interface to a subgroup of examiners from a limited number of selected art units. In subsequent phases of the RPA Initiative, the USPTO plans to provide the interface to more examiners when the RPA Initiative proves scalable. III. Structure of the First Phase of the RPA Initiative (1) Overview In the first phase of the RPA Initiative, applicants of a continuing application included in the RPA Initiative will not need to submit an IDS in a continuing application for information cited in the parent application in order for the E:\FR\FM\25OCN1.SGM 25OCN1 Federal Register / Vol. 83, No. 207 / Thursday, October 25, 2018 / Notices corresponding citations to appear on the face of any patent issuing from the continuing application. Instead, IDS citations listed on form PTO/SB/08 (or equivalents) in the parent application, as well as citations listed on form PTO– 892 (Notice of References Cited) in the parent application, will be imported into the continuing application. Those citations considered by the examiner in the continuing application will be printed on any patent issuing from the continuing application and distinguished from the other citations of record. This first phase will be targeted to a select group of examiners and limited to continuing applications filed on or after the effective date of November 1, 2018 with a single parent application. daltland on DSKBBV9HB2PROD with NOTICES (2) Conditions for Inclusion An application included in the first phase of the RPA Initiative will meet the following conditions. i. Types of Applications. The application is a non-reissue, nonprovisional application filed under 35 U.S.C. 111(a) with a claim for benefit under 35 U.S.C. 120 or 121 of only a single prior U.S. application (i.e., immediate parent application, referred to herein as ‘‘parent application’’). The parent application must have been filed under 35 U.S.C. 111(a) or have entered the national stage pursuant to 35 U.S.C. 371. The parent application can claim priority or benefit of other applications only under 35 U.S.C. 119. For example, it cannot include any claims for benefit under 35 U.S.C. 120, 121, 365(c) or 386(c). ii. Art Unit Requirement. The application is assigned to one of the art units that will be listed on the RPA Initiative website https:// www.uspto.gov/patents-getting-started/ PriorArtAccess. iii. Timing. The RPA Initiative will initially apply to a small group of continuing applications filed on or after the effective date of November 1, 2018. The RPA Initiative will then expand to a larger group of applications filed on or after January 1, 2019. This information will be listed on the RPA Initiative website https://www.uspto.gov/patentsgetting-started/PriorArtAccess. The claim for benefit to a parent application must be made in the continuing application and reflected on the filing receipt before the continuing application completes pre-examination processing. The USPTO cannot accept requests to have an application entered in the first phase of the RPA Initiative. VerDate Sep<11>2014 18:10 Oct 24, 2018 Jkt 247001 (3) Art Units in the First Phase The first phase will begin with a small group of examiners on November 1, 2018, and increase to a larger group on January 1, 2019. The art units will be listed on the RPA Initiative website https://www.uspto.gov/patents-gettingstarted/PriorArtAccess before the November 1, 2018 effective date. The art units participating in the first phase of the RPA Initiative will be chosen to ensure that within the first twelve months of the RPA Initiative, data is acquired on approximately 175 applications across the examining corps. Specifically, the USPTO is considering each art unit’s current backlog of continuing applications and the projected number of continuing application filings expected in the first year of the RPA Initiative. This targeted selection of art units and the number of applications is designed to provide relevant feedback in a timely manner and allow the RPA Initiative to expand to the next phase in an expeditious manner. Note, if the application is initially assigned to an art unit within the RPA Initiative and is later transferred to an art unit outside the RPA Initiative, the application will remain in the RPA Initiative and will be treated in accordance with this notice. (4) Determination of Applications for Inclusion in the RPA Initiative The USPTO will determine whether an application meets the conditions for inclusion in the first phase of the RPA Initiative after the Office of Patent Application Processing completes preexamination processing of the continuing application. That is, a filing receipt has been issued, there are no outstanding pre-examination notices (e.g., Notice to File Missing Parts), and the application has completed classification. At this point, the continuing application will be evaluated for inclusion in the RPA Initiative. Once it has been determined that the continuing application meets the conditions for inclusion in the first phase of the RPA Initiative, the citations from the parent application, as specified herein, will be imported into the continuing application. Concurrent with the importation, a Notice of Imported Citations will be generated and provided to the applicant. The Notice of Imported Citations will indicate that the continuing application has been entered in the first phase of the RPA Initiative and will list the citations that have been imported into the continuing application under examination. There is no requirement PO 00000 Frm 00009 Fmt 4703 Sfmt 4703 53855 for the applicant to reply to the Notice of Imported Citations. However, applicant may inspect the Notice of Imported Citations to determine what citations have been imported into the continuing application under examination. Applications included in the RPA Initiative will not be expedited or given special status due to inclusion into this RPA Initiative. The continuing application will be taken up for examination in the order it is filed in accordance with MPEP 708. Once the continuing application is taken up for action, the examiner will consider the imported information in due course, similar to the consideration of other IDSs filed in the application. There is no mechanism for removing an application from the RPA Initiative. (5) Citations Imported All citations, both considered and unconsidered in the parent application, will be imported into the continuing application. The citations are those corresponding to U.S. patent documents, foreign patent documents, and non-patent literature (NPL) documents, contained on an IDS listing (e.g., PTO/SB/08 or equivalents) or PTO–892 in the file wrapper record of the parent application at the time inclusion into the RPA Initiative is determined. If available in the parent application, the examiner will be provided ready access to copies of the foreign patent documents and NPL documents associated with the imported citations as well as any corresponding translations or explanations of relevance. Though copies of documents corresponding to the imported citations will not be available in the electronic file wrapper of the continuing application to applicants and the public, such copies can be accessed in the electronic file wrapper of the parent application by the applicant of the parent application through the USPTO’s Private Patent Application Information Retrieval (PAIR) system (https:// ppair.uspto.gov/TruePassWebStart/ AuthenticationChooser.html), or by the public by obtaining a certified copy of file history of the parent application (https://ebiz1.uspto.gov/oems25p/ index.html). This is consistent with current practice where a copy of a document considered by the examiner in the parent application (except where the parent is an international application) is not required to be filed in the continuing application for consideration, and, therefore, is not available in the electronic file wrapper of the continuing application. See 37 CFR 1.98(d) and MPEP § 609.02. Any E:\FR\FM\25OCN1.SGM 25OCN1 53856 Federal Register / Vol. 83, No. 207 / Thursday, October 25, 2018 / Notices daltland on DSKBBV9HB2PROD with NOTICES citations in the parent application not contained on an IDS listing or PTO–892 form will not be imported, including, for example, citations in a third-party submission under 37 CFR 1.290, Office actions, applicant responses, citations listed in the specification, affidavits/ declarations, etc. Note that in the first phase of the RPA Initiative, the Office will perform only a single importation of citations from the parent application. Any citations from IDS listings or PTO–892 forms appearing in the parent application after this single importation occurs will not be imported. To have such laterappearing citations printed on a patent issued from the continuing application, applicant must submit an IDS with the later-appearing citations. (6) Examiner Consideration Examiners will consider all documents corresponding to the imported citations that are compliant with 37 CFR 1.98 in the parent application. As explained previously, the imported citations will be listed on the Notice of Imported Citations, which will be given to the applicant at the time of importation and will be viewable in the electronic file wrapper record of the continuing application via the USPTO’s PAIR system. The examiner will consider the information corresponding to the imported citations to the same extent as information submitted by the applicant in an IDS. See MPEP § 609.05(b). The examiner will indicate consideration of the imported citations in a Notice of Consideration. Examiners will strike through each citation whose document was not considered in the continuing application. This includes any citation that was not compliant with 37 CFR 1.98 in the parent application (e.g., no copy was submitted) or the examiner was unable to consider the relevance of the imported citation for some other reason. However, citations that were not compliant under 37 CFR 1.97 in the parent application will be considered by the examiner in the continuing application, if compliant with 37 CFR 1.98. The examiner should inform the applicant in the first Office action of the reason(s) a citation was not considered. Applicant may then file an IDS to correct the deficiency in the imported citations. Note that the date the IDS is filed to correct the deficiency in the continuing application is the date for determining compliance with the timing requirements of 37 CFR 1.97. See MPEP § 609.05(a). The examiner’s signature on the Notice of Consideration will indicate that the documents corresponding to all VerDate Sep<11>2014 18:10 Oct 24, 2018 Jkt 247001 citations that have not been lined through have been considered. The Notice of Consideration should be provided with the first Office action on the merits in the continuing application. (7) Publication of Imported Citations All citations that have been imported from the parent application and indicated as considered on the Notice of Consideration will be printed on the patent issuing from the continuing application. These imported citations will be marked with a double-dagger on the patent to distinguish them from the other citations of record. If an item of information is cited more than once on the record (e.g., in a Notice of Consideration and on an IDS), the citation will be listed only once on the patent and will be distinguished as a citation that has been imported from a related application. IV. Future Phases As indicated previously, this RPA Initiative seeks to import relevant information for consideration by the examiner at an early time in prosecution while reducing the need for applicants to submit this same information in laterfiled applications. The RPA Initiative will begin with the first phase outlined in section III. The USPTO expects to expand this RPA Initiative in subsequent phases to further enhance examination quality and reduce the need for applicants to resubmit citation lists and references. The USPTO is evaluating how to expand the RPA Initiative in future phases and will use the data acquired in the first phase in making this determination. Currently, the USPTO is considering a first expansion of the RPA Initiative (second phase) to include the importation of U.S. and foreign patent citation information from related PCT and counterpart foreign applications. However, this could change based on the feedback received from examiners and stakeholders in the first phase. Further, the RPA Initiative may be expanded to increase the number of times information is imported from the parent application, as well as encompass more art units within the USPTO so that it will eventually be applicable in all applications regardless of classification. The timetable for expansion and the chosen sources of expansion will be determined based upon the feedback obtained in the first phase. Applicants are encouraged to provide their feedback on the RPA Initiative to help the USPTO determine how best to expand the RPA Initiative in the next phase and in any future phases. PO 00000 Frm 00010 Fmt 4703 Sfmt 4703 Comments are preferred using the IdeaScale tool which is available at https://uspto-priorart.ideascale.com. Dated: October 19, 2018. Andrei Iancu, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office. [FR Doc. 2018–23338 Filed 10–24–18; 8:45 am] BILLING CODE 3510–16–P DEPARTMENT OF DEFENSE Office of the Secretary [Docket ID: DOD–2018–OS–0083] Privacy Act of 1974; System of Records Office of the Secretary of Defense, DoD. ACTION: Notice of a modified system of records. AGENCY: The Office of the Secretary of Defense proposes to modify a system of records titled, ‘‘Joint Advertising, Market Research & Studies (JAMRS) Survey Database,’’ DHRA 05. JAMRS is an official Department of Defense program responsible for joint marketing communications and market research and studies. One of JAMRS’ objectives is to explore the perceptions, beliefs, and attitudes of American youth as they relate to joining the Military. Understanding these factors is critical to the success of sustaining an AllVolunteer Force and helps ensure recruiting efforts are directed in the most efficient and beneficial manner. DATES: Comments will be accepted on or before November 26, 2018. This proposed action will be effective the date following the end of the comment period unless comments are received which result in a contrary determination. ADDRESSES: You may submit comments, identified by docket number and title, by any of the following methods: * Federal Rulemaking Portal: https:// www.regulations.gov. Follow the instructions for submitting comments. * Mail: Department of Defense, Office of the Chief Management Officer, Directorate of Oversight and Compliance, 4800 Mark Center Drive, Mailbox #24, Suite 08D09, Alexandria, VA 22350–1700. Instructions: All submissions received must include the agency name and docket number for this Federal Register document. The general policy for comments and other submissions from members of the public is to make these SUMMARY: E:\FR\FM\25OCN1.SGM 25OCN1

Agencies

[Federal Register Volume 83, Number 207 (Thursday, October 25, 2018)]
[Notices]
[Pages 53853-53856]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2018-23338]


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DEPARTMENT OF COMMERCE

Patent and Trademark Office

[Docket No.: PTO-P-2018-0051]


Access to Relevant Prior Art Initiative

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Notice.

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SUMMARY: The United States Patent and Trademark Office (USPTO) is 
implementing the first phase of the Access to Relevant Prior Art 
Initiative (``RPA Initiative'') to import citations (e.g., 
bibliographic data on forms PTO/SB/08 and PTO-892) from the immediate 
parent application into the continuing application. The citations 
corresponding to the documents considered by the examiner in the 
continuing application will be printed on the face of the patent 
issuing from the continuing application without the applicant having to 
resubmit the information on an Information Disclosure Statement. 
Additionally, an applicant's duty to disclose information in the 
continuing application will continue to be satisfied for information 
considered in the parent application and will be satisfied for any 
additional information made of record by the Office in the continuing 
application. The RPA Initiative is being developed in response to 
public input following an August 29, 2016, notice and September 28, 
2016, roundtable event on leveraging electronic resources to retrieve

[[Page 53854]]

information from applicant's other applications. The USPTO plans to 
implement the RPA Initiative in phases to consider and address public 
and examiner feedback at each phase and determine how to effectively 
expand the RPA Initiative in future phases.

DATES: Applicable Date: November 1, 2018.

ADDRESSES: The RPA Initiative will be implemented in stages without a 
comment deadline. Comments will be accepted on an ongoing basis. 
Written suggestions and comments should be sent by electronic mail to 
[email protected] or via the IdeaScale tool available at https://uspto-priorart.ideascale.com. Comments also may be submitted by postal 
mail addressed to: Mail Stop Comments--Patents, Commissioner for 
Patents, P.O. Box 1450, Alexandria, VA 22313-1450, marked to the 
attention of Michael Neas, Deputy Director, International Patent Legal 
Administration.

FOR FURTHER INFORMATION CONTACT: For questions or comments regarding 
the RPA Initiative in general, please contact Michael Neas, Deputy 
Director, International Patent Legal Administration, by telephone at 
571-272-3289, or by email to [email protected] or Matthew Sked, 
Senior Legal Advisor, Office of Patent Legal Administration, by 
telephone at 571-272-7627, or by email to [email protected]. 
Questions regarding a specific application should be directed to the 
Technology Center examining the application.

SUPPLEMENTARY INFORMATION: 

I. Background

    On August 29, 2016, the USPTO issued a notice seeking public 
feedback regarding how to efficiently utilize information from 
applicant's other applications having the same or substantially the 
same disclosure to provide examiners with relevant information at the 
earliest stage of examination. See Request for Comments and Notice of 
Roundtable Event on Leveraging Electronic Resources to Retrieve 
Information from Applicant's Other Applications and Streamline Patent 
Issuance, 81 FR 59197 (August 29, 2016). The notice announced a 
Roundtable that was held on September 28, 2016 and requested written 
comments by October 28, 2016. In response, the Office received twenty-
six comments from a diverse group of stakeholders including 
intellectual property organizations, companies, law firms and 
individuals. Most of the stakeholders supported a program where the 
USPTO would automatically monitor related applications for relevant 
information therein for consideration during the examination of a U.S. 
application. However, stakeholder views varied on the optimal scope of 
the program and best method for implementation. Accordingly, the USPTO 
will implement the RPA Initiative in phases to consider and address 
public and examiner feedback at each phase. This feedback will be used 
to determine if the first phase needs adjustment, and how to expand the 
RPA Initiative effectively in future phases.
    Applicants and other individuals substantively involved with the 
preparation and/or prosecution of a U.S. non-provisional application 
have a duty to submit to the USPTO information which is material to 
patentability as defined in 37 CFR 1.56. The provisions of 37 CFR 1.97 
and 37 CFR 1.98 provide a mechanism by which patent applicants may 
comply with the duty of disclosure provided in 37 CFR 1.56. An 
information disclosure statement (IDS) filed in accordance with the 
provisions of 37 CFR 1.97 and 37 CFR 1.98 will be considered by the 
examiner assigned to the application. Citations listed in an IDS (e.g., 
on form PTO/SB/08 and equivalents) and considered by the examiner will 
be printed on the patent and distinguished from citations that were 
cited by the examiner and listed on a form PTO-892 (examiner citations 
will be marked with an asterisk). See Manual of Patent Examining 
Procedure, Rev. 08.2017, Jan. 2018 (referred to herein as ``MPEP'') 
Sec. Sec.  609 and 609.06.
    Under current practice, when filing a continuing application that 
claims benefit under 35 U.S.C. 120 to a parent application (other than 
an international application for patent under the Patent Cooperation 
Treaty (PCT) that designated the United States), a listing of 
information which has been considered by the examiner in the parent 
application need not be resubmitted in the continuing application 
unless the applicant desires the information to be printed on the 
patent. Specifically, ``(t)he examiner will consider information which 
has been considered by the Office in a parent application . . . when 
examining: (A) A continuation application filed under 37 CFR 1.53(b), 
(B) a divisional application filed under 37 CFR 1.53(b), or (C) a 
continuation-in-part application filed under 37 CFR 1.53(b).'' MPEP 
Sec.  609.02(II)(A)(2).

II. RPA Initiative

    After careful consideration of the input from the public and 
examiners on the prior art initiative announced in the August 29, 2016 
notice, the USPTO is implementing the RPA Initiative that will leverage 
electronic resources to improve examiner's access to relevant 
information from applicant's other related applications. As indicated 
previously, the USPTO will be implementing the RPA Initiative in phases 
to evaluate public and examiner feedback at each phase to address 
concerns and determine the ideal course for future expansion of the RPA 
Initiative.
    In the first phase of the RPA Initiative, the USPTO will import the 
citations listed on forms PTO/SB/08 (or equivalents) and PTO-892 in the 
immediate parent application into the continuing application. If 
compliant with 37 CFR 1.98 in the parent application, the examiner will 
consider the documents that correspond to these citations and the 
citations will be printed on the patent. This will eliminate the need 
for applicant to submit an IDS in the continuing application for the 
purpose of having these citations printed on the patent. Additionally, 
an applicant's duty to disclose information under 37 CFR 1.56 in the 
continuing application will continue to be satisfied for information 
considered in the parent application and will be satisfied for any 
additional information made of record by the Office in the continuing 
application.
    In subsequent phases of the RPA Initiative, the USPTO will consider 
providing examiners access to citation information from other sources 
such as other related U.S. applications, international applications 
under the PCT, and counterpart foreign applications of the same 
applicant. The selection of these sources and the timetable for 
expansion will be dictated, at least in part, by evaluating the first 
phase including feedback on the RPA Initiative from the public and 
examiners.
    This first phase will also begin with a targeted release of a newly 
developed interface to a subgroup of examiners from a limited number of 
selected art units. In subsequent phases of the RPA Initiative, the 
USPTO plans to provide the interface to more examiners when the RPA 
Initiative proves scalable.

III. Structure of the First Phase of the RPA Initiative

(1) Overview

    In the first phase of the RPA Initiative, applicants of a 
continuing application included in the RPA Initiative will not need to 
submit an IDS in a continuing application for information cited in the 
parent application in order for the

[[Page 53855]]

corresponding citations to appear on the face of any patent issuing 
from the continuing application. Instead, IDS citations listed on form 
PTO/SB/08 (or equivalents) in the parent application, as well as 
citations listed on form PTO-892 (Notice of References Cited) in the 
parent application, will be imported into the continuing application. 
Those citations considered by the examiner in the continuing 
application will be printed on any patent issuing from the continuing 
application and distinguished from the other citations of record. This 
first phase will be targeted to a select group of examiners and limited 
to continuing applications filed on or after the effective date of 
November 1, 2018 with a single parent application.

(2) Conditions for Inclusion

    An application included in the first phase of the RPA Initiative 
will meet the following conditions.
    i. Types of Applications. The application is a non-reissue, non-
provisional application filed under 35 U.S.C. 111(a) with a claim for 
benefit under 35 U.S.C. 120 or 121 of only a single prior U.S. 
application (i.e., immediate parent application, referred to herein as 
``parent application''). The parent application must have been filed 
under 35 U.S.C. 111(a) or have entered the national stage pursuant to 
35 U.S.C. 371. The parent application can claim priority or benefit of 
other applications only under 35 U.S.C. 119. For example, it cannot 
include any claims for benefit under 35 U.S.C. 120, 121, 365(c) or 
386(c).
    ii. Art Unit Requirement. The application is assigned to one of the 
art units that will be listed on the RPA Initiative website https://www.uspto.gov/patents-getting-started/PriorArtAccess.
    iii. Timing. The RPA Initiative will initially apply to a small 
group of continuing applications filed on or after the effective date 
of November 1, 2018. The RPA Initiative will then expand to a larger 
group of applications filed on or after January 1, 2019. This 
information will be listed on the RPA Initiative website https://www.uspto.gov/patents-getting-started/PriorArtAccess. The claim for 
benefit to a parent application must be made in the continuing 
application and reflected on the filing receipt before the continuing 
application completes pre-examination processing.
    The USPTO cannot accept requests to have an application entered in 
the first phase of the RPA Initiative.

(3) Art Units in the First Phase

    The first phase will begin with a small group of examiners on 
November 1, 2018, and increase to a larger group on January 1, 2019. 
The art units will be listed on the RPA Initiative website https://www.uspto.gov/patents-getting-started/PriorArtAccess before the 
November 1, 2018 effective date.
    The art units participating in the first phase of the RPA 
Initiative will be chosen to ensure that within the first twelve months 
of the RPA Initiative, data is acquired on approximately 175 
applications across the examining corps. Specifically, the USPTO is 
considering each art unit's current backlog of continuing applications 
and the projected number of continuing application filings expected in 
the first year of the RPA Initiative. This targeted selection of art 
units and the number of applications is designed to provide relevant 
feedback in a timely manner and allow the RPA Initiative to expand to 
the next phase in an expeditious manner.
    Note, if the application is initially assigned to an art unit 
within the RPA Initiative and is later transferred to an art unit 
outside the RPA Initiative, the application will remain in the RPA 
Initiative and will be treated in accordance with this notice.

(4) Determination of Applications for Inclusion in the RPA Initiative

    The USPTO will determine whether an application meets the 
conditions for inclusion in the first phase of the RPA Initiative after 
the Office of Patent Application Processing completes pre-examination 
processing of the continuing application. That is, a filing receipt has 
been issued, there are no outstanding pre-examination notices (e.g., 
Notice to File Missing Parts), and the application has completed 
classification. At this point, the continuing application will be 
evaluated for inclusion in the RPA Initiative. Once it has been 
determined that the continuing application meets the conditions for 
inclusion in the first phase of the RPA Initiative, the citations from 
the parent application, as specified herein, will be imported into the 
continuing application. Concurrent with the importation, a Notice of 
Imported Citations will be generated and provided to the applicant.
    The Notice of Imported Citations will indicate that the continuing 
application has been entered in the first phase of the RPA Initiative 
and will list the citations that have been imported into the continuing 
application under examination. There is no requirement for the 
applicant to reply to the Notice of Imported Citations. However, 
applicant may inspect the Notice of Imported Citations to determine 
what citations have been imported into the continuing application under 
examination.
    Applications included in the RPA Initiative will not be expedited 
or given special status due to inclusion into this RPA Initiative. The 
continuing application will be taken up for examination in the order it 
is filed in accordance with MPEP 708. Once the continuing application 
is taken up for action, the examiner will consider the imported 
information in due course, similar to the consideration of other IDSs 
filed in the application. There is no mechanism for removing an 
application from the RPA Initiative.

(5) Citations Imported

    All citations, both considered and unconsidered in the parent 
application, will be imported into the continuing application. The 
citations are those corresponding to U.S. patent documents, foreign 
patent documents, and non-patent literature (NPL) documents, contained 
on an IDS listing (e.g., PTO/SB/08 or equivalents) or PTO-892 in the 
file wrapper record of the parent application at the time inclusion 
into the RPA Initiative is determined. If available in the parent 
application, the examiner will be provided ready access to copies of 
the foreign patent documents and NPL documents associated with the 
imported citations as well as any corresponding translations or 
explanations of relevance. Though copies of documents corresponding to 
the imported citations will not be available in the electronic file 
wrapper of the continuing application to applicants and the public, 
such copies can be accessed in the electronic file wrapper of the 
parent application by the applicant of the parent application through 
the USPTO's Private Patent Application Information Retrieval (PAIR) 
system (https://ppair.uspto.gov/TruePassWebStart/AuthenticationChooser.html), or by the public by obtaining a certified 
copy of file history of the parent application (https://ebiz1.uspto.gov/oems25p/). This is consistent with current practice where a 
copy of a document considered by the examiner in the parent application 
(except where the parent is an international application) is not 
required to be filed in the continuing application for consideration, 
and, therefore, is not available in the electronic file wrapper of the 
continuing application. See 37 CFR 1.98(d) and MPEP Sec.  609.02. Any

[[Page 53856]]

citations in the parent application not contained on an IDS listing or 
PTO-892 form will not be imported, including, for example, citations in 
a third-party submission under 37 CFR 1.290, Office actions, applicant 
responses, citations listed in the specification, affidavits/
declarations, etc.
    Note that in the first phase of the RPA Initiative, the Office will 
perform only a single importation of citations from the parent 
application. Any citations from IDS listings or PTO-892 forms appearing 
in the parent application after this single importation occurs will not 
be imported. To have such later-appearing citations printed on a patent 
issued from the continuing application, applicant must submit an IDS 
with the later-appearing citations.

(6) Examiner Consideration

    Examiners will consider all documents corresponding to the imported 
citations that are compliant with 37 CFR 1.98 in the parent 
application. As explained previously, the imported citations will be 
listed on the Notice of Imported Citations, which will be given to the 
applicant at the time of importation and will be viewable in the 
electronic file wrapper record of the continuing application via the 
USPTO's PAIR system. The examiner will consider the information 
corresponding to the imported citations to the same extent as 
information submitted by the applicant in an IDS. See MPEP Sec.  
609.05(b).
    The examiner will indicate consideration of the imported citations 
in a Notice of Consideration. Examiners will strike through each 
citation whose document was not considered in the continuing 
application. This includes any citation that was not compliant with 37 
CFR 1.98 in the parent application (e.g., no copy was submitted) or the 
examiner was unable to consider the relevance of the imported citation 
for some other reason. However, citations that were not compliant under 
37 CFR 1.97 in the parent application will be considered by the 
examiner in the continuing application, if compliant with 37 CFR 1.98. 
The examiner should inform the applicant in the first Office action of 
the reason(s) a citation was not considered. Applicant may then file an 
IDS to correct the deficiency in the imported citations. Note that the 
date the IDS is filed to correct the deficiency in the continuing 
application is the date for determining compliance with the timing 
requirements of 37 CFR 1.97. See MPEP Sec.  609.05(a).
    The examiner's signature on the Notice of Consideration will 
indicate that the documents corresponding to all citations that have 
not been lined through have been considered. The Notice of 
Consideration should be provided with the first Office action on the 
merits in the continuing application.

(7) Publication of Imported Citations

    All citations that have been imported from the parent application 
and indicated as considered on the Notice of Consideration will be 
printed on the patent issuing from the continuing application. These 
imported citations will be marked with a double-dagger on the patent to 
distinguish them from the other citations of record. If an item of 
information is cited more than once on the record (e.g., in a Notice of 
Consideration and on an IDS), the citation will be listed only once on 
the patent and will be distinguished as a citation that has been 
imported from a related application.

IV. Future Phases

    As indicated previously, this RPA Initiative seeks to import 
relevant information for consideration by the examiner at an early time 
in prosecution while reducing the need for applicants to submit this 
same information in later-filed applications. The RPA Initiative will 
begin with the first phase outlined in section III. The USPTO expects 
to expand this RPA Initiative in subsequent phases to further enhance 
examination quality and reduce the need for applicants to resubmit 
citation lists and references.
    The USPTO is evaluating how to expand the RPA Initiative in future 
phases and will use the data acquired in the first phase in making this 
determination. Currently, the USPTO is considering a first expansion of 
the RPA Initiative (second phase) to include the importation of U.S. 
and foreign patent citation information from related PCT and 
counterpart foreign applications. However, this could change based on 
the feedback received from examiners and stakeholders in the first 
phase. Further, the RPA Initiative may be expanded to increase the 
number of times information is imported from the parent application, as 
well as encompass more art units within the USPTO so that it will 
eventually be applicable in all applications regardless of 
classification.
    The timetable for expansion and the chosen sources of expansion 
will be determined based upon the feedback obtained in the first phase. 
Applicants are encouraged to provide their feedback on the RPA 
Initiative to help the USPTO determine how best to expand the RPA 
Initiative in the next phase and in any future phases. Comments are 
preferred using the IdeaScale tool which is available at https://uspto-priorart.ideascale.com.

    Dated: October 19, 2018.
Andrei Iancu,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 2018-23338 Filed 10-24-18; 8:45 am]
 BILLING CODE 3510-16-P
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