USPTO mishandling QPIDS

I expect that some readers of this blog have made use of QPIDS, the Quick Path Information Disclosure Statement system.  The goal of QPIDS is to reduce the number of times that an applicant has to pay an RCE fee to get an IDS considered.  Unfortunately in recent times USPTO has been mishandling the QPIDS system.  The result is that often an applicant is stuck paying even more money than the applicant would have had to pay if the applicant had simply filed an RCE instead of a QPIDS.

First a brief review of QPIDS.  The assumption is that the applicant has just paid the Issue Fee and then, as a bit of bad luck, suddenly learns of the need to file yet another IDS.  Typically this will have happened because some foreign patent office just now mailed another search report or office action.

Were it not for QPIDS, the applicant would face either of two unpleasant options:

• petitioning for withdrawal of the patent from issue, along with an RCE (request for continued examination).   A first RCE costs $1200, but the second or subsequent RCE costs $1700.  (The fees are reduced for small and micro entities.)
• filing the IDS and allowing the patent to issue without ever actually having the Examiner consider the IDS.  This latter approach does fulfill the Duty of Disclosure but leaves the IDS as a “kick me” sign later if the patent is litigated.

The goal of QPIDS is to provide a third path which at least sometimes would avoid the cost of an RCE.  When the applicant files a QPIDS, the applicant pays for an RCE that might turn out not to be needed.  The case gets routed to the Examiner.  The Examiner looks at the IDS and figures out whether the references cited change anything about what is patentable and what is not.  One of two things will happen next:

• The Examiner might conclude that things are just as patentable as they were before the IDS was filed.  If so, then the Examiner returns the case to issue, and the USPTO refunds the RCE fee and charges the usual $180 fee for the IDS.
• The Examiner might, on the other hand, conclude that the cited references raise a substantial new question as to whether things are patentable.  If so, then the Examiner passes the case to RCE status and makes plans to earn approximately 1.8 more counts (mailing two more Office Actions).

The way it is supposed to work, the applicant pays one of the fees but not both.  Either the applicant pays the RCE fee and not the IDS fee … or the applicant pays the IDS fee and not the RCE fee.

Which gets to the point of this blog post.  In half a dozen of our recent QPIDS filings, it was as if the USPTO tried to have it both ways.  The Examiner concluded that things are still patentable.  Which means that USPTO charged the $180 IDS fee.  And what was supposed to happen next is the USPTO was supposed to refund the RCE fee.

Except that the USPTO never got around to refunding the RCE fee.

When this happens, we never get anywhere asking the Examiner for help.  The Examiner invariably tells us that he or she has nothing to do with the QPIDS processing, and cannot bring about the refund of the RCE fee.  Conspicuously absent from the USPTO web page about QPIDS is any contact information for anyone who could help with QPIDS problems such as this.

It seems pretty clear that there is some gap in the internal USPTO workflow for QPIDS, and that it is apparently all too easy for people at USPTO to forget to look to see whether a refund of the RCE fee is needed and, if so, to refund it.

Just in the last couple of days we got two more cases with this problem.  I guess I will try contacting the Ombudsman to see if he or she can help.