A defect in USPTO’s “Display References” tab

When the time comes to pay an Issue Fee, one item on your checklist is to look in the Display References tab in PAIR to see if there are any not-yet-considered IDSs, right?

The USPTO itself has a similar workflow task when an Issue Fee gets paid — some clerk at the USPTO looks to see if there are any not-yet-considered IDSs and bounces the case back to the Examiner if there are any found in this workflow.  Does that clerk rely upon the Display References tab in PAIR to look for not-yet-considered IDSs?  Maybe the answer is “yes”.

When a patent Examiner at the USPTO picks up a case to examine it, the Examiner is supposed to consider the IDSs that have been filed.  Does the Examiner rely upon the Display References tab in PAIR to look for not-yet-considered IDSs?  Maybe the answer is “yes”.

I was astonished recently to learn that there is a category of IDS that the USPTO fails to include in the Display References tab.  This defect in PAIR (and there is a corresponding defect in the Display References tab in Patentcenter) requires urgent repair by the USPTO.  Between now and whenever (or if) the USPTO gets around to repairing this defect, the situation represents a trap for the unwary practitioner.  

Do you, loyal reader, already know what category of IDS I am talking about here?  

The category of IDS that I am talking about here is Form PTO/SB/429.  This is the form used in Third-Party Submissions.  The point of the third-party submission is, of course, that a third party may wish to try to kill a pending US patent application.  This party might be a competitor of the applicant, might be a would-be licensee of the would-be patent owner, or might just be an interested member of the public.  The TPS procedure is described in MPEP § 1134.01. 

This form PTO/SB/429, just like the regular IDS forms, has boxes for Examiner initials and has a place for the Examiner’s signature.  The presence or absence of the initials and signature on the form is of extraordinary significance for at least three reasons:

• This indicates whether or not the Examiner considered the Third-Party Submission IDS.
• This determines whether the Issue Branch will list the references as “considered” on the front page of the issued US patent.
• TYFNIL this will be how the judge and jury decide whether or not the Third-Party Submission IDS was considered by the Examiner.

As you can see on the excerpt of the Form PTO/SB/429 shown above, the form has an IFW document code of “IDS.3P”.  When a TPS gets filed at the USPTO, and when USPTO accepts it, the TPS becomes visible in IFW.  An example of this appears at right.  You can see the document code “IDS.3P” in this IFW screen shot.

But now we get to the main point of this blog article.  The main point of this blog article is that the USPTO fails to list such Forms PTO/SB/429 in the “Display References” tab in PAIR.  At right you can see a screen shot of an actual case in which our firm filed a Third-Party Submission on December 31, 2019.  (It is the case from which the IFW screen shot above was taken.)  The main point of this blog article is that nowhere in this Display References tab is the December 31, 2019 Form IDS.3P listed.

This defect in PAIR is a serious defect.  Our firm is an alpha tester of the Patentcenter system, and we found that there is a corresponding defect in the Display References tab in Patentcenter. 

The potential consequences of this defect are far-ranging:

• Consider the point of view of the third party.  If the Examiner overlooks the TPS, then the third party’s goal of making sure that the Examiner considers the TPS will have been stymied.
• Consider the point of view of the applicant.  If the Examiner overlooks the TPS, then TYFNIL this lapse will be an issue raised by the adversary of the patent owner.
• Consider the point of view of the general public.  If the Examiner overlooks the TPS, then there is the risk that a patent will get granted that should never have been granted, or that the patent will get granted with broader claims than should have been granted.

For the practitioner who is getting ready to pay an Issue Fee, as I mentioned at the outset a typical procedure will include using the Display References tab to see what IDSs were filed and to see if all of the IDSs that were filed actually got considered by the Examiner.  But given that the USPTO does not list the TPS IDSs in the Display References tab, this gives rise to a risk that the practitioner might not be aware that the Examiner overlooked a TPS IDS, and might pay the Issue Fee regardless.  This is a trap for the unwary.

For an Examiner who picks up a case to examine it, I do not know whether every Examiner’s routine is to use Display References as the way to know what IDSs the Examiner needs to consider.  But it is natural to worry that this defect in the Display References tab might lead to an Examiner overlooking a TPS IDS.

For the Issue Branch clerk whose responsibility it is to look for allowed cases in which an Examiner overlooked an IDS, I do not know whether every such clerk uses Display References as the way to check this.  But it is natural to worry that this defect in the Display References tab might lead to the clerk overlooking the fact of an Examiner overlooking a TPS IDS.

Have you filed a Third-Party Submission?  Did your TPS IDS end up being visible in the Display References tab?