The Patent Office absolutely trying to Do the Right Thing – IDSs in child cases

If you are a US patent practitioner, of course you should be subscribed to the EFS-Web listserv.  Here is a recent post to that listserv that prompted today’s blog article:

I swear I read something about a new PTO program for automatically listing all submitted and cited prior art on continuations and divisionals–to stop people from re-filing everything again. But, I cannot find anything today.

Was I dreaming? If not, is this working?

And yes there is a new PTO program for this, as I will explain.

No you were not dreaming.

USPTO is absolutely yes trying to do the right thing on this, starting with making it so that if you file a continuation or divisional application, a computer would take on the task of grabbing every reference that had been made of record in the parent case and explicitly IDS-ing it in the child case. Exactly what you and I have to do in a laborious way in legacy practice every time we file a continuation or divisional applciation. But automatically. The sort of thing that computers are supposed to be good at.

And then yes, USPTO is also absolutely yes hoping eventually to do another right thing on this, continuing with making it so that if you file any US case, a computer would take on the task of rummaging through the entirety of the Global Dossier and grabbing every reference that had been made of record in any foreign counterpart, case and explicitly IDS-ing it in the child case.

This is the sort of dying-and-going-to-heaven thing that US patent practitioners only dream of. And there are a bunch of very smart and very well-intentioned people at the USPTO working on exactly this.

The program is called Access to Relevant Prior Art Initiative.  The program initially was not across-the-board but was limited to particular applications filed in particular art units.

Think of all of the ways that every stakeholder will benefit as this initiative moves along.  Perhaps most importantly, patent prosecution quality will be improved.  Some patents that should not get granted will in fact not get granted, because of one reference or another being made available to an Examiner who can then get the right answer about refusing to grant some patent.  But it’s not only that.  Judges and juries will get saved from having to agonize about whether to invalidate that patent, if it does not get granted in the first place.  This saves court resources.  But it’s not only that.  Members of the general public, who might have had to try to figure out what to do about constraints and uncertainty imposed upon them by some patent that should never have been granted, are relieved of from those constraints and that uncertainty.  And it’s not only that.  The practitioner is saved from having to worry “what if I somehow snooze through it and fail to file some IDS that I should have filed?” followed by a malpractice lawsuit against the practitioner.  And it’s not only that.  The applicant is saved from having to spend money paying the practitioner to construct and file those IDSs.  

As I say, every stakeholder benefits from this initiative.

Imagine though how challenging this project must be, from so many perspectives:

• Just from the coding and computer programming perspective, there are the challenges that flow from the fact that there’s no decent meta-data in the IDSs that applicants file or the 892s that Examiners file.  If an IDS or an 892 lists, say, twenty foreign references, nothing about the IDS or the 892 links up foreign reference number 7 with any particular one of the twenty PDFs that the applicant had uploaded to EFS-Web or that the Examiner had scanned into IFW.  Anybody seeking to look at any particular reference, whether it is the Examiner or the applicant or a member of the public, is forced to go on a treasure hunt, clicking one by one on all twenty of the PDFs, to look at some particular foreign reference such as reference number 7 in the IDS.  The same is true for the NPL citations.  There is no fully implemented common citation format for any of these things, no way to match up PDF file names with foreign patent numbers, nothing at all that facilitates reuse of IDS and citation and PDF information from a parent case into a child case.  And it’s no better in Global Dossier.
• Then imagine the labor-management-relations aspects of all of this.  Everything about the relationship between the USPTO and its Examiners is locked into union contracts that have terms of many years and page counts in the hundreds.  Any time that any change is proposed to some workflow within the USPTO, say changing from paper clips to staples as a way to hold pages together, this triggers a need for endless negotiations in windowless conference rooms to work out how much more money the Examiners should be paid due to this change.  Just kidding I actually think that changing from paper clips to staples would not require renegotiating the Examiner’s union contract.  But you can imagine that if a case has already received its first Office Action, and then 18 months comes around and for the first time Global Dossier is turned on for the case, and all of a sudden a computer-generated IDS lands on the Examiner’s desk for a case that has already had a first Office Action, this would be the kind of thing that the Examiner’s union would feel requires new contract language.

Anyway I am delighted that the USPTO is trying to Do The Right Thing on this.  And I am honored to have had the occasional opportunity to tip a glass with one of the smart and well-intentioned USPTO people who is trying to make this happen.