A situation arose recently where a search report was issued in a foreign counterpart of a U.S. patent application that had already been allowed. To comply with the duty of disclosure in the U.S., it was necessary to submit an information disclosure statement (IDS) including a list of the references cited in the foreign search report to the patent office. Because the deadline for paying the issue fee was too close, I sought approval from my client to take advantage of the Quick Path Information Disclosure Statement (QPIDS) pilot program, which had been extended to 23 March 2013. With this program, an IDS filed after payment of an issue fee will be considered.
It turned out that requesting for an IDS to be considered under the QPIDS pilot program is rather involved. The complexity appears to have been fueled by the need to include a mechanism in the program for handling the application should the examiner find that any of the references cited in the IDS is damning to the patentability of any of the allowed claims.
The first step was to pay the issue fee in the application so that the application is eligible for the QPIDS pilot program. I downloaded the QPIDS form from the USPTO website and noted what would be needed to use the program, i.e., an IDS, a request for continued examination (RCE), a petition to withdraw from issue after payment of the issue fee, and a deposit account. I noted that the IDS could be filed under QPIDS only if (1) the references cited in the IDS are from a foreign communication in a counterpart foreign application and the foreign communication is not more than three months old at the time of filing the IDS or (2) the references are not from a foreign communication and were not known to anyone associated with filing and prosecution of the application more than three months before filing the IDS.
The QPIDS form noted that the petition to withdraw from issue had to be submitted as a Web-based ePetition. To be honest, I missed the “e” in the “ePetition” to start with and was close to messing up the filing of the QPIDS request. In the main portal of the EFS-Web, I'd started out selecting the option to submit documents/fees in an existing application. Then, I uploaded all the documents specified in the QPIDS form along with the QPIDS form. A document description, selected from a list, had to be associated with each uploaded document. I began to worry when I could not find QPIDS on the list.
It turned out that to enter the QPIDS program, I had to start by filing an ePetition for withdrawal from issue. I went back to the main portal of the EFS-Web and selected the ePetition option. In the ePetition, I had to indicate the reason for wanting to withdraw the application from issue. My reason was to allow consideration of a RCE, although the ultimate reason was to allow consideration of an IDS. Once I’d selected consideration of the RCE as the reason for withdrawal, the system automatically granted the petition. I was then allowed to upload all the necessary files, i.e., the IDS, the RCE, and the QPIDS form. Following this route, I found QPIDS in the document description list. I checked everything over a million times before submitting the petition because I had the feeling that it would be difficult to near impossible to correct any errors.
The examiner should now consider the references cited in the IDS. If the examiner finds that the references do not necessitate reopening prosecution, the examiner will not reopen prosecution. I presume then that a new notice of allowance will be issued. In this case, the RCE fee will be refunded, i.e., since it wasn’t necessary to reopen prosecution. The previously paid issue fee would then be reapplied. The patent office gets to keep the IDS fee and petition fee.
On the other hand, if the examiner finds that the references are pertinent to patentability of the claims, the RCE will be processed and prosecution will be reopened. In this case, the IDS fee will be refunded. I should mention that to use the QPIDS program the applicant or the representative for the applicant must have a deposit account number. The only way to pay the IDS fee while filing the petition to withdraw from issue and QPIDS request is to use a deposit account—I don't know the reason for this odd rule since the RCE and petition fees could be paid using other methods, such as a credit card.