How do USPTO patent examiners get prior art?

When examining patent applications, USPTO examiners get relevant prior art through two primary means:

  1. the patent examiner searches the prior art; and
  2. relevant prior art is submitted for the examiner’s consideration.

The active approach of the examiner searching prior art is straightforward and no different than what you might expect foreign patent examiners do.

The passive approach is peculiar to the US patent practice, distinguishing the USPTO from most foreign patent offices. Whereas most patent offices worldwide do not require the applicant to submit prior art, the USPTO imposes a duty of disclosure on patent applicants and their agents to disclose known and relevant prior art.

Burden on applicants to submit known prior art (IDS)

Patent applicants have an obligation to disclose known prior art that is relevant to their claimed inventions. Two keywords here bear emphasis: known and relevant.

“Known” does not mean that the applicant has a duty to search prior art. The duty of disclosure applies only to prior art already known to the applicants or their agents should be disclosed. This would include prior art found in patent searches as well as prior art uncovered by foreign patent examiners in related international patent filings.

“Relevant” means that the prior art is material to the patentability of the claimed invention. Not every piece of prior art is relevant. If there is any doubt as to the relevance of a prior art reference, we prefer to err on the side of caution and disclose the reference.

Applicants meet their duty of disclosure by filing an Information Disclosure Statement (IDS) citing the prior art references. If any foreign patent references are cited, the IDS must be accompanied by a copy of each foreign reference along with an English translation of the abstract. There are deadlines and pertinent USPTO official fees that may apply to the late filing of an IDS.

Prior art in US national stage applications

When a PCT application is filed as a US national stage application, the patent examiner may look up the International Search Report (ISR) of record in the PCT application. If the ISR and copies of non-US prior art documents are entered into the file, the USPTO examiner will consider those prior art references without the applicant having to file an IDS.

We would caution US national phase applicants to be careful here. Over reliance on US patent examiners to make prior art of record may lead to the possibility of prior art not being considered. In certain situations, significant USPTO fees and additional time would be required to submit the missing prior art. Therefore, we generally recommend that US national stage applicants file the IDS upfront with the initial filing citing the prior art references of record in the PCT application. Copies of any non-patent literature (NPL) must also be included.

What is the Relevant Prior Art Initiative (RPA Initiative)?

The USPTO has provided this summary of the Access to Relevant Prior Art Initiative. This program is intended is streamline access to prior art relevant to patent examiners, particularly in utility patent applications. By using electronic resources, the goal of the RPA initiative is to get relevant prior art to patent examiners efficiently.

Prior art in parent applications will be made of record in continuing applications through the RPA Initiative. Applicants need not file an IDS to disclose prior art cited in parent applications.

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Vic Lin

Vic Lin

Startup Patent Attorney | IP Lead Partner at Innovation Capital Law Group
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Vic Lin

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