WORLD TRADE ORGANIZATION  
ORGANISATION MONDIALE DU COMMERCE  
ORGANIZACIÓN MUNDIAL DEL COMERCIO   
IP/N/1/USA/D/3 
IP/N/1/USA/P/7 17 August 2012 
 
 
(12-4481) 
Council for Trade-Related Aspects  of Intellectual Property Rights Original:   English/ 
 anglais/  inglés 
 
 
MAIN DEDICATED INTELLECTUAL PR OPERTY LAWS AND REGULATIONS 
NOTIFIED UNDER ARTICLE 63.2 OF THE AGREEMENT 
 
UNITED STATES 
 
 The present document reproduces the text
1 of the Quick Path Information Disclosure 
Statement (QPIDS) Pilot Program, which entered into force on 16 May 2012, as notified by the United States on 20 June 2012 under Article 63.2 of the Agreement (see document IP/N/1/USA/5). 
 
Conseil des aspects des droits de propriété 
intellectuelle qui touchent au commerce  
 
PRINCIPALES LOIS ET RÉGLEMENTATIONS CONSACRÉES À 
LA PROPRIÉTÉ INTELLECTUELLE NOTIFIÉES AU TITRE 
DE L'ARTICLE 63:2 DE L'ACCORD 
 
ÉTATS-UNIS 
 
 Le présent document contient le texte
1 du Programme pilote concernant la déclaration de 
divulgation d'informations accélérée (QPIDS), qui est en tré en vigueur le 16 mai 2012, et a été notifié 
par les États-Unis le 20 juin 2012 au titre de l'article 63:2 de l'Accord (voir le 
document IP/N/1/USA/5). 
 
Consejo de los Aspectos de los Derechos de Propiedad 
Intelectual relacionados con el Comercio 
  
PRINCIPALES LEYES Y REGLAMENTOS DEDICADOS A LA 
PROPIEDAD INTELECTUAL NOTIFICADOS EN VIRTUD 
DEL PÁRRAFO 2 DEL ARTÍCULO 63 DEL ACUERDO 
 
ESTADOS UNIDOS 
 
 En el presente documento se reproduce el texto
1 del Programa piloto para la tramitación 
expedita de las declaraciones de  información (QPIDS), que entró en vigor el 16 de mayo de 2012, 
notificado por los Estados Unidos el 20 de junio de 2012 en virtud de lo dispuesto en el párrafo 2 del 
artículo 63 del Acuerdo (véase el documento IP/N/1/USA/5). 
 
 
                                                      
1 In English only./En anglais seulement./En inglés solamente.     
    IP/N/1/USA/D/3 
 IP/N/1/USA/P/7 
 Page 3 
 
 
  DEPARTMENT OF 
COMMERCE 
 
United States Patent and 
Trademark Office 
 
[Docket No.: PTO–P–2012–0022] 
 
Quick Path Information 
Disclosure Statement (QPIDS) 
Pilot Program 
 
AGENCY: United States Patent 
and Trademark Office, Commerce. 
 
ACTION: Notice. 
 
SUMMARY: The United States 
Patent and Trademark Office 
(USPTO) is implementing a pilot 
program intended to reduce 
pendency and applicant costs 
when an information disclosure 
statement (IDS) is filed after 
payment of the issue fee. This pilot 
program will permit an examiner 
to consider an IDS after payment 
of the issue fee without the need to 
reopen prosecution, effectively 
obviating the need to pursue a 
request for continued examination 
(RCE). Where the examiner 
determines that no item of 
information in the IDS necessitates 
reopening prosecution, the Office 
will issue a corrected notice of 
allowability. In addition to 
reducing pendency, this pilot 
program will promote efficiency in the examination process. There 
will be no fee required to use this 
program, beyond existing fees, 
e.g., fees for IDS submission. 
DATES: Effective Date: 
May 16, 2012. 
 Duration: The QPIDS Pilot 
Program will run from its effective 
date until September 30, 2012. 
Therefore, an IDS submitted under 
this pilot program must be filed on 
or before September 30, 2012. The 
USPTO may extend this pilot 
program (with or without 
modifications) depending on 
feedback from the participants and 
the effectiveness of the program. 
FOR FURTHER 
INFORMATION CONTACT: 
Nicole D. Haines, Legal Advisor, 
or Raul Tamayo, Legal Advisor, 
Office of Patent Legal 
Administration, Office of the Deputy Commissioner for Patent 
Examination Policy, by telephone 
at (571) 272–7717 or (571) 272–
7728, respectively, or by mail 
addressed to: Mail Stop 
Comments—Patents, 
Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313–
1450. 
SUPPLEMENTARY 
INFORMATION: 
Applicants who become aware of 
information after payment of the 
issue fee often file RCEs to have 
this information considered by an 
examiner. This is because 
37 CFR 1.97 does not provide 
applicants with the opportunity to 
file an IDS after payment of the 
issue fee. Thus, applicants who 
determine that they need to file an 
IDS after payment of the issue fee 
must either file a petition under 
37 CFR 1.313(c)(2) to withdraw 
the application from  issue in order 
to permit entry of an RCE and 
have the accompanying IDS 
considered by the examiner, or file 
a petition under 
37 CFR 1.313(c)(3) to withdraw 
the application from issue for 
express abandonment in favor of a 
continuing application. These 
applications experience delays 
associated with the filing and 
processing of the RCE (or 
continuing application), even if the information in the IDS would not 
have otherwise necessitated 
reopening prosecution.   In order to reduce pendency 
delays and costs associated with 
the current process for considering 
IDS submissions filed after 
payment of the issue fee, IDS 
submissions made in accordance 
with this pilot program will be 
considered by the examiner before 
determining whether prosecution 
should be reopened. Under this 
pilot program, prosecution will 
only be reopened where the 
examiner determines that 
reopening prosecution is necessary 
to address an item of information 
in the IDS. When the items of 
information in the IDS do not 
require prosecution to be 
reopened, the application will pass 
to issue, thereby eliminating the 
delays and costs associated with 
RCE practice. A. QPIDS Pilot Program 
Requirements 
 
 In order to be eligible to 
participate in this pilot program, 
an application must be a utility or 
reissue application ( i.e., this pilot 
program does not pertain to design 
or plant applications). In addition, 
as set forth in detail below, a 
QPIDS submission must include 
the following items: (1) A 
transmittal form that designates 
the submission as a QPIDS 
submission, such as form PTO/ 
SB/09; (2) an IDS accompanied by 
a timeliness statement set forth in 
37 CFR 1.97(e), with the IDS fee 
set forth in 37 CFR 1.17(p); (3) a 
Web-based ePetition to withdraw 
from issue under 
37 CFR 1.313(c)(2), with the 
petition fee set forth in 
37 CFR 1.17(h); and (4) an RCE, 
which will be treated as a 
"conditional" RCE, with the RCE 
fee under 37 CFR 1.17(e). All 
papers associated with this pilot 
program must be filed via the 
USPTO's Electronic Filing 
System-Web (EFS-Web), and all 
fees must be paid  by authorization 
to charge a deposit account. 
 
1. Transmittal Form 
 
 A new transmittal form, 
PTO/SB/09, has been made 
available at 
"http://www.uspto.gov/forms/index
.jsp" to identify submissions made 
pursuant to this pilot program. Use 
of this form will help the Office to 
quickly identify QPIDS 
submissions and facilitate timely 
processing of such submissions. 
The Office of Management and 
Budget (OMB) has determined 
that, under 5 CFR 1320.3(h), Form 
PTO/SB/09 does not collect 
"information" within the meaning 
of the Paperwork Reduction Act of 
1995. 
 
2. IDS With Timeliness Statement 
and Fee 
 
 A submission under this pilot 
program must include an IDS in 
accordance with 37 CFR 1.97 and 
37 CFR 1.98. Because 
37 CFR 1.97(d) does not provide 
for the filing of an IDS submission IP/N/1/USA/D/3 
IP/N/1/USA/P/7 Page 4 
 
 
  after payment of the issue fee, the 
USPTO is sua sponte waiving 37 
CFR 1.97(d) for IDS submissions 
filed under this pilot program to 
the extent that IDS submissions 
pursuant to this pilot program may 
be filed after payment of the issue fee. However, the requirements of 
37 CFR 1.97(d)(1) and (d)(2) that 
the IDS be accompanied by a 
timeliness statement specified in 
37 CFR 1.97(e) and the fee set 
forth in 37 CFR 1.17(p) are not 
waived.  
 IDS submissions made under 
this pilot program must be 
accompanied by either the 
timeliness statement set forth in 
37 CFR 1.97(e)(1) or the 
timeliness statement set forth in 
37 CFR 1.97(e)(2). The QPIDS 
transmittal form PTO/SB/09 
provides the appropriate timeliness 
statements for selection by 
applicant. Additi onally, the IDS 
submission must include the IDS 
fee set forth in 37 CFR 1.17(p), by 
including an authorization to 
charge a deposit account. The 
QPIDS transmittal form 
PTO/SB/09 provides an 
authorization to charge a deposit 
account for payment of the IDS 
fee. A submission that provides for 
payment of the IDS fee (or any 
other required fee) via a fee 
transmittal form authorizing 
another form of payment does not 
comply with the requirements of 
this pilot program. Thus, applicants must have an 
established USPTO deposit 
account to participate in this pilot 
program. Information on USPTO 
deposit accounts is available at 
http://www.uspto.gov/about/offices
/cfo/finance/Dep _Account _Rules _
and_Info.jsp. 
 
3. Web-Based ePetition and Fee  
 
 A submission under this pilot 
program must be filed with a 
"Petition to Withdraw from Issue 
After Payment of the Issue Fee" 
(37 CFR 1.313(c)(2)) submitted as 
a Web-based ePetition via EFS–
Web with the petition fee set forth 
in 37 CFR 1.17(h). Information 
regarding submission of Web-
based ePetitions is available at 
http://www.uspto.gov/patents/proc
ess/file/efs/guidance/epetition-info.jsp. Depending on whether a 
patent number has been assigned, 
applicants must select either the 
"Petition to Withdraw from Issue 
after Payment of the Issue Fee 
(37 CFR 1.313(c)(1) or (2))" or the 
"Petition to Withdraw from Issue after Payment of the Issue Fee 
(37 CFR 1.313(c)(1) or (2) with 
Assigned Patent Number)." The 
RCE that accompanies a QPIDS 
submission under this pilot 
program will be deemed sufficient 
to satisfy the requirement in 
37 CFR 1.313(c)(2) that the 
petition to withdraw from issue is 
for consideration of an RCE in 
compliance with 37 CFR 1.114, 
even though the RCE will only be 
processed if the examiner 
determines that any item of 
information in the IDS necessitates 
reopening prosecution.  
 
4. RCE and Fee 
 
 A submission under this pilot 
program must include an RCE, 
with the IDS meeting the 
submission requirement for the RCE. The RCE will be treated as a 
"conditional" RCE until the 
examiner determines whether any 
item of information in the IDS 
necessitates reopening 
prosecution. Additionally, the 
QPIDS submission must be 
accompanied by the RCE fee 
under 37 CFR 1.17(e) in order to 
process the ePetition to withdraw the application from issue under 
37 CFR 1.313(c)(2).  
 Under this pilot program, the 
RCE will be pro cessed and treated 
as an RCE under 37 CFR 1.114 in 
the event the examiner determines 
that any item of information 
contained in the IDS necessitates 
the reopening of prosecution in the 
application. In this instance, the 
IDS fee under 37 CFR 1.17(p) will 
be automatically returned because 
the IDS complies with 
37 CFR 1.97(b)(4). Otherwise, if 
the examiner determines that no 
item of information in the IDS 
necessitates reopening 
prosecution, the RCE will not be 
processed and the RCE fee will be 
automatically returned. This will 
save applicants both the time and 
costs associated with RCE 
practice. An RCE filed pursuant to this pilot program complies with 
the timing requirement of 
37 CFR 1.114(a)(1). This pilot 
program is an exception to the 
provision in MPEP 706.07(h), 
which provides that the Office will 
treat a "conditional" RCE as if an RCE had been filed. Otherwise, 
the Office generally treats 
conditional requests without 
regard to the "conditional" 
designation ( see, e.g., 
MPEP 201.06(d), 
MPEP 706.07(g), and 
MPEP 714.13). 
 
B. Processing of QPIDS Pilot 
Program Submissions 
 
 A compliant ePetition to 
withdraw the application from 
issue, pursuant to 
37 CFR 1.313(c)(2), will be 
granted immediately upon 
submission. After the grant of such 
a petition, the IDS submission 
made under this pilot program will 
be identified and placed on the 
examiner's "expedited" docket for 
consideration. If the examiner 
determines that no item of 
information in the IDS necessitates 
reopening prosecution, the 
examiner will issue a corrected 
notice of allowability ( i.e., form 
PTOL–37). The corrected notice 
of allowability will identify the 
IDS and be accompanied by a 
copy of the submitted IDS listing 
(e.g., form PTO/SB/08) as 
considered by the examiner. See 
MPEP 609.05(b). Considered 
information will be printed on the 
patent pursuant to MPEP 609.06. 
No applicant response to the 
corrected notice of allowability 
will be necessary. In this instance, 
the RCE will not be processed and 
the RCE fee will be automatically 
returned by the Office (the IDS 
and petition fees will not be 
returned). In this instance, where 
the examiner has determined that 
prosecution does not need to be 
reopened, a new notice of 
allowance and fee(s) due ( i.e., 
PTOL–85) will not be issued. To 
the extent provisions of 
37 CFR 1.313(a) are not consistent with this pilot program, such 
provisions are hereby waived for 
QPIDS pilot program submissions.   IP/N/1/USA/D/3 
 IP/N/1/USA/P/7 
 Page 5 
 
 
   If the examiner determines that 
any item of information in the IDS 
necessitates reopening 
prosecution, the RCE will be 
processed and placed on the 
examiner's docket. In this instance, 
the RCE will be deemed filed as of the filing date of the QPIDS 
submission, and the IDS fee will 
be automatically returned by the 
Office because the IDS complies 
with 37 CFR 1.97(b)(4) (the 
petition fee will not be returned). 
The applicant will be notified that 
prosecution is being reopened (via 
a form PTO–2300), and such 
notification will identify the IDS 
and be accompanied by a copy of 
the submitted IDS listing ( e.g., 
form PTO/SB/08) as considered 
by the examiner. See 
MPEP 609.05(b). If the 
application is subsequently again 
found allowable, the applicant may 
request that the previously paid 
issue fee be reapplied toward the 
issue fee that is now due in the 
same application. See MPEP 1306.   A non-compliant QPIDS 
submission that otherwise 
complies with the requirements of 
37 CFR 1.114 will be treated as an 
RCE. For example, failure to 
provide an authorization to charge 
a deposit account for payment of the IDS fee or failure to select or 
otherwise provide an appropriate 
timeliness statement will result in 
the RCE being processed. 
Similarly, a submission under this 
pilot program that includes an 
amendment will be  processed as 
an RCE.  
 Taking post-issue fee payment 
processing times into 
consideration, applicants are 
strongly encouraged to file IDS 
submissions under this pilot 
program as soon as the applicants 
become aware that it is necessary 
to submit an IDS. Applicants are 
reminded, where applicable, to 
include a statement under 
37 CFR 1.704(d) so as to avoid 
reduction in patent term 
adjustment pursuant to  37 CFR 1.704(c)(10). See, 
Revision of Patent Term 
Adjustment Provisions Relating to 
Information Disclosure 
Statements, 76 FR 74700, 74701 
(December 1, 2011) (final rule). 
 Additional information regarding this pilot program will 
be made available on the USPTO's 
Web site at 
"http://www.uspto.gov/patents/init
_events/qpids.jsp ." 
 
 Dated: May 3, 2012. 
 
David J. Kappos, 
Under Secretary of Commerce for 
Intellectual Property and Director 
of the United States Patent and 
Trademark Office. 
 
[FR Doc. 2012–11222 Filed 5–9–
12; 8:45 am] 
 
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