QPIDS—Quick Path Information Disclosure Statements. Episode 120

Disclaimer for New Listeners

This episode is not for beginners. If this is the first episode you’re hearing from me, I doubt that you will want to listen to another because this one is really wonky and specific. However, if you ever want to know why your patent attorney charges you so much money for what seems so simple, then maybe you’ll like this, or perhaps you just like to know the nitty-gritty details of what patent attorneys do all day. So, with that disclaimer:

Introduction to QPIDS

This episode is about QPIDS. I know what you’re thinking: what do patents have to do with a kid in a diaper shooting arrows? Well, it’s not that kind of cupid. QPIDS in the patent world is an acronym for Quick Path Information Disclosure Statement.

Review of Information Disclosure Statements (IDS)

Now, I’m sure you’ve memorized all my episodes so far, but just in case you haven’t, I would recommend going back to Episode 24—it was a long time ago—that was just about Information Disclosure Statements in general. As a quick review, an Information Disclosure Statement is a document that you have to give to the Patent Office where you disclose any prior art that would be material to the patentability of your invention. Going back to the invention I used to talk about a lot, the three-in-one avocado splitter, pitter, and slicer: let’s say lots of two-in-one avocado slicers already existed, and you came up with the three-in-one avocado slicer. It might be material to the patentability of your invention that two-in-ones already exist. Now, you’re not saying that you shouldn’t get a patent—obviously, you’re filing an application so you think that you should—but some people might think it’s material to the patentability of your invention, so you have to disclose it.

Duty to Disclose

And you’re probably thinking, “I don’t want to disclose it. I don’t want the Patent Office even knowing that there are similar things out there.” I totally get where you’re coming from; I wouldn’t want them to know either, but the rule is that you have to disclose it. And if you don’t disclose it, and later it is found out in litigation or some other situation where you knew there was something similar out there and you never disclosed it, then your patent is unenforceable. And if you’re an attorney and try to hide information, then you could get disbarred or suspended. So, if I knew you’re trying to hide something, I can’t even hide it for you because I’m not going to get disbarred just because you want to hide something. So, in Episode 24, I talked about Information Disclosures in general, and when you have to pay to file one and when you don’t have to pay to file one.

Timing of Disclosure Obligations

One important thing to know is that you have a duty to disclose all the way until your patent issues. Once your patent issues, you no longer have a duty to disclose any information. Filing a late Information Disclosure Statement is perfectly normal. Maybe you had no idea this two-in-one avocado slicer existed, and then all of a sudden you see the two-in-one slicer. Once you find out, then you disclose it. Another situation that can happen is that maybe you filed your patent application in lots of countries. You might get a rejection from your Japanese patent application before you get one from your U.S. application. You’re going to have to disclose all the prior art that the Japanese examiner found in rejecting your application to the U.S. examiner. It can be a pain because you have to file a document in the U.S., and not only that, if you have applications all over the world, lots of countries have the same rule about disclosures, so you have to do lots of Information Disclosure Statements. There are actually companies where one of the things they do is keep track of all of the disclosures you’ve made to the different patent offices, and if any new prior art comes up, they have a list of all the prior art disclosed and will prepare the statements for all the countries.

Introduction to QPIDS

Okay, so what is this Quick Path Information Disclosure Statement, and why did I separate it out here? Let’s say you heard from your U.S. examiner and you got a Notice of Allowance. You’re super excited. You pay the issue fee, and right after you pay the issue fee, you find out about some new prior art you didn’t know about. Maybe another country rejected your application, but you really don’t think it’s that relevant to you not being able to get a patent in the U.S., but you have to disclose it. Normally, once you have paid the issue fee, an examiner is not going to take into consideration any new Information Disclosure Statement, and you don’t want to withdraw your patent that is just about to issue because you still think you should get a patent on your invention, despite what this newly revealed prior art has in it. This is where the QPIDS comes in.

Purpose of QPIDS

It’s a way to disclose this information to the Patent Office after you paid your issue fee, but before the patent actually issues, which usually might be about six weeks later. First, you’re going to want to download a form called PTO/SB/09; it’s called “Certification and Request for Consideration of an Information Disclosure Statement After Payment of the Issue Fee Under the QPIDS Program.” You put in your application number, inventor name, filing date, and title of the invention.

Filing the QPIDS Form

Then there are seven statements, and you have to check certain boxes and sign at the bottom. First is saying that you’re submitting an Information Disclosure Statement and the issue fee has already been paid. In item 2, you have to check one of three boxes: either you received this new prior art less than three months ago from a foreign patent office, or that it’s not from a foreign patent office, but you didn’t know about this prior art for more than three months ago, or you can ask them to see an attached certification statement. And that certification statement would be on the regular Information Disclosure Statement, which is on form PTO/SB/08. In item 3, you have to tell them to charge the IDS fee to your deposit account number, and you give that number. As an individual, you might not have a deposit number; it’s something you set up with the Patent Office where you keep some money in an account in case of emergency. If you don’t have one, you have to use an attorney that has one. Item 4 says that you have to submit a web-based petition online in a certain way. The fifth item is to request a continued examination, called an RCE, and you have to submit a fee for that. Sixth is that you are saying that this is a conditional request for continued examination. What this means is that you are doing a request for continued examination, called an RCE. I talked a lotabout RCEs in previous episodes—it’s usually when the Patent Office has rejected your application twice, and you want to keep arguing that your invention is patentable. After two rejections, you have to pay more money for the examiner to continue reviewing it. That’s called a Request for Continued Examination, or RCE.

Conditional RCE under QPIDS

Here, under QPIDS, this is a conditional RCE, which is a little different. You’re paying for an RCE, but if the examiner looks at the newly submitted prior art and says, “Thanks, but I still think you’re entitled to a patent, no changes necessary,” then you actually get a refund for the RCE fee. If, however, the examiner believes that the new information affects the patentability of the claims and issues a rejection, then the RCE proceeds as a normal continued examination and you don’t get a refund.

Item 7 in the QPIDS form states that you are filing this as a web-based petition and that you are not filing an amendment. If you file an amendment, then it’s treated as a regular RCE, not a conditional one, and you won’t get the refund if your patent is still allowed.

Filing QPIDS Online

Once you’ve signed the form, you go online to the USPTO website and file what’s called an ePetition. You have to be a registered user of the USPTO’s EFS-Web system.

You select “Existing Application/Patent,” then “ePetition.” Among the options, choose “Petitions to withdraw from issue after payment of the issue fee.” There will be four different selections.

Two of these will apply when you have not yet received your issue notification with your patent number, and two will apply if you already have the notification with the assigned number.

Most of the time, you’ll want the petition type that corresponds to 37 CFR 1.313(c)(1) or (c)(2), which cover withdrawing from issue due to newly discovered information or for the consideration of an RCE. You want to avoid selecting 1.313(c)(3), which is used to expressly abandon an application. You probably don’t want to do that unless you’re intentionally walking away from the patent.

Filling Out the ePetition

Once you select the appropriate petition type, you’ll be asked to enter your application number and confirmation number (these are found on all your USPTO correspondence). Then, select the reason for withdrawal—here it would be “consideration of a request for continued examination.”

You’ll then select “RCE request, submission, and fee are attached.” Make sure that your submission includes:

• Form PTO/SB/30 (Request for Continued Examination)

• Form PTO/SB/08 (Information Disclosure Statement)

• Form PTO/SB/09 (QPIDS Certification Form)

Each of these should be uploaded under the “Petition” document category.

Fees and Payment

After uploading, you’ll go to the fee calculation page. You will select:

• The petition fee under 37 CFR 1.17(h), Group 3

• The RCE fee, which depends on your entity status (micro, small, or large)

You can pay by credit card. Although you must enter a deposit account number on the QPIDS form, that doesn’t mean you have to pay using that deposit account—it’s only there in case a refund needs to be processed later if your RCE turns out to be unnecessary.

Wrap-Up

So, that’s how QPIDS works. In short, QPIDS is a useful tool that allows you to disclose newly discovered prior art after you’ve paid the issue fee but before the patent has actually issued. It saves you from having to abandon your application just to file an RCE. And, if the examiner still allows your patent after reviewing the new information, you’ll get your RCE fee refunded. It’s a win-win for cases when late-stage prior art shows up unexpectedly.

I’m Adam Diament, and until next time, keep on inventing.