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ARTICLE · 05 NOVEMBER 2018

USPTO Access To Relevant Prior Art Initiative

This will eliminate the need for applicant to submit an IDS in the continuing application for the purpose of having these citations printed on the patent.

United StatesIntellectual Property

In an October 25, 2018 Federal Register Notice, the USPTO announced staged implementation of the first phase of an initiative aimed at "leveraging electronic resources to retrieve information" of record in one patent application for consideration in another. While the first phase of the Access to Relevant Prior Art Initiative is limited to importing citations from a parent application into its immediate child, it represents an important first step towards reducing the burdens of satisfying the Duty of Disclosure.

The Duty Of Disclosure In Continuing Applications

The substantive aspects of the Duty of Disclosure to the USPTO are set forth in 37 CFR § 1.56, while the procedural rules governing how to comply (i.e., the rules governing Information Disclosure Statements) are set forth in 37 CFR §§ 1.97 and 1.98. Further guidance is provided in MPEP § 609. As most stakeholders know, citations listed in an IDS and considered by the examiner are printed on the front page

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