Patent Examiners Leverage AIA Trial Data
Back in April, the USPTO launched the Post Grant Outcomes Pilot, which focused on pending patent applications that are related to patents undergoing an America Invents Act (AIA) trial proceeding before the Patent Trial and Appeal Board (PTAB). The agency now reports that the Post Grant Outcomes Pilot has succeeded in making examiners aware of trials related to applications they are examining, and in turn has facilitated the timely and effective examination of applications.
The survey results (here) showed that examiners found the PTAB information—especially the initial petition (including the prior art citations), the PTAB’s institution decision, and any expert declarations—to be highly useful. The PTO also found that 46% of the examiners referred to at least one reference cited in the AIA trial petition during the examination of their own case, either by citing it in a rejection or as pertinent prior art. If an examiner did not use or cite the prior art from the trial, it was most likely because the claims were different between the “parent” and the “child” case, the examiner disagreed with the AIA petitioner’s analysis of the prior art and/or claims, or the examiner was able to find better art.
To further facilitate the process, in August 2016 the USPTO deployed an upgrade to examiners’ desktop application viewers which allows automated access to the contents of related AIA trials, including access to the entire file, and any cited prior art. Now that the results of the pilot are available, the next objective is to identify examination best practices or deficiencies that can be addressed through additional examiner training.