Can you submit prior art after paying the issue fee?
It can be a hassle, but the duty of disclosure in a patent application does not end just because the issue fee has already been paid. Yes, you can submit prior art after paying the issue fee by filing a Quick Path IDS.
Need to file an IDS after paying the issue fee? Contact US patent attorney Vic Lin at vlin@icaplaw.com or call (949) 223-9623 to explore working with us.
How does a Quick Path IDS work?
A QPIDS enables you to submit additional prior art references for consideration by the examiner. To file a QPIDS, you must submit the proper request, a conditional Request for Continued Examination and the appropriate fees.
While the government fees are hefty, the fee for the conditional RCE may be refundable.
What is a conditional RCE?
A conditional Request for Continued Examination provides the examiner with the option to reopen prosecution if necessitated by the newly submitted prior art. The RCE government fee will be refunded if the examiner does not exercise the option to reopen prosecution.
How much does a Quick Path IDS cost?
Attorney’s fees will vary, but the government fees will be consistent. If prosecution is reopened, your IDS government fee will be refunded. On the other hand, your RCE government fee will be refunded if prosecution is not reopened.
What is the best case scenario after filing a Quick Path Information Disclosure Statement?
Ideally, you want the examiner to consider the new prior art references and promptly issue another Notice of Allowance. That way, your substantial RCE USPTO fees will be refunded. The new prior art will now be made of record which reduces the risk of invalidity challenges.
A less favorable scenario would involve a reopening of prosecution. Even in that scenario, you would at least have the opportunity to amend your claims. You would also be able to argue how your claims are allowable over the newly submitted prior art.
Either way, a Quick Path IDS will make the additional prior art references of record in your prosecution history. That is generally a good thing. Any third party seeking to invalidate your patent will have a tougher time basing their arguments on prior art references that were already considered by the examiner.
Need to submit prior art strategically?
Contact US patent attorney Vic Lin at (949) 223-9623 or email vlin@icaplaw.com to see how we can help you submit prior art wisely.
