USPTO announces voluntary Search Disclosure Declaration as a favorable institution factor for AIA proceedings
The U.S. Patent and Trademark Office (USPTO) today announced in a memorandum an optional practice that allows petitioners in inter partes review (IPR) and post-grant review (PGR) proceedings to submit information describing how asserted prior art was identified. This initiative is entirely voluntary and designed to strengthen examination quality by improving the USPTO’s ability to locate relevant prior art earlier in the process.
Petitioners may elect to submit a Search Disclosure Declaration (SDD) identifying: databases and repositories consulted; search fields, filters, or classifications used; and general query logic or approaches. An SDD should also indicate the amount of time spent conducting the prior art search and reviewing the search results.
The Director plans to consider the bona fide submission of an SDD as a favorable factor when determining whether to institute review. There will be no negative impact on a petitioner who chooses not to participate in this optional practice.
Where appropriate, a petitioner may designate its SDD as Business Confidential Information. This information will be used internally to enhance examiner training, refine classification pathways, and inform development of AI-enhanced search tools.
This memorandum takes effect immediately and applies to IPRs and PGRs in which a patent owner preliminary response due date has not yet elapsed.
The Office will be publishing Frequently Asked Questions to provide the public with additional information.
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