Citation of prior art

In June 2019, the PHEP concluded its work on citation of prior art. This project was jointly led by the Korean Intellectual Property Office (KIPO) and the United States Patent and Trademark Office (USPTO), and focused on what legal or procedural changes would be required to allow for an IT-based solution for the submission of prior art previously cited by another office and what legal or procedural changes would be required to adopt a common form for the citation of prior art.

The PHEP identified initial business requirements for an IT system for citation of prior art and submitted those requirements to Working Group 2, which resulted in a feasibility study. In addition, an in-depth survey was conducted among the offices, focused on patent examination systems, practices, IT systems, and solutions.  The PHEP developed and analysed various workflow models for exchanging prior art between offices and reached consensus on a model that could lay the foundation for achieving the goal of the project.

The work done by the PHEP on citation of prior art provided momentum to maximize the usability of work sharing through an IT system with the potential to reduce applicant’s burden of submitting prior art. In addition, a vision for cooperation among the IP5 work groups to accomplish the goals of IP5 projects was established.

The analysis done helped the offices determine that applicants may have substantial benefits through a reduced burden of submitting prior art. The IP5 offices agreed to cooperate to maximize the usability of work sharing through continual cooperation regarding prior art submission which could reduce the burden of prior art submission for the applicant.

Regarding next steps, the Working Group 2 (WG2), in close consultation with Working Group 3 (WG3), will begin analysis towards potential development of an IT system based on the workflow model agreed upon by the PHEP.