accelerated examination program andrew faile director, tc 2600

Accelerated Examination Program

Andrew FaileDirector, TC 2600

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Revised Accelerated Examination (AE) Program Revised Accelerated Examination (AE) Program and Petition to Make Special Proceduresand Petition to Make Special Procedures

OverviewOverview

Effective August 25, 2006, the requirements for filing petitions for accelerated examination and other petitions to make special have been revised.GOAL: to achieve a final decision by the examiner within 12 months

from the filing date of the application See Changes to Practice for Petitions in Patent Applications to Make Special and for Accelerated Examination, 71 Fed. Reg. 36323 (June 26, 2006) (notice) available at http://www.uspto.gov/web/offices/pac/dapp/ogsheet.html

MPEP 708.02 (8th Edition) will be revised in due course to reflect the changes.

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OverviewOverview

The new requirements apply to all petitions to make special. Thus, a uniform practice will be established.

Except: Petitions on the basis of health, age and the Patent Prosecution Highway (PPH) pilot program

If the petition meets the requirements set forth in the notice,

The application will be granted special status under the revised AE program, and The new processing and examination procedures will apply to the application.

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Effective Date Provision: 8/25/06Effective Date Provision: 8/25/06

On or after August 25, 2006Any petition for accelerated examination, and any other petition to make special (except petitions based on applicant’s health or age or the PPH pilot program) must meet the requirements set forth in the notice.

Petitions to make special that were filed before 8/25/06 need only comply with the previous requirements set forth in MPEP 708.02 (8th Edition).

These applications will be processed and examined using the previous procedures set forth in MPEP 708.02 (8th Edition).

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SummarySummary

The revised AE program will allow applicants who desire quick patent protection for their inventions to:

Receive a final patentability decision by the examiner within 12 months; and Choose which applications they want to advance for examination.

In order to meet the 12-month goal, applicant will be required to:

Provide additional information with the petition for AE and Comply with revised procedures throughout the examination process

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The Office’s Twelve-Month GoalThe Office’s Twelve-Month Goal

The 12-month goal is successfully achieved when one of the following final dispositions occur:

Notice of Allowance;Final Office action;Notice of appeal;Request for Continued Examination (RCE); andAbandonment.

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Summary - Benefits for ApplicantsSummary - Benefits for Applicants

Expedited handling throughout the patent application process, including:

Office of Initial Patent Examination (OIPE); Examination; Post-appeal process; andPatent issue process.

Earlier and better interactions with the examiner.More participation in clarifying and focusing the issues during the prosecution.

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Eligible ApplicationsEligible Applications

Any non-reissue utility or design application filed under 35 U.S.C. 111(a) on or after the effective date is eligible.

Not eligible: plant applications, international applications including applications entering the national stage under 35 U.S.C. 371, and reissue applications.

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Filing RequirementsFiling Requirements

The application must be filed with: The petition to make special (form PTO/SB/28); andThe fee under § 1.17(h), or a statement that the claimed subject matter is directed to environmental quality, energy, or countering terrorism (no fee required, see §1.102(c)(2)).

The application must be complete under § 1.51 and in condition for examination upon filing.

For example, the application must include the filing fees and an executed oath or declaration under § 1.63.

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Filing Requirements (Cont’d)Filing Requirements (Cont’d)

The application, petition, and required fees must be filed electronically via EFS or EFS-Web.

Current EFS-Web system does not allow filing of sequence listingsMid-October 2006 release of EFS-Web will address thisInterim Filing procedure for sequence listings (use any one of the following three options):

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Interim Filing Procedure for Sequence Listings

Option 1 The entire application filing except the sequence listing

is filed through EFS-Web and the sequence listing is filed electronically on the same calendar day through ePAVE as a “follow-on” paper.

Option 2 The entire filing except the petition for accelerated

examination is filed through ePAVE and the petition (including all attachments) is filed on the same calendar day through EFS-Web.

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Interim Filing Procedure for Sequence Listings

Option 3 The entire application filing except the sequence listing

is filed through EFS-Web and the paper copy and computer readable form of the sequence listing is filed on the same calendar day by Express Mail (directed to Mail Stop: Sequence).

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The application must contain:

3 or fewer independent claims; and

20 or fewer total claims.

The application must not contain any multiple dependent claims.The claims must be directed to a single invention.

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Role of SPREs in the Accelerated Examination (AE) Role of SPREs in the Accelerated Examination (AE) ProgramProgram

SPREs are the Deciding Officials on AE Petitions

Review petitions for compliance with the AE Program Petition Dismissed

SPRE will point out noted defects Applicant has one chance to perfect the petition

Petition DeniedSPRE will point out defects that cause the petition to be denied and application returned to the art unit queue

Petition GrantedApplication examined under the AE program

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The petition (form PTO/SB/28) must include: A statement that applicant will agree to make an election without traverse in a telephonic interview;A statement that applicant will agree to have an interview when requested by the examiner;A statement that applicant will agree not to separately argue the patentability of any dependent claim during any appeal;A statement that a pre-examination search was conducted; and An accelerated examination support document (ESD).

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Deficiencies Resulting in the Deficiencies Resulting in the DenialDenial of the of the Accelerated Examination (AE) PetitionAccelerated Examination (AE) Petition

Petitions will be Denied if: Application Not eligible for the AE Program.

Reissue, 371, Plant, or Reexamination Proceeding Issuance of Notice to File Missing Part(s).

Application should be reviewed to verify that it was complete for examination on filing

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Deficiencies Resulting in the Deficiencies Resulting in the DismissalDismissal of the of the Accelerated Examination (AE) Petition Accelerated Examination (AE) Petition (Cont’d)(Cont’d)

.Petitions will be Dismissed if:

Pre-examination search does not meet the requirements of the Notice.

AE Support Document does not meet the requirements of the Notice.

Applicant has one chance to correct a deficient Pre-examination search or AE support document

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Evaluating the Pre-Examination SearchEvaluating the Pre-Examination SearchRequirementsRequirements

Statement that a pre-examination search was conducted U.S. Patents Patent application publications Foreign patent documents Non-patent literature

Search directed to the claimed invention where claims are given their broadest reasonable interpretation

Search must encompass disclosed features that may be claimed

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Evaluating the Pre-Examination SearchEvaluating the Pre-Examination Search

RequirementsRequirements

A classified search of the US patents and published patent applications in the Class and subclass where the claimed invention is most likely to be classified in the current United States Patent Classification system (USPC) Where the PTO review considers that another or

different classification is preferred, the search by the applicant will usually be considered acceptable unless the performed classified search is so divergent that it also calls other aspects of the pre-examination search into question.

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A text search of the US patents and published patent applications that covers the subject matter of the independent claims using terms recognized in the art must be performed.

Claims are given their broadest reasonable interpretation. The search should consider individual features by

themselves and combinations of features. The search should cover the broadest scope encompassed

by the claims as well as claims of narrow and intermediate breadth.

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A text search of foreign patent documents that includes the sources required under the PCT minimum documentation requirements, to the extent available.

The PCT minimum documentation requirements can be found at http://www.wipo.int/standards/en/pdf/04-02-01.pdf.

This search may be completed using the USPTO Universal Public Workstation (UPWS) in the USPTO Public Search Room Facility or through other available commercial database providers.

The text search should be similar to that provided for US patents and published patent applications.

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A text search of the suggested non-patent literature (NPL) resources from the current USPTO search templates

Search templates are found on the USPTO website at: http://www.uspto.gov/web/patents/searchtemplates/searchtemplates.htm

A search employing any special tools (e.g., nucleic acid or protein sequence searching tools) as identified in the current USPTO search templates.

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.•Justification must be provided when a particular search resource has not been considered during the search of any one of:

•US patents •Patent application publications•Foreign patent documents •NPL

•The justification provided must be specific •No general boiler-plate assertions; e.g. “no relevant prior art expected to be found” or “the best prior art was already located”.

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Use of Foreign Office search reports Must meet all of the AE search criteria to be used

Example: A foreign office search report that includes a search of the PCT minimum documentation and provides the required search history may be used to meet that requirement in the above-noted search.

The other portions of the search need to be performed for a sufficient pre-examination search submission.

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Petition Dismissal Identified deficiencies that require further search by the

applicant will include a specific discussion of the deficiency and suggestions to the applicant on how the deficiency may be overcome.

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Evaluating the Evaluating the Accelerated Examination Support Document (AESD)Accelerated Examination Support Document (AESD)

The accelerated examination support document must include: An information disclosure statement (IDS) citing each reference deemed most closely related to the subject matter of each claim; An identification of where each limitation disclosed in the references is found. A detailed explanation of how each claim is patentable over the reference(s); A concise statement of utility of the invention; A showing of support for each claim limitation in specification and any parent application, including any means-plus-function limitations; and An identification of any cited references that may be disqualified as prior art under 35 U.S.C. 103(c).

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An identification of where each limitation disclosed in the references is found.

Not intended to be an exhaustive listing of every conceivable subjective interpretation of how a claim limitation may read on the reference Applicants should point out what are considered to be the relevant representations of the limitation in the reference (may be more than one instance) The USPTO will adopt a rule of reason when evaluating this portion of the AESD.

The identification will be deemed to be sufficient unless the correspondence is so deficient that it would materially effect examination of the application.

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A detailed explanation of how each claim is patentable over the referenceApplicants should be specific in their explanation

Should include the identification of specific claim limitations that support their position. General statements that the claims are neither anticipated nor rendered obvious by the cited references or that the references are not properly combinable will not be acceptable.

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A concise statement of utility of the invention;Where each of the independent claims share a common utility, these claims may be grouped together in this explanation.

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A showing of support for each claim limitation in specification and any parent application, including any means-plus-function limitations

Applicants should specify where in the specification each limitation of the claim finds support. The USPTO will adopt a rule of reason when evaluating this portion of the AESD.

However, where the limitation is intended to cover multiple embodiments of the structures, acts, or materials to perform the recited function, each should be separately identified under this requirement.

Unless the identification is so deficient that is would materially effect examination of the application, the showing of specification support will be deemed to be sufficient for this part of the AESD.

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An identification of any cited references that may be disqualified as prior art under 35 U.S.C. 103(c).

It is sufficient for an applicant to identify a reference that might be subject to disqualification without any further explanation at this time.Permits an examiner to determine when a “back-up” rejection may be appropriate, both in the potential interview process and/or the resulting Office action. If the identified reference is applied in any ground of rejection, it is highly recommended that the applicant make the determination of that possible disqualification at the earliest possible time in the prosecution.

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Revised Accelerated Examination (AE) Program Revised Accelerated Examination (AE) Program and Petition to Make Special Proceduresand Petition to Make Special ProceduresProcessing and Examining ProceduresProcessing and Examining Procedures

Once the application is granted special status, the application will be promptly taken up for action (e.g., within 2 weeks of petition decision), with special examining procedures set forth in the notice.

The examiner will consider the AE Support Document and conduct a complete prior art search.

Prior to mailing any first Office action rejecting claims,

A telephone interview will be conducted, unless an interview is deemed unlikely to overcome the rejection; and

A conference will be conducted in the USPTO to ensure the viability of the rejection(s).

There will also be a conference before mailing any final Office action.

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Processing and Examining Procedures (Cont’d)Processing and Examining Procedures (Cont’d)

Non-final Office actions will have a shorter period for reply:

One-month (or 30 days) SSP for any action, other than a final rejection or allowance.

No extensions of time under § 1.136(a) permitted.

Failure to timely file a reply will result in abandonment of the application.

Extensions of time are only available under § 1.136(b).

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Revised Accelerated Examination (AE) Program Revised Accelerated Examination (AE) Program and Petition to Make Special Procedures and Petition to Make Special Procedures

Examining Procedures: Applicant’s ReplyExamining Procedures: Applicant’s Reply

Any reply must be: filed via EFS-Web;

complete, fully responsive; and

limited to the rejection(s), objection(s) and requirements made.

An updated AE support document is required for any amended or newly added claims that are not encompassed by the previously-filed AE support document.

An updated search is required for any amended or newly added claims that are not encompassed by the pre-examination search.

The above requirements are imposed in order to be able to complete the examination within 12 months.

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Examining Procedures: Applicant’s Reply (Cont’d)Examining Procedures: Applicant’s Reply (Cont’d)

The Office will treat any amendments (including after-final amendments and RCE submissions) as not being

fully responsive if the amendment: Exceeds the 3/20 claim limit; Presents claims to a non-elected invention; Presents claims not encompassed by the pre-examination search, or an updated search; or Presents claims requiring an updated AE support document, which is not submitted.

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Post-Allowance ProceduresPost-Allowance Procedures

While the mailing of a notice of allowance is the final disposition for purposes of the Office’s 12 month goal, in order for the application to be expeditiously issued as a patent, applicant must:

Within one month, pay the issue fee (and any outstanding fees due) and return the form PTOL-85B (Part B of the Notice of Allowance and Fee(s) Due); andNot file any post-allowance papers that are not required by the Office.

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Appeal ProceduresAppeal Procedures

While the mailing of a final rejection is the final disposition for purposes of the Office’s 12 month goal, in order for the application to be expeditiously forwarded to the Board of Patent Appeals and Interference for a decision, applicant must:

Promptly file the notice of appeal, appeal brief, and appeal fees; andNot request a pre-appeal brief conference (which would not be of value because a conference would already have been conducted).

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The Office’s Twelve-Month GoalThe Office’s Twelve-Month Goal

The final disposition may occur later than 12 months in certain situations.

For example, if there is a secrecy order, national security review, interference, petition under §§ 1.181, 1.182, or 1.183, or non-compliant or not fully responsive amendment.

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Additional information is available on the USPTO’s Internet web site at:http://www.uspto.gov/web/patents/accelerated/

For inquiries, please email: [email protected]


Additional InformationAdditional Information

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Accelerated Examination WebsiteAccelerated Examination Website

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Accelerated Examination WebsiteAccelerated Examination Website

To get to the AE website from the USPTO Homepage:

Go to “Patents” on the home page

Click on “Main”

Click on “Accelerated Examination” (on the left hand side)

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Thank you


accelerated examination program andrew faile director, tc 2600

Documents

revised ae program

examination procedures

revised procedures

special status

filing petitions

patent applications

patent application process

previous requirements