Speeding It Up atthe USPTO

July 2013

July 23, 2013

Speeding Up Examination

Speeding Up Examination

• Petition to Make Special

• Accelerated Examination

• Prioritized Examination

• Patent Prosecution Highway

• First Action Interview Pilot Program

Petition to Make Special

• Most Grounds for Petitions to Make Special are now NOT Available (After August 25, 2006)– A petition to make special filed on or after August 25,

2006 will only be granted if it is based upon applicant’s health or age or is under the PPH pilot program, or if it complies with the requirements set forth in MPEP § 708.02(a). (Accelerated Examination) --MPEP 708.02

– Green Technology- pilot program closed

• Now need to use other ways, e.g., Accelerated Examination, Patent Prosecution Highway, or Prioritized Examination

Petition to Make Special

• Petitions to Make Special are Still Available for– Age- 65 or older

– Health Normal course of prosecution may result in

applicant’s inability to assist prosecution Requires proof but can request to keep information

out of the public record

• Application advanced out of turn

• No Fee!

Petition to Make Special

• Age- 65 or older• Form- PTO/SB/130• Signed by

– Inventor with statement of age OR

– Attorney- retain evidence of age (e.g., copy of driver’s license)

• No Fee!

Accelerated Examination

• Goal: 12 months to disposition• Available for

– Utility applications– Design applications (MPEP 708.02(a)(VIII)(A)

• Not available for – Plant applications – Reissue applications – §371 national stage applications – Reexamination proceedings– RCEs (unless previously granted special status); and – Petitions to make special based on applicant’s health or

age or under the PPH pilot program

Accelerated Examination• Filing Application for Accelerated Examination

– Application must be "complete" and "in condition for examination" e.g., all required fees, oath/declaration of actual inventor, spec,

claims, drawing, title, abstract, priority claims– File electronically– Include suggested classification (class and subclass)– No preliminary amendments

• File Petition

• Pay Fee (if invention not exempted)

Accelerated Examination• Claims

– 3 or Less Independent – 20 or Less Total

• Claims Directed to Single Invention

• Cannot Argue Patentability of Dependent Separate from Independent Claims During Appeal!

• Interviews– Agree to interview even

before 1st Office Action– Restriction- oral election

Accelerated ExaminationSearch Statement and Examination Support Document (ESD)•Need to conduct a search before filing and describe search methods

•File IDS of references found

•Each Reference- identify all limitations from claims disclosed in the reference

•Detailed Explanation on Patentability

•Support Showing for Each Limitation

•Utility- Concise Explanation

•Identify Disqualified Prior Art Under 35 USC 103(c)

Accelerated ExaminationFee•$130•No Fee for Inventions Directed to:

– Environment– Energy– Anti-terrorism– Superconductivity

•Petition Dismissed– Omitted Items

Accelerated Examination- Prosecution

• General– Goal:12 months to allowance, final OA, RCE, or abandonment

– Failure to meet goal is not petitionable nor appealable– Examiner begins examination within two weeks

• Restriction Requirements– Examiner will telephone applicant with restriction requirement

– Applicant must elect w/o traverse by telephone– Special status for continuing apps must be petitioned

individually

Accelerated Examination- Prosecution

• Interviews– Examiner telephones applicant to discuss any rejections

– If interview does not result in allowance, OA is mailed

• Substantive Office Actions– One month to reply to non-final OA, or abandonment

– No extensions of time permitted– USPTO has conference prior to mailing any OA (same as for pre-appeal

brief review)

• Appeal– Appeal not accelerated but post-appeal prosecution is accelerated– RCE will delay disposition, but the prosecution remains accelerated

Prioritized Examination (AIA)

• Goals – 12 months to disposition – 1st OA within 4 months

• Significantly Fewer Requirements than Accelerated Examination– For Example- No requirement to conduct a pre-filing search and ESD

• Limited to 10,000 patent applications per year (will reevaluate cap)

Prioritized Examination (AIA)

• Available for:– Utility applications– Plant applications– RCEs (including §371 nationalizations) (but only 1st RCE)– CON, CIP, DIV, bypass CONs

– Regardless of whether parent application had "prioritized" status

• Not available for:– Design applications– Reissue applications– §371 nationalizations – newly filed– Reexamination

Prioritized Examination (AIA)• Filing Requirements

– Certification and request form PTO/SB/424

– Fees Prioritized Examination Fee

($4800; $2400 small entity) Processing fee ($130) Filing, Search, Examination Publication Fee

– Claim Limits 4 independent, 30 Total No Multiple Dependent

– File electronically

Prioritized Examination (AIA)• Expedited prosecution

– Goal: 12 months to allowance, final OA, Appeal, RCE, or abandonment

– Placed on examiner’s special docket– Normal time periods for reply– Extensions of time terminate priority status– Amendments outside of claim number

limitations terminate priority status– Priority does not continue through Appeal,

Interference, or after filing RCE

Prioritized Examination (AIA)• Statistics

Patent Prosecution Highway• An application with claims determined to be patentable in an

Office of First Filing (OFF) may be eligible to go through an accelerated examination in an Office of Second Filing (OSF).– OSF uses search and examination results of OFF

• Claims determined to be patentable in a PCT also apply (Written Opinion; Int. Prelim Report on Patentability)– Test basis: JPO, EPO, KIPO, APO, ROSPATENT, SPTO– Called PCT-PPH program

• Direct claim of priority not necessary– E.g., a bypass con that claims benefit to a PCT application, which

PCT application claims priority to application A filed with the OFF– When a claim of application A is considered allowable, the bypass

con is eligible for PPH

Patent Prosecution Highway

Requirements:• Application to be accelerated must have a qualifying

relationship to the OFF/PCT application• At least one claim in the OFF/PCT application must

be indicated as patentable• All of the claims in the application must "sufficiently

correspond" to the claims in the OFF/PCT application– “sufficiently correspond” if scope is same or similar– Commentators note that this is the difficult part in practice– Basically, copy the claims in the OFF/PCT application– Perhaps suggest Examiner Amendment

• Substantive examination for the application cannot have already started (No OA)

Patent Prosecution Highway

• Procedure: – Submit request to enter PPH by EFS

No petition fee– Submit copies of all actions from OFF

applications with allowable claims– Submit IDS and copies of documents it lists– Submit claims correspondence table– if PPH request is not granted there is one

chance to fix any problems in the request– when request granted (usually within 2 months),

examination is accelerated– examined 2-3 months after PPH request granted

Patent Prosecution Highway

Patent Prosecution Highway

• Benefits:– Reduced pendency

Examined before other categories of apps (except special status and accelerated examination)

25% first action allowance– Greater success

~92% allowance rate– Reduced costs

Average 1.7 actions per disposal

First Action Interview Pilot Program• Opportunity to advance through prosecution by discussing

the case with the Examiner before any rejections• Makes grant of interview before 1st OA non-discretionary

– Distinguish from MPEP 713.02 re: discretionary interview

• Examiner supplies search and pre-interview communication prior to interview

• Not Available at this Time, but Probably in the Future– Previously extended through November 16, 2012– Web page- “A notice announcing the extension of the pilot

program beyond November 16, 2012 will be issued in due course.”- No notice yet.

First Action Interview Pilot Program• Previous Requirements:

– Utility application or §371 nationalization (no reissues)

– Request must be filed prior to 1st OA– Claim limitation: 3 independent, 20 total, no

multiple dependent– Preliminary amendment allowed to fix claims– Single invention – elect without traverse or

withdraw from program

First Action Interview Pilot Program• File request electronically• 1 month to fix any errors and comply with requirements (not extendable)• Application not advanced out of turn• Examiner conducts prior art search• Examiner allows claims, schedules interview (minor amendments) OR

provides pre-interview communication – Includes citations to prior art references– Includes identification of any rejections and/or objections if at least one claim

is not allowable– 1 month to respond

• Amendments between communication and 1st OA (if any) entered at Examiner’s discretion

• Applicant can choose whether to have the interview– File request to not have interview OA and 1 month to respond– File reply (pre-interview communication treated as OA), or– Schedule the interview (w/in 60 days) and file proposed amendments or

remarks

First Action Interview Pilot Program• Interview

– Be prepared to discuss:– Assist examiner in understanding invention– Establish the state of the art– Patentable features of claimed invention

– If agreement, allowance– If no agreement, OA entered

– 1 month to respond; limited extensions of time– Applicant can choose to convert proposed amendments

into reply

Comparison- Historical DataPTMS AE PE FAI PPH

Disposition Goal

12 months 12 months

Disposition Actual (40 months avg)

10 months (as of 2/2009)

5.93 months

Time to 1st OA (22 months avg)

2.0 months 22 months 6 months

1st OA allowance rate

43% (as of 4/9/2012) 35% 25%

Allowance rate(51% avg)

64% (at disposition) 51% (at disposition)

92%

Additional cost None $130 petition fee + cost for search and support document

$4800 PE fee + $130 petition fee

None Cost to prepare claim correspondence table, office actions, translations

Cost savings Fewer OAs Fewer OAs – 1.7 (2.5 avg)

Risks/disadvantages

- Additional prosecution record- Shortened periods to reply, no extensions

Petition separately for RCE- PE ends at appeal

Shortened periods to reply, limited extensions

Additional Benefits

Post appeal prosecution and RCE remain accelerated

-Reduced prosecution record

Reduced prosecution record

Speeding Up Examination Summary• Patent Prosecution Highway (PPH)

– Use if have good search results.

• Petition to Make Special (PTMS) – Use if you satisfy age and/or health requirements.

• Prioritized Examination (PE) – Use if money is not a problem.

• First Action Interview (FAI) – Not available, but consider using when extended again

(interview early/often as a general practice).

• Accelerated Examination (AE) – Not worth it.

One Potential Filing Strategy

USPTO

Prioritized Examination

File 1st OA

2 Months

Final Disposition

6 Months

ForeignFiling

1 Year

EPO

JPO

SIPO

PPH

PCT

Not PatentableNot PatentablePositive OAPositive OA• Benefits– PE expense offset by not

filing PCT– Prosecution Savings– Faster Foreign Prosecution– Avoid US IDS Problems &

Cost

$ 4,800-$2,800$,2,000

PE Fee

PCT Fee

Another Potential Filing Strategy

USPTO

Prioritized Examination

File 1st OA

2 Months

Final Disposition

6 Months ForeignFiling

1 Year

EPO

JPO

SIPO

• Benefits– Have a legitimate

search to base foreign filing decision, especially with CPC

– Avoid PCT Fees

File

File EPO 1st

Speeding It Up atthe USPTO

July 23, 2013

Copyright 2013 Woodard, Emhardt, Moriarty, McNett & Henry LLP