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Speeding It Up at the USPTO

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Presentation on theme: "Speeding It Up at the USPTO"— Presentation transcript:

1 Speeding It Up at the USPTO
July 2013 July 23, 2013

2 Speeding Up Examination

3 Speeding Up Examination
Petition to Make Special Accelerated Examination Prioritized Examination Patent Prosecution Highway First Action Interview Pilot Program

4 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 Green Technology- pilot program closed Now need to use other ways, e.g., Accelerated Examination, Patent Prosecution Highway, or Prioritized Examination

5 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!

6 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!

7 Accelerated Examination
Goal: 12 months to disposition Available for Utility applications Design applications (MPEP (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

8 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)

9 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

10 Accelerated Examination
Search 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)

11 Accelerated Examination
Fee $130 No Fee for Inventions Directed to: Environment Energy Anti-terrorism Superconductivity Petition Dismissed Omitted Items

12 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

13 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

14 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)

15 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

16 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

17 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

18 Prioritized Examination (AIA)

19 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

20 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)

21 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

22 Patent Prosecution Highway

23 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

24 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 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.

25 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

26 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

27 First Action Interview Pilot Program
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

28 Comparison- Historical Data
PTMS AE PE FAI PPH Disposition Goal 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 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

29 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.

30 One Potential Filing Strategy
Prioritized Examination PCT $ 4,800 -$2,800 $,2,000 PE Fee PCT Fee 1st OA 2 Months Final Disposition 6 Months Foreign Filing 1 Year File USPTO Positive OA PPH Not Patentable Benefits PE expense offset by not filing PCT Prosecution Savings Faster Foreign Prosecution Avoid US IDS Problems & Cost EPO JPO SIPO

31 Another Potential Filing Strategy
Foreign Filing 1 Year EPO File File EPO 1st Prioritized Examination 1st OA 2 Months Final Disposition 6 Months File USPTO Benefits Have a legitimate search to base foreign filing decision, especially with CPC Avoid PCT Fees SIPO JPO

32 Speeding It Up at the USPTO
July 23, 2013 Copyright 2013 Woodard, Emhardt, Moriarty, McNett & Henry LLP

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