3Speeding Up Examination Petition to Make SpecialAccelerated ExaminationPrioritized ExaminationPatent Prosecution HighwayFirst Action Interview Pilot Program
4Petition 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) --MPEPGreen Technology- pilot program closedNow need to use other ways, e.g., Accelerated Examination, Patent Prosecution Highway, or Prioritized Examination
5Petition to Make Special Petitions to Make Special are Still Available forAge- 65 or olderHealthNormal course of prosecution may result in applicant’s inability to assist prosecutionRequires proof but can request to keep information out of the public recordApplication advanced out of turnNo Fee!
6Petition to Make Special Age- 65 or olderForm- PTO/SB/130Signed byInventor with statement of age ORAttorney- retain evidence of age (e.g., copy of driver’s license)No Fee!
7Accelerated Examination Goal: 12 months to dispositionAvailable forUtility applicationsDesign applications (MPEP (a)(VIII)(A)Not available forPlant applicationsReissue applications§371 national stage applicationsReexamination proceedingsRCEs (unless previously granted special status); andPetitions to make special based on applicant’s health or age or under the PPH pilot program
8Accelerated Examination Filing Application for Accelerated ExaminationApplication must be "complete" and "in condition for examination"e.g., all required fees, oath/declaration of actual inventor, spec, claims, drawing, title, abstract, priority claimsFile electronicallyInclude suggested classification (class and subclass)No preliminary amendmentsFile PetitionPay Fee (if invention not exempted)
9Accelerated Examination Claims3 or Less Independent20 or Less TotalClaims Directed to Single InventionCannot Argue Patentability of Dependent Separate from Independent Claims During Appeal!InterviewsAgree to interview even before 1st Office ActionRestriction- oral election
10Accelerated Examination Search Statement and Examination Support Document (ESD)Need to conduct a search before filing and describe search methodsFile IDS of references foundEach Reference- identify all limitations from claims disclosed in the referenceDetailed Explanation on PatentabilitySupport Showing for Each LimitationUtility- Concise ExplanationIdentify Disqualified Prior Art Under 35 USC 103(c)
11Accelerated Examination Fee$130No Fee for Inventions Directed to:EnvironmentEnergyAnti-terrorismSuperconductivityPetition DismissedOmitted Items
12Accelerated Examination- Prosecution GeneralGoal:12 months to allowance, final OA, RCE, or abandonmentFailure to meet goal is not petitionable nor appealableExaminer begins examination within two weeksRestriction RequirementsExaminer will telephone applicant with restriction requirementApplicant must elect w/o traverse by telephoneSpecial status for continuing apps must be petitioned individually
13Accelerated Examination- Prosecution InterviewsExaminer telephones applicant to discuss any rejectionsIf interview does not result in allowance, OA is mailedSubstantive Office ActionsOne month to reply to non-final OA, or abandonmentNo extensions of time permittedUSPTO has conference prior to mailing any OA (same as for pre-appeal brief review)AppealAppeal not accelerated but post-appeal prosecution is acceleratedRCE will delay disposition, but the prosecution remains accelerated
14Prioritized Examination (AIA) Goals12 months to disposition1st OA within 4 monthsSignificantly Fewer Requirements than Accelerated ExaminationFor Example- No requirement to conduct a pre-filing search and ESDLimited to 10,000 patent applications per year (will reevaluate cap)
15Prioritized Examination (AIA) Available for:Utility applicationsPlant applicationsRCEs (including §371 nationalizations) (but only 1st RCE)CON, CIP, DIV, bypass CONsRegardless of whether parent application had "prioritized" statusNot available for:Design applicationsReissue applications§371 nationalizations – newly filedReexamination
16Prioritized Examination (AIA) Filing RequirementsCertification and request form PTO/SB/424FeesPrioritized Examination Fee ($4800; $2400 small entity)Processing fee ($130)Filing, Search, ExaminationPublication FeeClaim Limits4 independent,30 TotalNo Multiple DependentFile electronically
17Prioritized Examination (AIA) Expedited prosecutionGoal: 12 months to allowance, final OA, Appeal, RCE, or abandonmentPlaced on examiner’s special docketNormal time periods for replyExtensions of time terminate priority statusAmendments outside of claim number limitations terminate priority statusPriority does not continue through Appeal, Interference, or after filing RCE
19Patent 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 OFFClaims determined to be patentable in a PCT also apply (Written Opinion; Int. Prelim Report on Patentability)Test basis: JPO, EPO, KIPO, APO, ROSPATENT, SPTOCalled PCT-PPH programDirect claim of priority not necessaryE.g., a bypass con that claims benefit to a PCT application, which PCT application claims priority to application A filed with the OFFWhen a claim of application A is considered allowable, the bypass con is eligible for PPH
20Patent Prosecution Highway Requirements:Application to be accelerated must have a qualifying relationship to the OFF/PCT applicationAt least one claim in the OFF/PCT application must be indicated as patentableAll of the claims in the application must "sufficiently correspond" to the claims in the OFF/PCT application“sufficiently correspond” if scope is same or similarCommentators note that this is the difficult part in practiceBasically, copy the claims in the OFF/PCT applicationPerhaps suggest Examiner AmendmentSubstantive examination for the application cannot have already started (No OA)
21Patent Prosecution Highway Procedure:Submit request to enter PPH by EFSNo petition feeSubmit copies of all actions from OFF applications with allowable claimsSubmit IDS and copies of documents it listsSubmit claims correspondence tableif PPH request is not granted there is one chance to fix any problems in the requestwhen request granted (usually within 2 months), examination is acceleratedexamined 2-3 months after PPH request granted
23Patent Prosecution Highway Benefits:Reduced pendencyExamined before other categories of apps (except special status and accelerated examination)25% first action allowanceGreater success~92% allowance rateReduced costsAverage 1.7 actions per disposal
24First Action Interview Pilot Program Opportunity to advance through prosecution by discussing the case with the Examiner before any rejectionsMakes grant of interview before 1st OA non-discretionaryDistinguish from MPEP re: discretionary interviewExaminer supplies search and pre-interview communication prior to interviewNot Available at this Time, but Probably in the FuturePreviously extended through November 16, 2012Web page- “A notice announcing the extension of the pilot program beyond November 16, 2012 will be issued in due course.”- No notice yet.
25First Action Interview Pilot Program Previous Requirements:Utility application or §371 nationalization (no reissues)Request must be filed prior to 1st OAClaim limitation: 3 independent, 20 total, no multiple dependentPreliminary amendment allowed to fix claimsSingle invention – elect without traverse or withdraw from program
26First Action Interview Pilot Program File request electronically1 month to fix any errors and comply with requirements (not extendable)Application not advanced out of turnExaminer conducts prior art searchExaminer allows claims, schedules interview (minor amendments) OR provides pre-interview communicationIncludes citations to prior art referencesIncludes identification of any rejections and/or objections if at least one claim is not allowable1 month to respondAmendments between communication and 1st OA (if any) entered at Examiner’s discretionApplicant can choose whether to have the interviewFile request to not have interview OA and 1 month to respondFile reply (pre-interview communication treated as OA), orSchedule the interview (w/in 60 days) and file proposed amendments or remarks
27First Action Interview Pilot Program Be prepared to discuss:Assist examiner in understanding inventionEstablish the state of the artPatentable features of claimed inventionIf agreement, allowanceIf no agreement, OA entered1 month to respond; limited extensions of timeApplicant can choose to convert proposed amendments into reply
28Comparison- Historical Data PTMSAEPEFAIPPHDisposition Goal12 monthsDisposition Actual(40 months avg)10 months (as of 2/2009)5.93 monthsTime to 1st OA (22 months avg)2.0 months22 months6 months1st OA allowance rate43% (as of 4/9/2012)35%25%Allowance rate(51% avg)64% (at disposition)51% (at disposition)92%Additional costNone$130 petition fee + cost for search and support document$4800 PE fee + $130 petition feeCost to prepare claim correspondence table, office actions, translationsCost savingsFewer OAsFewer OAs – 1.7 (2.5 avg)Risks/disadvantages- Additional prosecution record- Shortened periods to reply, no extensionsPetition separately for RCE- PE ends at appealShortened periods to reply, limited extensionsAdditional BenefitsPost appeal prosecution and RCE remain accelerated-Reduced prosecution recordReduced prosecution record
29Speeding Up Examination Summary Patent Prosecution Highway (PPH)Use if have good search results.Petition to Make Special (PTMS)Use if you satisfy age and/or health requirements.Prioritized Examination (PE)Use if money is not a problem.First Action Interview (FAI)Not available, but consider using when extended again (interview early/often as a general practice).Accelerated Examination (AE)Not worth it.
30One Potential Filing Strategy Prioritized ExaminationPCT$ 4,800-$2,800$,2,000PE FeePCT Fee1st OA2 MonthsFinalDisposition6 MonthsForeignFiling1 YearFileUSPTOPositive OAPPHNot PatentableBenefitsPE expense offset by not filing PCTProsecution SavingsFaster Foreign ProsecutionAvoid US IDS Problems & CostEPOJPOSIPO
31Another Potential Filing Strategy ForeignFiling1 YearEPOFileFile EPO 1stPrioritized Examination1st OA2 MonthsFinalDisposition6 MonthsFileUSPTOBenefitsHave a legitimate search to base foreign filing decision, especially with CPCAvoid PCT FeesSIPOJPO
32Speeding It Up at the USPTO July 23, 2013Copyright 2013 Woodard, Emhardt, Moriarty, McNett & Henry LLP