1. Prosecution Luncheon Patent August 2016

2. Calendar Indy Bar THE PATENTS OMBUDSMAN PROGRAM
At the Bar with the Bench- Tonight
5-7 PM
Tomlinson Tap Room (City Market)
Patents and Trademarks in Europe post BREXIT: What Now and What's Next for the European Unitary Patent and Unified Patent Court (UPC) after BREXIT?
Sept 29, 2016, Noon- 1 PM
ISBA
THE PATENTS OMBUDSMAN PROGRAM
August 23, 2016, 10:30-11:30 AM

3. Automated Interview Request (AIR)
Authorize
Internet
Communication
Request
Interview
Online

4. USPTO Internet Authorization for Internet Communication (PTO/SB/439)
Allows Transmission proposed claim amendments for interview via .
Consider filing with application when originally filed.

5. Changes to Accelerated Examination
Changes Generally Made to Harmonize with AIA
Pre-Exam Search
Need to list CPC instead of USPC
Accelerated Examination Support Document (AESD)
Need to now identify prior art disqualified AIA 102(b)(2)(C) (common ownership)
Reply by Applicant
Shortened time to reply extended from 30 days to 2 months
Complete Application Upon Filing
Now precludes any petition under 37 CFR 1.46(b)(2) to designate a person with sufficient proprietary interest as the applicant.

6. 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

7. 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 (CPC)
No preliminary amendments
File Petition
Pay Fee (if invention not exempted)

8. Accelerated Examination
Claims
3 or Less Independent
20 or Less Total
Claims Directed to Single Invention
Cannot Argue Patentability of Dependent Claims Separate from Independent Claims During Appeal!
Interviews
Agree to interview even before 1st Office Action
Restriction- oral election

9. 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 Pre-AIA 35 USC 103(c) or AIA 35 USC102(b)(2)(C)

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

11. 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

12. Accelerated Examination- Prosecution
Interviews
Examiner telephones applicant to discuss any rejections
If interview does not result in allowance, OA is mailed
Substantive Office Actions
Two months 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

13. Options for Responding to Final Office Actions
Standard
Abandon
Continuation or Divisional Application
Full Appeal
Request for Continued Examination (RCE)
Relatively New
Request for Pre-Appeal Brief Review
After Final Consideration Pilot Program 2.0
Post Prosecution Pilot (P3)

14. Pre-Appeal Review
Paperwork
Notice of Appeal + Fee ($800)
Pre-Appeal Brief Request Review Form
Remarks- 5 pages

15. Pre-Appeal Review
Grounds
Clear errors in the examiner's rejections; or
Examiner's omissions of one or more essential elements needed for a prima facie rejection.

16. Pre-Appeal Brief Review
Pre-Appeal Conference Panel (at least include)
Supervisor (SPE)
Examiner of Record
Assembled by administrative assistant in Technology Center
No interview before panel’s decision

17. Pre-Appeal Brief Review
Outcome (Findings)
The application remains under appeal because there is at least one actual issue for appeal.
Prosecution on the merits is reopened and an appropriate Office communication will follow in due course.
The application is allowed on the existing claims and prosecution remains closed.
The request fails to comply with the submission requirements and is dismissed.

18. After Final Consideration Program Pilot 2.0
Avoids the Expense of RCE’s
See,
Timing
Responses to Final Office Actions Filed From May 19, 2013 to September 30, 2016
Requirements (NO FEE)
Request for Consideration Under Pilot (PTO/SB/434)
Amendment to at least one independent claim that does not broaden it
Willing to participate in an interview

19. After Final Consideration Program Pilot 2.0

20. After Final Consideration Program Pilot 2.0
What does the Examiner Get?
Up to 3 Hours non-production time
10 day adjustment of docket management clock
Outcome
Examiner can deny request (file RCE)
Allow the application
Request interview
Need to conduct interview within 10 days
Otherwise back to filing RCE

21. New Post-Prosecution Pilot (P3)
Combines features
Pre-Appeal Brief Review Conference Pilot (Pre-Appeal)
After Final Consideration Pilot Program (AFCP)
Post-Prosecution Pilot (P3)
Submit Proposed After Final Amendment for Consideration by a Panel of Examiners
Opportunity to Present to Panel (in person/phone)
Panel Provide Brief Written Summary
Claim status
Reasoning for maintaining rejection
See,

22. New Post-Prosecution Pilot (P3)
Requirements
Utility/371 patent application (not Reissue, design and plant applications)
Final Office Action
Runs until (earlier of)
January 12, 2017 or
1,600 Requests.
Each technology center will shutdown P3 after 200 requests.

23. New Post-Prosecution Pilot (P3)
P3 Forms Needed
A Request Form filed via EFS-Web (PTO/SB/444)
A response with five (5) pages of arguments max
Optional- a proposed non-broadening amendment to one or more claim(s).
NO FEE REQUIRED.
Timing- Before 2 Months

24. New Post-Prosecution Pilot (P3)
Requirements
A Request Form filed via EFS-Web
Within two (2) months of final OA
Prior to filing a notice of appeal.
A statement (in Request Form)- Applicant is willing and available to participate in a P3 conference

25. New Post-Prosecution Pilot (P3)
P3 Requirements
For the same final OA, cannot have filed
Pre-Appeal Request
AFCP Request
Once a P3 Request has been accepted, no additional response(s) under 37 CFR will be entered, unless requested by the examiner.
Impermissible to request to participate in the Pre-Appeal program or request consideration under AFCP once a P3 request accepted.

26. New Post-Prosecution Pilot (P3)
Non-Compliant/Untimely P3 Request
Request treated in the same manner it would treat any after final response absent the P3 Request.
No conference will be held.
The next communication issued by the Office will indicate:
the reason why the P3 request was found to be untimely or otherwise non-compliant;
the result of the treatment under 37 CFR of the response and any proposed amendment; and
the time period for the applicant to take further action.

27. New Post-Prosecution Pilot (P3)
P3 Process Terminated Before Decision
Notice of Appeal
Request for Continued Examination (RCE)
Express Abandonment
Request for the Declaration of Interference
Derivation Proceeding Request
Note:
If the AFCP, Pre-Appeal request or any other after final amendment is filed after the filing and acceptance of a P3 request, an Advisory Action will be mailed indicating that the AFCP, Pre-Appeal or any other after final amendment is not being considered since applicants have participated in the P3 pilot.

28. New Post-Prosecution Pilot
Process for Compliant P3 Request
Examiner Calls- schedule interview within 10 Days
Interview/conference- 20 minute presentation
Petitionable arguments not considered
No Asking Examiner(s) Questions (but they can)
Decision informed in writing.
Examiner Conference Panel
Examiner of Record
If examiner is a junior examiner, the signing primary examiner may optionally attend.
Supervisor (SPE)
Other Primary Examiner.

29. New Post-Prosecution Pilot (P3)
Notice of Decision
Final Rejection Upheld
Status of claim amendments
Time period to respond
Allowable Application
Reopen Prosecution

30. New Post-Prosecution Pilot (P3)
Timing- Final Rejection Upheld
Must File RCE or Notice of Appeal (or CON)
AFCP and Pre-Appeal Request not allowed.
Later of:
Mailing Date of Decision
Final Office Action
Extensions of Time Allowed
Can’t exceed 6-month statutory bar deadline

31. Comparison of After Final Options
Fees
Who is Reviewing?
Interview?
Can You Amend?
AFCP
None
Examiner in Charge of Case
Yes, must be willing to participate
Yes, must have at least 1 non-broadening amendment to independent claim
Pre-Appeal Brief Review
$800 (large) Notice of Appeal Fee
Panel (3, typically)
-SPE
-Examiner
-Another Primary No P3
Panel (3)
Yes, but one way conversation with Panel asking questions
Yes, optional non-broadening amendment(s)

32. Comparison of After Final Options
Remarks Length
Timing of Filing
Impact on Statutory Deadline
Decision Maker
AFCP
As long as you want (regular response)
Before 6-month statutory deadline
Still must do something before 6-month deadline
Examiner in Charge of Case
Pre-Appeal Brief Review
5 Pages, but can refer to prior arguments
Now subject to appeals deadline
3 Members of Panel P3
Must be filed within 2 months of transmission date of Final Office Action
3 Members of Panel, but might have issue if the examiner in charge is a junior examiner

33. Examiner Close to Allowing Case? Examiner Not Willing to Allow Case?
What to Do When You Have a Final Office Action Do Not Want to File an RCE
Examiner Close to Allowing Case?
File AFCP Request to sweeten deal without RCE
Examiner Not Willing to Allow Case?
Not Ready to Appeal (no prior RCE)
File P3 Request
Ready to Appeal (prior RCE)
File Pre-Appeal Brief Review Request
One Strategy to Avoid/Reduce RCE Usage

34. Prosecution Luncheon Patent August 2016