1. The Accelerated Examination Webinar Will Begin Shortly!
The audio portion of this event will be streamed
across the Internet and will be available through the
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2. Today’s Presenters Andrew Faile Rob Clarke Director
Technology Center 2600
Rob Clarke
Deputy Director
Office of Patent Legal
Administration

3. Some Housekeeping Items
Today’s seminar is scheduled to last for 1 and ½ hours
Audience members may submit questions to the presenters at any time using the “ Presenters” link at the bottom of your screen
Similar questions will be aggregated together
All registered attendees will receive an with a link to download the slides from today’s webinar
This webinar is being recorded and will be available for playback within 48 hours of the conclusion of this event

4. Agenda Welcome & Background Information
Review of New Accelerated Examination Process
Responsibilities of USPTO
Responsibilities of Practitioners
Accelerated Examination and EFS-Web
Q&A

5. Welcome and Background Information
Andrew Faile
Director
Technology Center 2600

6. The New Accelerated Examination Program: What It Does
Allows applicants to obtain a final decision on an application within 12 months
Created for situations where prolonged pendency could doom the patent application and/or commercial viability
USPTO examined its current process to identify workflow bottlenecks
USPTO is taking on many new burdens as a result of this re-engineering process
Requires that IP practitioners take on new responsibilities as well

7. Accelerated Examination: Benefits to Applicants
Expedited handling throughout the entire patent application process:
Office of Initial Patent Examination (OIPE)
Examination
Post-appeal process
Earlier and better interactions with the examiner
More participation in clarifying and focusing the issues during the prosecution

8. Accelerated Examination: New USPTO Responsibilities
Application will be promptly taken up for action with special examining procedures
Examiner will consider the search and 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
A conference will be conducted in the USPTO to ensure the viability of the rejection(s)
Conference will occur before final Office Action is mailed .

9. Accelerated Examination: New Practitioner Responsibilities
Must follow specific
procedures that will
significantly shorten
the prosecution
process
Must use EFS-Web
to file patent application
and use the appropriate
document designation
Must file specific fees
in order to be considered
under the new program

10. Rob Clarke
Deputy Director
Office of Patent Legal
Administration

11. Revised AE Program and Petition to Make Special - Procedures Overview
New AE program in effect
since August 25, 2006
GOAL: Achieve final decision
by examiner within 12 months
of application filing date
August

12. Revised AE Program and Petition to Make Special - Procedures Overview
MPEP (a) (8th Edition, Rev. 5) reflects these changes
August 2006
See “Changes to Practice for Petitions in Patent Applications to Make Special and for Accelerated Examination, 71 Fed. Reg (June 26, 2006) (notice)”

13. Revised AE Program and Petition to Make Special - Procedures Overview
The new requirements apply to almost all petitions to make special
Establishes a uniform practice

14. Patent Prosecution Highway (PPH) Pilot Program
Exceptions
Health
Age
Patent Prosecution Highway (PPH) Pilot Program

15. Revised AE Program and Petition to Make Special - Procedures Overview
If the petition meets the requirements set forth in the notice:
The application will be granted special status under the revised AE program
The new processing and examination procedures will apply to the application

16. Revised AE Program and Petition to Make Special – 12 Month Goal
The 12-month goal is successfully achieved when one of the following final dispositions occurs:
Notice of Allowance
Final Office action
Notice of appeal
Request for Continued Examination (RCE)
Abandonment

17. Revised AE Program and Petition to Make Special – Application Eligibility
Any non-reissue utility or design application filed under 35 U.S.C. 111(a) on or after the effective date is eligible
Plant applications
International applications
(including 371 National Stage) Reissue applications
are NOT Eligible

18. Revised AE Program and Petition to Make Special – Filing Requirements
The application must be filed with:
The petition to make special (form PTO/SB/28 recommended)
The 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)). .

19. Revised AE Program and Petition to Make Special – Filing Requirements
The application must be complete under § 1.51 and in condition for examination upon filing:
Example: application must include the filing fees and an executed oath or declaration under § 1.63

20. Revised AE Program and Petition to Make Special – Filing Requirements
Application, petition, and required fees must be filed electronically via EFS-Web
EFS-Web system can now handle filing of sequence listings, large text files, and computer program listings
Must be a registered EFS filer to submit follow-on papers
Check EFS-Web materials to ensure preparation of PDF images compatible with EFS-Web system .

21. Revised AE Program and Petition to Make Special – Filing Requirements
The application must contain:
3 or fewer independent claims
20 or fewer total claims
The application must not contain any multiple dependent claims
The claims must be directed to a single invention

22. Andrew Faile
Director
Technology Center 2600

23. Role of Special Program Examiners (SPREs) in the AE Program
SPREs are the Deciding Officials on AE Petitions
Review petitions for compliance with the AE Program

24. Role of Special Program Examiners (SPREs) in the AE Program: Outcomes
Petition Dismissed
SPRE will point out noted defects
Applicant has one chance to perfect the petition
Petition Denied
SPRE will point out defects that cause the petition to be denied and application returned to the art unit queue
Petition Granted
Application examined under the AE program

25. Revised AE Program and Petition to Make Special – Filing Requirements
The petition (form PTO/SB/28 recommended) must accompany the application and 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
An accelerated examination support document (AESD).
Applicant should contact the Office if a decision is not received by applicant after two months from the filing of the petition .

26. Deficiencies Resulting in Denial of the 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 will be reviewed to verify that it was complete for examination on filing .

27. Deficiencies Resulting in Dismissal of the AE Petition
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 .

28. Pre-Examination Search Requirements
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 should encompass disclosed features that may be claimed .

29. Pre-Examination Search Requirements
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 .

30. Evaluating the Pre-Examination Search
Pre-Examination Search must include the following sources, unless the applicant can specifically justify not searching a particular source:
US Patents and published patent applications
Classified search in the class and subclass where the claimed invention is most likely to be classified in the current US Patent Classification system (USPC)
Text search that covers the subject matter of the claims using terms recognized in the art .

31. Evaluating the Pre-Examination Search
Foreign patent documents
Text search similar to that provided for US patents and published patent applications
Includes the sources required under the PCT minimum documentation requirements, located at:
May be completed using the USPTO Universal Public Workstation (UPWS) in the USPTO Public Search Room Facility and Patent and Trademark Depository Libraries, or through other available commercial database providers .

32. Evaluating the Pre-Examination Search
Non-patent literature (NPL)
Search of the suggested NPL resources from the current USPTO search templates, including any special tools (e.g. nucleic acid or protein sequence searching) found at: .

33. Evaluating the Pre-Examination Search
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 .

34. Revised AE Program and Petition to Make Special: Filing Requirements
Accelerated Examination Support Document (AESD) 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 claim limitation disclosed in the references is found
A detailed explanation of how each claim is patentable over the reference
A concise statement of utility of the invention
A showing of support for each claim limitation in the specification and any parent application, including any means-plus-function limitations
An identification of any cited references that may be disqualified as prior art under 35 U.S.C. 103(c) .

35. Evaluating the Accelerated Examination Support Document (AESD)
The USPTO will adopt a rule of reason when evaluating the AESD
An identification of where each claim limitation is found in the reference
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 the relevant representations of the limitation in the reference
The identification will be deemed to be sufficient unless the correspondence is so deficient that it would materially effect examination of the application .

36. Revised AE Program and Petition to Make Special – Processing & Examination Procedures
Once application is granted special status, the application will be promptly taken up for action, with special examining procedures set forth in the Notice
The examiner will consider the AE Support Document and conduct a complete prior art search

37. Revised AE Program and Petition to Make Special – Processing & Examination Procedures
Prior to mailing any first Office action rejecting claims,
An interview will be conducted, unless an interview is deemed unlikely to overcome the rejection
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

38. Revised AE Program and Petition to Make Special – Processing & Examination Procedures
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) .

39. Revised AE Program and Petition to Make Special – Processing & Examination Procedures- Applicant’s Response
Any reply must be:
Filed via EFS-Web
Complete, fully responsive
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
The above requirements are imposed in order to be able to complete the examination within 12 months .

40. Revised AE Program and Petition to Make Special – Processing & Examination Procedures- Applicant’s Response
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
Presents claims requiring an updated AE Support Document, which is not submitted .

41. Revised AE Program and Petition to Make Special –Appeal Procedures
While the mailing of 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
Not request a pre-appeal brief conference (which would not be of value because a conference would already have been conducted) .

42. Revised AE Program and Petition to Make Special –12 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
Any failure to meet the goal, or other issues relating to this goal, are neither petitionable, nor appealable

43. Revised AE Program and Petition to Make Special – Pointers
An applicant with a pending application can enter this program through the filing of a continuation
Do not file a preliminary amendment. Incorporate the new text into the application as filed
The explanation of patentability must discuss obviousness as well as anticipation
The sample search on the website shows level of documentation required in reporting the search

44. Revised AE Program and Petition to Make Special – Additional Information
Additional information is available on the USPTO’s web site at:
The Sample Search Document may be particularly helpful to searchers for providing information in the proper format for submission to the Office
See especially the “Guidelines for Applicants” document
For inquiries by
Inquiries by telephone: Office of Patent Legal Administration (OPLA) at (571) , or Pinchus M. Laufer at (571)

45. Accelerated 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)

46. Accelerated Examination & EFS-Web
Tony Uranga
EFS-Web Outreach Team

47. Filing Through EFS-Web
AE application and all follow-on documents must be filed through EFS-Web
The Accelerated Examination petition is filed with new Utility or Design Application
Fees must be paid at time of submission (same calendar day)
AE submission requires 3 additional documents in addition to standard patent and design application documents (specification, claims, abstract, oath/declaration, transmittal, IDS)

48. AE Document Descriptions
AE documents descriptions for new application:
Petition for 12-month Accelerated Examination (SB-28 recommended)
Statement of pre-examination search
Accelerated Examination support document
Found in General Transmittal or Petition Category
AE document descriptions for follow-on submissions:
Transmittal amendment/reply Accelerated Examination
Found in General Transmittal category

49. E-Commerce Assistance
Patent Electronic Business Center can assist with EFS-Web related questions on Accelerated Examination
M-F 6am to Midnight ET
AE Dedicated web page assistance
Tutorials, guidelines, examples, FAQ’s

50. The e-Filing Process
Can File AE applications as a Registered or Unregistered user
Only Registered users can file follow-on papers electronically
Filing process is exactly the same as filing a new utility or new design application
The 3 required AE documents
Additional petition fee of $130 is required

51. The e-Filing Process No fee required for applications concerning:
Environmental quality
Energy
Counter-terrorism
Recommended that good image quality documents are submitted

52. Accelerated Examination: SB-28 Form
SB-28 Form is required when Submitting Under Accelerated Examination Program
Must use Version 2.0 of the form and Adobe Reader 7.0.8
Version number is located on lower left hand corner of each page

53. Filing as a Registered User
Select Design or Utility for AE submission

54. Entering Bibliographic Data
Enter Bibliographic Data

55. Entering Bibliographic Data
Enter Bibliographic Data
Enter Customer Number

56. Attach, upload and validate documents
Attach and Validate
Attach, upload and validate documents

57. Browse to Attach the Documents
Browse to required AE documents

58. AE Required Documents: How to Attach
Select Petition &
General Transmittal
Categories
Select required AE documents

59. AE Follow-on Required Documents: How to Attach
General Transmittal
Category

60. AE Follow-on Required Documents: How to Attach
General Transmittal
Category
Select required AE documents Follow-on

61. Future EFS-Web and AE Enhancements
EFS-Web is working on creating a separate Accelerated Examination filing process
A specific Acceleration Examination selection button will be made available to e-Filers
Accelerated Examination required documents descriptions will be hard coded at Attach Document screen
E-Filers must attach the required AE documents in order to continue with submission
Possible 2007 spring release

62. Additional Training Opportunities
EFS-Web Basic Training Available:
November 7
November 28
EFS-Web Advanced Training Available:
November 3
November 9
November 16
November 30
Please Register for training events at:
Schedule Training at:

63. Revised AE Program and Petition to Make Special: Q&A?