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The Accelerated Examination Webinar Will Begin Shortly!

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 speakers on your computer. In order to hear the accompanying audio, you will need a soundcard in your computer

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The Accelerated Examination Webinar Will Begin Shortly!

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  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 speakers on your computer. In order to hear the accompanying audio, you will need a soundcard in your computer and your speakers enabled and powered on.

  2. Andrew Faile Director Technology Center 2600 Rob Clarke Deputy Director Office of Patent Legal Administration Today’s Presenters

  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 “E-mail Presenters” link at the bottom of your screen • Similar questions will be aggregated together • All registered attendees will receive an e-mail 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. Andrew Faile Director Technology Center 2600 Welcome and Background Information

  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. 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 Must follow specific procedures that will significantly shorten the prosecution process Accelerated Examination:New Practitioner Responsibilities

  10. Rob Clarke Deputy Director Office of Patent Legal Administration

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

  12. August 2006 MPEP 708.02(a) (8th Edition, Rev. 5) reflects these changes Revised AE Program and Petition to Make Special - Procedures Overview See “Changes to Practice for Petitions in Patent Applications to Make Special and for Accelerated Examination, 71 Fed. Reg. 36323 (June 26, 2006) (notice)” http://www.uspto.gov/web/offices/com/sol/notices/71fr36323.htm

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

  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: http://www.wipo.int./standards/en/pdf/04-02-01.pdf • 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: . http://www.uspto.gov/web/patents/searchtemplates/searchtemplates.htm

  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: http://www.uspto.gov/web/patents/accelerated/ • 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 email: AcceleratedExam@uspto.gov • Inquiries by telephone: Office of Patent Legal Administration (OPLA) at (571) 272-7701, or Pinchus M. Laufer at (571) 272-7726

  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 • 1-866-217-9197 M-F 6am to Midnight ET • AE Dedicated web page assistance • http://www.uspto.gov/web/patents/accelerated • 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

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