Accelerating Patent Prosecution

Accelerating Patent Prosecution Thursday, October 18, 2012

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

Petition to Make Special MPEP 708.02 • Applicant is 65 or older – “Statement by one named inventor that he/she is 65” or more – Requires proof of age or statement from practitioner • Applicant’s health – Normal course of prosecution may result in applicant’s inability to assist prosecution – Requires proof • Application advanced out of turn • No fee required

Accelerated Examination MPEP 708.02(a) • Goal: 12 months to disposition • Available for – Utility applications – Design applications (MPEP 708.02(a)(VIII)(A)

• Not available for – – – – – –

Plant applications Reissue applications §371 national stage applications Reexamination proceedings RCEs (unless the previously granted special status); and Petitions to make special based on applicant’s health or age or under the PPH pilot program

Accelerated Examination MPEP 708.02(a) •

Filing petition: – Fee ($130) (except for environment, energy, anti-terrorism, or superconductivity inventions) – 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) – 3 independent claims; 20 total; no multiple dependent claims – No preliminary amendments – Statement of agreement:  to have interview w/Examiner to discuss prior art/potential rejections with intent to resolve all patentability issues at that time  to elect by telephone interview, without traverse, if restriction required  not to argue patentability of any dependent claim separately on appeal

– Patentability search + support document

Accelerated Examination MPEP 708.02(a) • Pre-filing patentability search; describe search methods • Accelerated Examination Support document – IDS and references – Identification of all claim limitations disclosed in each reference, and where – Detailed explanation of how each claim is patentable over the cited references – Identify support for each claim limitation in the specification • Petition dismissed if any items omitted

Accelerated Examination MPEP 708.02(a) •

Expedited prosecution – 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 – Examiner will telephone applicant with restriction requirement – Applicant must elect w/o traverse by telephone – Special status for continuing apps must be petitioned individually – Examiner telephones applicant to discuss any rejections – If interview does not result in allowance, OA is mailed

– 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 not accelerated but post-appeal prosecution is accelerated – RCE will delay disposition, but the prosecution remains accelerated

Prioritized Examination (AIA) MPEP 708.02(b) • • •

Goal: 12 months to disposition, 1st OA within 4 months Track I of Three Track Initiative Current cap of 10,000 requests granted/year (may change upon evaluation of program) – 4239 grants as of June 18, 2012

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Available for: – – – –

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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 – File separate request for each

Not available for: – – – –

Design applications Reissue applications §371 nationalizations – newly filed Reexam

Prioritized Examination (AIA) MPEP 708.02(b) •

Filing: – Certification and request form PTO/SB/424 – Filed with new application – Filed concurrent with or subsequent to filing RCE (but before 1st OA) – PE fee ($4800; $2400 small entity) and processing fee ($130) – All fees (including filing, search, exam, publication) paid concurrent with request – Claim limitation: 4 independent, 30 dependent, no multiple dependent claims – No support doc required, however, “applicants should consider one or more of the following”: – Acquiring good knowledge of the state of the prior art – Filing application in condition for examination (same as AE) – Filing replies completely responsive to OAs – Being prepared to conduct interviews with examiner – File electronically

Prioritized Examination (AIA) MPEP 708.02(b) • Expedited prosecution – Goal: 12 months to allowance, final OA, Appeal, RCE, or abandonment – Placed in 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

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 713.02 re: discretionary interview • Examiner supplies search and pre-interview communication prior to interview • 2100 requests so far • Extended through November 16, 2012 – Office currently analyzing feedback to July 9, 2012 request for comments

First Action Interview Pilot Program • 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

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

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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

First Action Interview Pilot Program • Interview – 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

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 – ex: 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

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)

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

Patent Prosecution Highway The U.S. application must be: •

a Paris Convention application which either validly claims priority to one or more applications filed in a qualifying OFF, or validly claims priority to a PCT application that contains no priority claims;

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a national stage application under the PCT, which PCT application validly claims priority under sec. 365(b) to an application filed in the OFF; validly claims priority to another PCT application that contains no priority claim; or contains no priority claim;

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a bypass application filed under 35 USC 111(a) that claims benefit under 35 USC 120 to a PCT application, which PCT application 1. Claims priority under 35 USC 365(b) to an application filed with the OFF, or 2. Claims priority under 35 USC 365(b) to a PCT application that contains no priority claims, or 3. contains no priority claims;

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a national stage entry of the corresponding PCT application;

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a national stage entry of another PCT application which claims priority to the corresponding PCT application;

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a national application that claims domestic/ foreign priority to the corresponding PCT application;

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a national application which forms the basis for the priority claim in the corresponding PCT application;

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a continuing application of an OSF application that satisfies one of the conditions above; or

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if the USPTO is the OSF, a U.S. application that claims domestic benefit to a U.S. provisional application which forms the basis for the priority claim in the corresponding PCT application.

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

Comparison AE

PE

Disposition Goal

12 months

12 months

Disposition Actual (40 months avg)

10 months (as of 2/2009)

5.19 months

PTMS

FAI

PPH

1.64 months

22 months

6 months

43% (as of 4/9/2012)

Avg?

35%

25%

64% (at disposition)

51% (at disposition)

$130 petition fee + cost for search and support document

$4800 PE fee + $130 petition fee

Time to 1st OA (22 months avg) 1st OA allowance rate

Avg?

Allowance rate (51% avg)

Additional cost

None

Cost savings Risks/ disadvantages

- Additional prosecution record - Shortened periods to reply, no extensions

Additional Benefits

Post appeal prosecution and RCE remain accelerated

Petition separately for RCE - PE ends at appeal

92%

None

Cost to prepare claim correspondence table, office actions, translations

Fewer OAs

Fewer OAs – 1.7 (2.5 avg)

Shortened periods to reply, limited extensions -Reduced prosecution record

Reduced prosecution record