February 12, 2012
Expedited Examination Programs from the PTO
Ashok K. Mannava
[email protected]
www.mannavakang.com
Mannava & Kang, P.C.
Expedited Examination
Programs
• Accelerated Examination (permanent
program)
• Track 1 Accelerated Examination
• Patent Prosecution Highway (PPH)
(permanent program)
• First Interview Action Program (pilot
program)
• Expedited examination based on
applicant’s age or health (permanent
program)
• Green technology program (pilot program)
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Accelerated Examination
•
•
•
•
Allows final decision on an application within
12 months
In exchange for this faster process, USPTO
requires new responsibilities from IP
practitioners
Any non-reissue utility or design application
filed under 35 USC § 111(a) is eligible
Plant applications, reissue applications,
reexamination proceedings, and national
stage applications or PCT applications under
35 USC § 371 are not eligible
3
Accelerated Examination
•
Key Requirements:
•
•
•
(1) the application must be filed via EFS-Web
with a petition to make special along with (a)
required petition fee or (b) a statement that the
claimed invention is directed to environmental
quality, development or conservation of energy
resources, or counter terrorism
(2) the application must be complete and in
condition for examination
(3) the application must contain three or fewer
independent and twenty or fewer total claims,
and must not contain any multiple dependent
claims
4
Accelerated Examination
•
Key Requirements (cont.):
•
•
•
•
(4) the claims must be directed to a single
invention
(5) the petition must include a statement
agreeing to have an interview
(6) applicant must provide a statement that a
pre-examination search was conducted that
meets certain requirements
(7) applicant must provide an accelerated
examination support document that satisfies
certain requirements
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Accelerated Examination
•
•
Prior to mailing any first Office action
rejecting claims:
• Telephone interview will be
conduction, unless deemed unlikely to
overcome the rejection
• Conference will be conducted in the
USPTO
Conference will also occur before final Office
action is mailed
6
Accelerated Examination
•
Fees:
•
•
US $130 Petition Fee to Request
Accelerated Examination
No petition fee required for inventions
that:
•
•
•
will enhance the quality of the
environment
relate to the development or
conservation of energy resources
contribute to counter terrorism
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Accelerated Examination
•
Comments
•
•
•
•
The requirement of an accelerated
examination support document may be
enormously costly because of amount of
attorney work needed and may create a
potentially damaging file history
Use this AE program only for applications in
which there is limited prior art and relatively
few, well-focused claims
Choose a search firm with experience in AE
On appeal, applicants can only argue the
independent claims
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Accelerated Examination
•
Comments (continued)
•
•
•
•
Applicants cannot request a pre-appeal brief
review of a final rejection
Examiner confers with Quality Assurance
Specialist (QAS) before each Office Action
If the Applicant has convinced the Examiner
on a point, QAS may overrule him/her
Failure to meet 12 month goal is not
petitionable or appealable, and a final
disposition may occur under certain
specialized situations
9
Track 1 Program
•
•
•
Similar to original AE program but without the
burdensome and potentially harmful search and
accelerated examination support document
requirements
Applicants who submit a request and pay $4000 fee
(50% discount for small entity) will have their
application placed in an accelerated queue for
examination
First Office action on the merits within 4 months,
final disposal expected to occur within 12 months of
accelerated status being granted
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Track 1 Program
•
Requirements:
• original utility or plant patent
application
• filed electronically
• no more than four (4) independent
claims and thirty (30) total claims.
• The prioritization will be terminated
(without refund) if the applicant ever
requests an extension of time to
respond to an office action.
11
Track 1 Program
•
Requirements (cont.):
• no pre-filing search or analysis is
required.
• The accelerated process is apparently
available for continuation applications
so long is the application is filed on or
after the implementation date of the
program.
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Patent Prosecution Highway
•
•
The Patent Prosecution Highway (PPH) is a
set of initiatives for providing accelerated
patent prosecution procedures by sharing
information between some patent offices.
A work sharing initiative to take advantage
of the work done by the Office of First Filing
(OFF) when examining a corresponding
application in the Office of Second Filing
(OSF)
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Patent Prosecution Highway
•
•
When the PPH requirements are met, the
OSF will accelerate the examination of
corresponding claims in a corresponding
application and utilize the search and
examination results from the OFF
OSF benefits from search and examination
of OFF, which reduces examination cost
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Patent Prosecution Highway
•
The USPTO Has Agreements With:
•
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•
•
JPO (Japan)
UK IPO (United Kingdom)
KIPO (Korea)
CIPO (Canada)
IPAU (Australia)
EPO (European Patent Office)
DKPTO (Denmark)
IPOS (Singapore)
DPMA (Germany)
Finland (NBPR)
Russia (Rospatent)
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Patent Prosecution Highway
•
Requirements:
•
•
•
The U.S. utility application filed under 35
U.S.C. 111(a) must claim foreign priority to
the OFF application under 35 U.S.C. 119(a)-(d)
and §1.55 or through a PCT
The OFF application must contain at least one
claim that was determined by the OFF to be
allowable
All the claims in the U.S. application (including
any subsequently amended or added claims)
must sufficiently correspond to the allowable
claims in the OFF application
16
First Action Interview Pilot
Program
•
•
•
•
An applicant is entitled to a first action interview,
upon request, prior to the first Office action on the
merits
Examiner will conduct a prior art search and provide
applicant with a condensed pre-interview
communication citing relevant prior art and
identifying proposed rejections or objections
Within 30 days of receipt, applicant schedules an
interview and submits proposed amendments and/or
arguments
The Full First Action Interview Pilot Program will
continue until May 16, 2012
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First Action Interview Pilot
Program
•
•
•
At the interview, the relevant prior art, proposed
rejections, amendments and arguments will be
discussed
If agreement is not reached, the applicant will
receive a first action interview office action that
includes an interview summary that constitutes a first
office action on the merits under 35 USC 132
The Full First Action Interview Pilot Program is open
to all utility applications in all technology areas
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First Action Interview Pilot
Program
•
Requirements
•
•
•
•
•
non-reissue, non-provisional utility application
or national stage application
claims must be 20 or fewer in number
the claims must contain 3 or fewer
independent claims
the claims must contain no multiple dependent
claims
all claims must be directed toward a single
invention
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First Action Interview Pilot
Program
•
Requirements (cont.)
•
•
•
If the USPTO issues a restriction requirement,
the Applicant must elect claims pertaining to a
single invention without traverse
the applicant must make a statement in the
electronic request waiving any requests for
refunds of the search fee or excess claims fees
paid after the mailing of the date of a PreInterview Communication, mailed in response
to a request to enter the Program
the applicant further waives any right to
express abandonment and refund of fees.
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Expedited Examination based
on applicants age or health
•
•
•
Applications may be accorded accelerated
examination status based on an applicant’s
age or health.
In order to receive accelerated treatment,
applicants must file a petition to make
special under 37 CFR 1.102 entitled
“Advancement of examination.”
No fees
21
Expedited Examination based
on applicants age or health
•
Requirements
• Either the state of health of the
applicant is such that he or she might
not be available to assist in the
prosecution of the application if it were
to run its normal course, such as a
doctor's certificate or other medical
certificate OR
• the applicant is 65 years of age or
older
22
Green Technology Pilot Program
• 37 CFR § 1.102
• Pilot Program for Green Technologies, 74 Fed.
Reg. 64666 (December 8, 2009)
• Elimination of Classification Requirement in the
Green Technology Pilot Program, 75 Fed. Reg.
28554 (May 21, 2010)
• Expansion and Extension of the Green
Technology Pilot Program, 75 Fed. Reg. 69049
(November 10, 2010)
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Green Technology Pilot Program
• Permits applicants to request AE for
applications pertaining to clean
technologies, such as environmental
quality, energy conservation,
development of renewable energy
resources, and greenhouse gas emission
reductions.
• Applicants placed on accelerated track,
no 12 month goals as in AE
• No fees
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Green Technology Pilot Program
Filing Requirements
• The application must be filed with:
 -a petition to make special (form PTO/SB/28)
 -no fee for petition is required
• The application must contain:
• -3 or fewer independent claims
• -20 or fewer total claims
• -no multiple dependent claims
• The claims must be directed to a single
invention
• The petition must be accompanied by a request
for early publication and the publication fee
• The application must be filed electronically via
EFS-Web
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THANK YOU
Ashok K. Mannava
[email protected]
www.mannavakang.com
Mannava & Kang, P.C.
703.652.3822
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Expedited Examination Programs from the USPTO