Accelerated Examination
Green Technology Petition Pilot Program
Robert W. Bahr
Acting Associate Commissioner for Patent Examination Policy

1. Accelerated Examination (AE)
2. Green Technology Pilot Program
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Accelerated Examination:
Authority
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37 CFR § 1.102 and MPEP § 708.02 VIII
Effective August 25, 2006
Petitions prior to this date are not included
See Changes to Practice for Petitions in Patent
Applications to Make Special and for Accelerated
Examination, 71 FR 36233 (June 26, 2006), 1308 Off. Gaz.
Pat. Office 106 (July 18, 2006).
AE information on the USPTO web site: http://www.uspto.gov/patents/process/file/accelerated/ind ex.jsp
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Accelerated Examination:
Overview
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“Special” status: advances an application out of turn for examination
GOAL: achieve a final decision by the Examiner within 12 months from the filing date
Applies to all petitions to make special, except those related to:
Age and Health
Patent Prosecution Highway
Green Technology Pilot
Backlog Reduction Stimulus Plan
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Accelerated Examination:
Filing Requirements
1. Electronically Filed
2. Complete at filing
3. < 3/20 claims directed to a single invention
4. No multiple dependent claim(s)
5. Fee: 37 CFR § 1.17 (h)
 or a statement that the claimed subject matter relates to environmental quality, energy or anti-terrorism
6. Petition to make special
 use USPTO Form PTO/SB/28
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Accelerated Examination:
Common Filing Errors
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Improper Filing: e.g., contains a preliminary amendment
Not In Condition for Examination: e.g., contains a a 37 CFR § 1.47 petition for a non-signing inventor
Untimely Filing: e.g., filed during mid-prosecution
Incomplete Filing
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 unexecuted oath missing or defective drawings missing or non-compliant sequence listings
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Accelerated Examination:
Filing Tips
Satisfy the Filing Requirements
For a Filing Date: Provide a specification, at least one claim and any required drawing - §§ 1.81(a) and 1.84
For a Complete Filing: Include
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• the basic filing fee an oath or declaration pursuant to § 1.63
• a correspondence address - § 1.33(a)
Avoid:
37 CFR § 1.16(f) surcharge
Notice To File Missing Parts to address the above deficiencies
See MPEP § 601.01(a) ; 37 CFR § 1.53
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Accelerated Examination:
Filing Tips (Cont.)
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Use an application data sheet (ADS) in lieu of oath for foreign or domestic benefit claims to effect cross-reference (37 CFR § 1.78)
For non-English specifications, timely provide English language translation under 37 CFR § 1.52(d), an accuracy statement and the fee
Include necessary Sequence Listing (if applicable)
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Accelerated Examination:
Petition Requirements
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Petition must be accompanied by:
Pre-Examination Search
Accelerated Examination Support Document (AESD)
Statements that the applicant will:
Make election w/o traverse in a telephonic interview
Agree to have an interview when requested by the examiner
Not separately argue any dependent claim on appeal
See: Form PTO/SB/28, Petition to Make Special Under Accelerated Examination Program at: http://www.uspto.gov/patents/process/file/efs/guidance/Form_fillable_pdfs_available.jsp
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Accelerated Examination:
Pre-Exam Search
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Must include a search of:
U.S. Patents
Patent application publications
Foreign patent documents
Non-patent literature
Search directed to the claimed invention giving claims their broadest reasonable interpretation
Include a classification search and text search
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Accelerated Examination:
Deficient Pre-Exam Search
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Petition Dismissed: if partially deficient
Will include specifics regarding deficiency with suggestions to remedy
Example: Missing or Incomplete Search
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Missing: point out that search is required
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Incomplete: guidance directed at improving the search will be given in the decision
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Accelerated Examination:
Common Search Errors
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Incomplete Search: substantive: does not address key claim limitations procedural: does not include foreign patent search
- does not document USPAT search terms
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Accelerated Examination:
Search Tips
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Search the claimed invention search must be commensurate in scope with the claims
Search should include U.S. Patents and publications, foreign patents and publications, and non-patent literature
Provide the text search logic a listing of terms will not suffice
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AESD must include:
1. An information disclosure statement (IDS) citing each reference deemed most closely related to the claims
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2. An identification of where each limitation disclosed in each reference is found
Refer to specific paragraphs or drawing elements
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3. A detailed explanation of how each claim is patentable over each reference
Be specific – general statements are not sufficient
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AE: AESD Requirements (Cont.)
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AESD must also include:
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4. A concise statement of utility of the invention.
5. A showing of support for each claim limitation in specification
Point to page and line numbers or drawing elements
6. An identification of any cited references that may be disqualified as prior art under 35 U.S.C. § 103(c)
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Accelerated Examination:
Common AESD Errors
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Form PTO/SB/08 (formerly PTO-1449) fails to include reference(s) discussed in the AESD
Fail to apply reference(s) to claim limitations
Fail to provide a detailed explanation of how each claim is patentable over each reference
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Accelerated Examination:
AESD Tips
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Clearly point out by specific claim language how each claim is patentable over each reference
Each reference discussed must be presented in an IDS
Show support in the specification and/or drawings for each limitation of each claim. Be specific
Clearly and specifically identify the limitations in each claim
A chart is a clear, convenient format
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Accelerated Examination:
Petition Review
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Denied if:
Fails to meet filing requirements
Ineligible (plant, reissue, reexamination proceeding, national stage application under 35 U.S.C. § 371)
Dismissed if it is defective
Defects are specifically noted
One (1) chance to cure
Ultimately Denied if:
Applicant is unable to timely cure defect(s)
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Accelerated Examination:
Applicant’s Reply
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Shorter Statutory Periods (SSP) for applicant reply:
1-month (or 30 days) for any action except final rejection or allowance
No time extensions under 37 CFR § 1.136(a) – only § 1.136(b)
Reply must be electronically filed via EFS-Web
If response includes either amended or newly-added claims:
An updated search will be required if claims are not encompassed by the pre-examination search
An updated AESD will be required if claims are not encompassed by original AESD
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Accelerated Examination:
Non-Responsive Reply
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An amendment (including after-final and RCE submissions) is non-responsive (not entered) if it:
Exceeds the 3/20 claim limit;
Presents claims to a non-elected invention;
Presents claims not encompassed by the preexamination search, or an updated search; or
Presents claims requiring an updated AE support document, which is not submitted.
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Accelerated Examination:
Non-Responsive Reply (Cont.)
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Must respond timely:
Examiner may provide one month (or 30 days) to supply the omission or a fully responsive reply for a bona-fide response to FAOM only
No extensions under 37 CFR § 1.136(a)
Abandoned if not timely cured
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Accelerated Examination:
Withdrawal From Special Status
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No AE provision for “withdrawal” from special status
An RCE will not effect “withdrawal”
Can abandon in favor of a “continuation” which is not special unless a new AE petition is filed with the continuation application and granted
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Accelerated Examination:
Statistics Overview
* As of 1/7/10 (Statistics are calculated on a quarterly basis.)
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Accelerated Examination:
Statistics Overview
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Accelerated Examination:
Statistics Overview
Cumulative AE Petitions Decided on Merits or Pending
(Applications filed through 12/31/09, N=2811)
Status as of 1/7/10
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Accelerated Examination:
Benefits
Final patentability determination in 12 months
Good for inventions with a short lifespan
Patent may be granted at the peak of the technology’s life
Benefits inventions in very competitive markets
Information provided more quickly to those seeking to avoid infringement
Can be used to accelerate prolonged prosecution
Claim drafting is more focused and clear
Earlier and extended interaction between applicant and examiner
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AE Home Page: http://www.uspto.gov/web/patents/accelerated
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AE Federal Register Notice: http://www.uspto.gov/web/offices/com/sol/notices/71fr36323.pdf
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Sample AE Petition Form SB/2B: http://www.uspto.gov/web/forms/sb0028_fil.pdf
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Sample AE Pre-Examination Search Document: http://www.uspto.gov/web/patents/accelerated/ae_presearch_sample.doc
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Sample AE Support Document: http://www.uspto.gov/web/patents/accelerated/ae_support_document_sample.doc
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FAQs: http://www.uspto.gov/web/patents/accelerated/ae_faq.htm
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Green Technology Pilot
Program
Discussion Points
1. Authority and Overview: resources/overview
2. Petition Requirement: common errors and tips
3. Petition Review: process, statistics, examples
4. Future
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See Pilot Program for Green Technologies Including
Greenhouse Gas Reduction, 74 FR 64666 (Dec. 8, 2009),
1349 Off. Gaz. Pat. Office 362 (Dec. 29, 2009).
Pilot was announced by Secretary Locke in Washington,
DC – coinciding with the start of UN’s Climate Change
Conference in Copenhagen, Denmark
Part of the Obama Administration’s effort to spur innovation and create jobs
Green Tech Information on the USPTO web site: http://www.uspto.gov/patents/init_events/green_tech.jsp
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Pilot will run for twelve months from its effective date of
December 8, 2009
Limited to specific areas of green technology
— Environmental quality
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Energy conservation
Development of renewable energy resources
Greenhouse gas emission reduction
Must meet USPC requirements set forth in the Federal Register Notice
Limited to the first 3,000 petitions granted by USPTO
“Special” status
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Advances an application out of turn for initial examination
Accorded special status in any appeal to the BPAI and in the patent publication process
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Green Technology:
Filing Requirements
Non-reissue, non-provisional utility application filed under 35 USC
§ 111(a) or a 35 USC § 371 application
Application must have been filed prior to December 8, 2009 or be a
35 USC § 371 filing based on an international application filed prior to December 8, 2009
Filed electronically via EFS-Web
Filed at least one day prior to the date that a first Office action appears in PAIR
Include a request for early publication in compliance with 37 CFR
§ 1.219 and the publication fee pursuant to 37 CFR § 1.18(d). Note that payment is required even if the application has already published
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Green Technology:
Filing Requirements (Cont.)
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≤3/20 claims directed to a single invention having no multiple dependent claims
State basis for special status and include a statement explaining how the materiality standard is met
Include a statement that the applicant agrees to make a telephonic election without traverse if a restriction requirement is made by the examiner
Application must be classified in one of the U.S. patent classifications (USPCs) set forth in the Federal Register
Notice
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Green Technology:
Filing Requirements (Cont.)
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USPC requirement includes subclasses in 58 distinct classification classes and encompasses seven TCs
Eligible classifications cover a wide range of green technologies
— Some examples include:
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Biofuel (USPC 44/589, 605)
Solar energy (USPC 126/561-714; 320/101)
Hybrid-powered vehicles (USPC 180/65.21-65.29; 73/35.01-35.13, 112-
115, 116-119A, 121-132)
USPC requirement is purposefully narrow in order for the USPTO to balance the workload
The USPTO recognizes that many technologies could be considered “green” but are not included in the pilot
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Green Technology:
Common Filing Errors
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USPC requirement not met
— Accounts for >80% of dismissals to-date
Petition is missing the materiality statement
Petition does not include publication fee
Application filed after December 8, 2009
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Use of USPTO Form PTO/SB/420, Petition to Make Special
Under the Green Technology Pilot Program, is strongly encouraged
Ensure that the USPC requirements are met
— Contact SPE/examiner to correct erroneous USPC’s prior to filing petition
Include payment of publication fee
— Must be paid even if application has been published
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Green Technology:
Petition Review
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The Technology Centers are currently deciding all Green
Technology petitions
Current goal is for an initial decision to be rendered within two weeks of petition receipt date
Applications must be in a docket-ready status, i.e., released by Office of Patent Application Processing
(OPAP), in order for a decision to be rendered
A single request for reconsideration may be filed within 30 days of a decision dismissing the petition
Applicant may amend the claims and suggest a new
USPC to overcome any initial USPC defect
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USPTO may extend the pilot program (with or without modifications) to extend longer than twelve months and/or include more than 3,000 granted petitions
Any extension will be announced by the USPTO via a written notice, i.e. a Federal Register or OG Notice.
Future suggestions regarding the Green Tech Petition
Pilot should be directed to Pinchus Laufer
( Pinchus.Laufer@uspto.gov
) and Blaine Copenheaver
( Blaine.Copenheaver@uspto.gov
)
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