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.

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

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

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

Welcome and Background Information Andrew Faile Director Technology Center 2600

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

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

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 .

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

Rob Clarke Deputy Director Office of Patent Legal Administration

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

Revised AE Program and Petition to Make Special - Procedures Overview MPEP 708.02(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. 36323 (June 26, 2006) (notice)” http://www.uspto.gov/web/offices/com/sol/notices/71fr36323.htm

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

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

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

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

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

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)). .

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

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 .

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

Andrew Faile Director Technology Center 2600

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

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

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 .

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 .

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 .

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 .

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 .

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 .

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 .

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

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 .

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) .

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 .

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

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

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) .

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 .

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 .

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) .

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

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

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

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)

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

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)

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

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

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

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

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

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

Entering Bibliographic Data Enter Bibliographic Data

Entering Bibliographic Data Enter Bibliographic Data Enter Customer Number

Attach, upload and validate documents Attach and Validate Attach, upload and validate documents

Browse to Attach the Documents Browse to required AE documents

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

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

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

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

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: https://websurveyor.webex.com Schedule Training at: efstraining@uspto.gov

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