Ashok K. Mannava Mannava & Kang, P.C. Expedited Examination Programs from the PTO February 12, 2012

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) Expedited Examination Programs 2

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 Accelerated Examination 3

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 Accelerated Examination 4

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 Accelerated Examination 5

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 Accelerated Examination 6

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 Accelerated Examination 7

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 Accelerated Examination 8

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 Accelerated Examination 9

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 Track 1 Program 10

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. Track 1 Program 11

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. Track 1 Program 12

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) Patent Prosecution Highway 13

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 Patent Prosecution Highway 14

The USPTO Has Agreements With: 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) Patent Prosecution Highway 15

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 Patent Prosecution Highway 16

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 First Action Interview Pilot Program 17

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 First Action Interview Pilot Program 18

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 First Action Interview Pilot Program 19

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 Pre- Interview Communication, mailed in response to a request to enter the Program the applicant further waives any right to express abandonment and refund of fees. First Action Interview Pilot Program 20

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 entitled “Advancement of examination.” No fees Expedited Examination based on applicants age or health 21

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 Expedited Examination based on applicants age or health 22

Green Technology Pilot Program 37 CFR § Pilot Program for Green Technologies, 74 Fed. Reg (December 8, 2009) Elimination of Classification Requirement in the Green Technology Pilot Program, 75 Fed. Reg (May 21, 2010) Expansion and Extension of the Green Technology Pilot Program, 75 Fed. Reg (November 10, 2010) 23

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 24

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 25

Ashok K. Mannava Mannava & Kang, P.C THANK YOU