Chris Fildes FILDES & OUTLAND, P.C. IP Practice in Japan Committee Pre-Meeting AIPLA Annual Meeting, October 20, 2015 USPTO PILOT PROGRAMS 1 © AIPLA 2015

Quick Path Information Disclosure Statement (QPIDS) After Final Consideration Pilot (AFCP) 2.0 First Action Interview Pilot Program Extended Missing Parts Pilot Program Glossary Pilot Program Expedited Patent Appeal Pilot Streamlined Expedited Patent Appeal Pilot for Small Entity Collaborative Search Pilot Program Proposed Pilot Program on Alternative Approach to Institution Decision PILOT PROGRAMS 2 © AIPLA 2015

IDS submissions after payment of the issue fee are considered by examiners before determining whether prosecution should be reopened RCE fee is paid up-front when the Quick Path submission is filed fee is returned to the applicant if the examiner determines that none of the items of information in the IDS require further consideration if the examiner should determine that further consideration is in fact required, then the USPTO will enter the RCE and keep the RCE fee Quick Path Information Disclosure Statement (QPIDS) © AIPLA

providing a mechanism for examiners to further consider an application after issuance of a final action must include an amendment to at least one independent claim that does not broaden the scope of the independent claim in any aspect the examiner is required to initiate an interview to explain the basis for not entering the amendment After Final Consideration Pilot (AFCP) 2.0 © AIPLA

provides an applicant with the opportunity to conduct an interview with the examiner prior to the examiner issuing a first Office Action examiner conducts a prior art search and provides the applicant with a report summarizing the relevant prior art and proposed rejections applicant schedules an interview and provides the examiner with proposed amendments and arguments If agreement can be reached during the interview, then the application may be allowed without an Office Action if agreement is not reached, then the examiner will issue a first Office Action and the case will proceed as normal First Action Interview Pilot Program © AIPLA

allows applicants to delay payment of the search and examination fees for 12 months after the filing of a non-provisional application properly claiming priority to a provisional application the basic filing fee remains due at the time of filing the non-provisional application applicant may not request non-publication of the application Extended Missing Parts Pilot Program © AIPLA

the specification of the patent application must be drafted to include a glossary of term definitions at the beginning of the detailed description section the application must be in a U.S. patent class that is examined by Technology Centers 2100, 2400, or 2600, or the business methods area of Technology Center 3600 the definitions are binding upon the applicant and later cannot be amended during prosecution Glossary Pilot Program © AIPLA

provides an appellant with expedited review of one ex parte appeal in exchange for withdrawing another ex parte appeal both appeals must have been issued docketing notices before June 19, 2015, and both the applications which are appealed must name at least one common inventor or be owned by the same party as of June 19, 2015 USPTO desires to render final decisions in appeals made special under this program within six months Expedited Patent Appeal Pilot © AIPLA

the appellant must be entitled to small or micro entity status the appeal being expedited must be the appellant’s only pending appeal the appeal must have been pending before the Board as of September 18, 2015 the appeal cannot involve any claim subject to a Section 112 rejection the appellant must agree that the PTAB may select a single claim from each ground of rejection on which basis the decision will be made USPTO’s goal is to issue a final decision for these expedited appeals within 6 months Streamlined Expedited Patent Appeal Pilot for Small Entity © AIPLA

USPTO jointly launched collaborative search pilot programs with each of the JPO and the Korean Intellectual Property Office to participate in the program, a petition must be filed and granted in both the U.S. application and the counterpart Japanese or Korean application the petitions in the U.S. and foreign office should be filed within fifteen days of each other Collaborative Search Pilot Program © AIPLA

when the petition is filed, an Office Action on the merits must not have been issued in the application, and the earliest priority date of the application must be post-AIA the U.S. application must have no more than 3 independent claims and 20 total claims directed to a single invention, and the claims of the U.S. application must substantially correspond to those in the counterpart Japanese or Korean application a claims correspondence table indicating the substantial correspondence of the independent claims must be filed with the petition a preliminary amendment may be filed to bring the claims in compliance with the program requirements Collaborative Search Pilot Program (continued) © AIPLA

in the JPO pilot, the USPTO and JPO will exchange search results identifying best prior art and provide a consolidated report that combines the work of the two offices in the KIPO pilot, the USPTO and KIPO will each conduct independent searches and provide separate reports for the applicant to consider the applicant will receive the search report and will be given the option of conducting an interview with the examiner prior to the examiner conducting a full examination of the claims and issuing an Office Action Collaborative Search Pilot Program (continued) © AIPLA

USPTO proposes to randomly select IPR petitions for inclusion in the program over a period of three to six months the program would provide that a single APJ (administrative patent judge) would make an institution decision, whereupon institution of the IPR two additional judges would be appointed to the trial, or in other circumstances three new judges would be assigned to the panel for the trial Proposed Pilot Program on IPR Institution Decision © AIPLA

Law School Clinic Certification Pilot Program Pro Se Pilot Examination Unit Other Programs © AIPLA

Thank you! Chris Fildes Fildes & Outland, P.C © AIPLA