1. Speeding It Up at the USPTO
July 2013
July 23, 2013

2. Speeding Up Examination

3. Speeding Up Examination
Petition to Make Special
Accelerated Examination
Prioritized Examination
Patent Prosecution Highway
First Action Interview Pilot Program

4. Petition to Make Special
Most Grounds for Petitions to Make Special are now NOT Available (After August 25, 2006)
A petition to make special filed on or after August 25, 2006 will only be granted if it is based upon applicant’s health or age or is under the PPH pilot program, or if it complies with the requirements set forth in MPEP § 708.02(a). (Accelerated Examination) --MPEP
Green Technology- pilot program closed
Now need to use other ways, e.g., Accelerated Examination, Patent Prosecution Highway, or Prioritized Examination

5. Petition to Make Special
Petitions to Make Special are Still Available for
Age- 65 or older
Health
Normal course of prosecution may result in applicant’s inability to assist prosecution
Requires proof but can request to keep information out of the public record
Application advanced out of turn
No Fee!

6. Petition to Make Special
Age- 65 or older
Form- PTO/SB/130
Signed by
Inventor with statement of age OR
Attorney- retain evidence of age (e.g., copy of driver’s license)
No Fee!

7. Accelerated Examination
Goal: 12 months to disposition
Available for
Utility applications
Design applications (MPEP (a)(VIII)(A)
Not available for
Plant applications
Reissue applications
§371 national stage applications
Reexamination proceedings
RCEs (unless previously granted special status); and
Petitions to make special based on applicant’s health or age or under the PPH pilot program

8. Accelerated Examination
Filing Application for Accelerated Examination
Application must be "complete" and "in condition for examination"
e.g., all required fees, oath/declaration of actual inventor, spec, claims, drawing, title, abstract, priority claims
File electronically
Include suggested classification (class and subclass)
No preliminary amendments
File Petition
Pay Fee (if invention not exempted)

9. Accelerated Examination
Claims
3 or Less Independent
20 or Less Total
Claims Directed to Single Invention
Cannot Argue Patentability of Dependent Separate from Independent Claims During Appeal!
Interviews
Agree to interview even before 1st Office Action
Restriction- oral election

10. Accelerated Examination
Search Statement and Examination Support Document (ESD)
Need to conduct a search before filing and describe search methods
File IDS of references found
Each Reference- identify all limitations from claims disclosed in the reference
Detailed Explanation on Patentability
Support Showing for Each Limitation
Utility- Concise Explanation
Identify Disqualified Prior Art Under 35 USC 103(c)

11. Accelerated Examination
Fee
$130
No Fee for Inventions Directed to:
Environment
Energy
Anti-terrorism
Superconductivity
Petition Dismissed
Omitted Items

12. Accelerated Examination- Prosecution
General
Goal:12 months to allowance, final OA, RCE, or abandonment
Failure to meet goal is not petitionable nor appealable
Examiner begins examination within two weeks
Restriction Requirements
Examiner will telephone applicant with restriction requirement
Applicant must elect w/o traverse by telephone
Special status for continuing apps must be petitioned individually

13. Accelerated Examination- Prosecution
Interviews
Examiner telephones applicant to discuss any rejections
If interview does not result in allowance, OA is mailed
Substantive Office Actions
One month to reply to non-final OA, or abandonment
No extensions of time permitted
USPTO has conference prior to mailing any OA (same as for pre-appeal brief review)
Appeal
Appeal not accelerated but post-appeal prosecution is accelerated
RCE will delay disposition, but the prosecution remains accelerated

14. Prioritized Examination (AIA)
Goals
12 months to disposition
1st OA within 4 months
Significantly Fewer Requirements than Accelerated Examination
For Example- No requirement to conduct a pre-filing search and ESD
Limited to 10,000 patent applications per year (will reevaluate cap)

15. Prioritized Examination (AIA)
Available for:
Utility applications
Plant applications
RCEs (including §371 nationalizations) (but only 1st RCE)
CON, CIP, DIV, bypass CONs
Regardless of whether parent application had "prioritized" status
Not available for:
Design applications
Reissue applications
§371 nationalizations – newly filed
Reexamination

16. Prioritized Examination (AIA)
Filing Requirements
Certification and request form PTO/SB/424
Fees
Prioritized Examination Fee ($4800; $2400 small entity)
Processing fee ($130)
Filing, Search, Examination
Publication Fee
Claim Limits
4 independent,
30 Total
No Multiple Dependent
File electronically

17. Prioritized Examination (AIA)
Expedited prosecution
Goal: 12 months to allowance, final OA, Appeal, RCE, or abandonment
Placed on examiner’s special docket
Normal time periods for reply
Extensions of time terminate priority status
Amendments outside of claim number limitations terminate priority status
Priority does not continue through Appeal, Interference, or after filing RCE

18. Prioritized Examination (AIA)
Statistics

19. Patent Prosecution Highway
An application with claims determined to be patentable in an Office of First Filing (OFF) may be eligible to go through an accelerated examination in an Office of Second Filing (OSF).
OSF uses search and examination results of OFF
Claims determined to be patentable in a PCT also apply (Written Opinion; Int. Prelim Report on Patentability)
Test basis: JPO, EPO, KIPO, APO, ROSPATENT, SPTO
Called PCT-PPH program
Direct claim of priority not necessary
E.g., a bypass con that claims benefit to a PCT application, which PCT application claims priority to application A filed with the OFF
When a claim of application A is considered allowable, the bypass con is eligible for PPH

20. Patent Prosecution Highway
Requirements:
Application to be accelerated must have a qualifying relationship to the OFF/PCT application
At least one claim in the OFF/PCT application must be indicated as patentable
All of the claims in the application must "sufficiently correspond" to the claims in the OFF/PCT application
“sufficiently correspond” if scope is same or similar
Commentators note that this is the difficult part in practice
Basically, copy the claims in the OFF/PCT application
Perhaps suggest Examiner Amendment
Substantive examination for the application cannot have already started (No OA)

21. Patent Prosecution Highway
Procedure:
Submit request to enter PPH by EFS
No petition fee
Submit copies of all actions from OFF applications with allowable claims
Submit IDS and copies of documents it lists
Submit claims correspondence table
if PPH request is not granted there is one chance to fix any problems in the request
when request granted (usually within 2 months), examination is accelerated
examined 2-3 months after PPH request granted

22. Patent Prosecution Highway

23. Patent Prosecution Highway
Benefits:
Reduced pendency
Examined before other categories of apps (except special status and accelerated examination)
25% first action allowance
Greater success
~92% allowance rate
Reduced costs
Average 1.7 actions per disposal

24. First Action Interview Pilot Program
Opportunity to advance through prosecution by discussing the case with the Examiner before any rejections
Makes grant of interview before 1st OA non-discretionary
Distinguish from MPEP re: discretionary interview
Examiner supplies search and pre-interview communication prior to interview
Not Available at this Time, but Probably in the Future
Previously extended through November 16, 2012
Web page- “A notice announcing the extension of the pilot program beyond November 16, 2012 will be issued in due course.”- No notice yet.

25. First Action Interview Pilot Program
Previous Requirements:
Utility application or §371 nationalization (no reissues)
Request must be filed prior to 1st OA
Claim limitation: 3 independent, 20 total, no multiple dependent
Preliminary amendment allowed to fix claims
Single invention – elect without traverse or withdraw from program

26. First Action Interview Pilot Program
File request electronically
1 month to fix any errors and comply with requirements (not extendable)
Application not advanced out of turn
Examiner conducts prior art search
Examiner allows claims, schedules interview (minor amendments) OR provides pre-interview communication
Includes citations to prior art references
Includes identification of any rejections and/or objections if at least one claim is not allowable
1 month to respond
Amendments between communication and 1st OA (if any) entered at Examiner’s discretion
Applicant can choose whether to have the interview
File request to not have interview  OA and 1 month to respond
File reply (pre-interview communication treated as OA), or
Schedule the interview (w/in 60 days) and file proposed amendments or remarks

27. First Action Interview Pilot Program
Be prepared to discuss:
Assist examiner in understanding invention
Establish the state of the art
Patentable features of claimed invention
If agreement, allowance
If no agreement, OA entered
1 month to respond; limited extensions of time
Applicant can choose to convert proposed amendments into reply

28. Comparison- Historical Data
PTMS AE PE
FAI
PPH
Disposition Goal
12 months
Disposition Actual
(40 months avg)
10 months (as of 2/2009)
5.93 months
Time to 1st OA (22 months avg)
2.0 months
22 months
6 months
1st OA allowance rate
43% (as of 4/9/2012)
35%
25%
Allowance rate
(51% avg)
64% (at disposition)
51% (at disposition)
92%
Additional cost
None
$130 petition fee + cost for search and support document
$4800 PE fee + $130 petition fee
Cost to prepare claim correspondence table, office actions, translations
Cost savings
Fewer OAs
Fewer OAs – 1.7 (2.5 avg)
Risks/
disadvantages
- Additional prosecution record
- Shortened periods to reply, no extensions
Petition separately for RCE
- PE ends at appeal
Shortened periods to reply, limited extensions
Additional Benefits
Post appeal prosecution and RCE remain accelerated
-Reduced prosecution record
Reduced prosecution record

29. Speeding Up Examination Summary
Patent Prosecution Highway (PPH)
Use if have good search results.
Petition to Make Special (PTMS)
Use if you satisfy age and/or health requirements.
Prioritized Examination (PE)
Use if money is not a problem.
First Action Interview (FAI)
Not available, but consider using when extended again (interview early/often as a general practice).
Accelerated Examination (AE)
Not worth it.

30. One Potential Filing Strategy
Prioritized Examination
PCT
$ 4,800
-$2,800
$,2,000
PE Fee
PCT Fee
1st OA
2 Months
Final
Disposition
6 Months
Foreign
Filing
1 Year
File
USPTO
Positive OA
PPH
Not Patentable
Benefits
PE expense offset by not filing PCT
Prosecution Savings
Faster Foreign Prosecution
Avoid US IDS Problems & Cost
EPO
JPO
SIPO

31. Another Potential Filing Strategy
Foreign
Filing
1 Year
EPO
File
File EPO 1st
Prioritized Examination
1st OA
2 Months
Final
Disposition
6 Months
File
USPTO
Benefits
Have a legitimate search to base foreign filing decision, especially with CPC
Avoid PCT Fees
SIPO
JPO

32. Speeding It Up at the USPTO
July 23, 2013
Copyright 2013 Woodard, Emhardt, Moriarty, McNett & Henry LLP