Transcript AIA Final Rules - Woodard, Emhardt, Moriarty, McNett, & Henry

Speeding It Up at
the USPTO
July 2013
July 23, 2013
Speeding Up Examination
Speeding Up Examination
• Petition to Make Special
• Accelerated Examination
• Prioritized Examination
• Patent Prosecution Highway
• First Action Interview Pilot Program
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 708.02
– Green Technology- pilot program closed
• Now need to use other ways, e.g., Accelerated
Examination, Patent Prosecution Highway, or
Prioritized Examination
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!
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!
Accelerated Examination
• Goal: 12 months to disposition
• Available for
– Utility applications
– Design applications (MPEP 708.02(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
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)
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
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)
Accelerated Examination
Fee
• $130
• No Fee for Inventions
Directed to:
–
–
–
–
Environment
Energy
Anti-terrorism
Superconductivity
• Petition Dismissed
– Omitted Items
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
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
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)
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
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
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
Prioritized Examination (AIA)
• Statistics
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
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)
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
Patent Prosecution Highway
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
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 713.02 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.
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
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
First Action Interview Pilot Program
• Interview
– 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
Comparison- Historical Data
AE
PE
Disposition
Goal
12 months
12 months
Disposition
Actual
(40 months avg)
10 months (as of
2/2009)
5.93 months
PTMS
Time to 1st OA
(22 months avg)
2.0 months
1st OA
allowance rate
43% (as of 4/9/2012)
Allowance rate
(51% avg)
64% (at disposition)
51% (at
disposition)
$130 petition fee +
cost for search and
support document
$4800 PE fee +
$130 petition fee
Additional cost
None
Cost savings
Risks/
disadvantages
- Additional
prosecution record
- Shortened periods to
reply, no extensions
Additional
Benefits
Post appeal
prosecution and RCE
remain accelerated
Petition separately
for RCE
- PE ends at
appeal
FAI
PPH
22 months
6 months
35%
25%
92%
None
Cost to prepare claim
correspondence table,
office actions,
translations
Fewer OAs
Fewer OAs – 1.7 (2.5
avg)
Shortened
periods to
reply, limited
extensions
-Reduced
prosecution
record
Reduced prosecution
record
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.
One Potential Filing Strategy
Prioritized Examination
2 Months
6 Months
USPTO
File 1st OA
OA
Not
Patentable
•Positive
Benefits
Final
Disposition
– PE expense offset by
not filing PCT
– Prosecution Savings
– Faster Foreign
Prosecution
– Avoid US IDS
Problems & Cost
4,800 PE Fee
-$2,800 PCT Fee
$,2,000
PCT
Foreign
Filing PPH
1 Year$
EPO
JPO
SIPO
Another Potential Filing Strategy
1 Year
EPO
File EPO 1st
Prioritized Examination
File
2 Months
Foreign
Filing
6 Months
USPTO
File 1st OA
• Benefits
Final
Disposition
– Have a legitimate
search to base
foreign filing decision,
especially with CPC
– Avoid PCT Fees
SIPO
JPO
Speeding It Up at
the USPTO
July 23, 2013
Copyright 2013 Woodard, Emhardt, Moriarty, McNett & Henry LLP