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Accelerated Examination
Green Technology Petition Pilot Program
Robert W. Bahr
Acting Associate Commissioner
for Patent Examination Policy
Discussion Points
1. Accelerated Examination (AE)
2.
Green Technology Pilot Program
2
Accelerated Examination:
Authority

37 CFR § 1.102 and MPEP § 708.02 VIII

Effective August 25, 2006

Petitions prior to this date are not included

See Changes to Practice for Petitions in Patent
Applications to Make Special and for Accelerated
Examination, 71 FR 36233 (June 26, 2006), 1308 Off. Gaz.
Pat. Office 106 (July 18, 2006).

AE information on the USPTO web site:
http://www.uspto.gov/patents/process/file/accelerated/ind
ex.jsp
3
Accelerated Examination:
Overview

“Special” status: advances an application out of turn for
examination

GOAL: achieve a final decision by the Examiner within 12
months from the filing date

Applies to all petitions to make special, except those
related to:

Age and Health

Patent Prosecution Highway

Green Technology Pilot

Backlog Reduction Stimulus Plan
4
Accelerated Examination:
Filing Requirements
1. Electronically Filed
2. Complete at filing
3. < 3/20 claims directed to a single invention
4. No multiple dependent claim(s)
5. Fee: 37 CFR § 1.17 (h)

or a statement that the claimed subject matter relates to
environmental quality, energy or anti-terrorism
6. Petition to make special

use USPTO Form PTO/SB/28
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Accelerated Examination:
Common Filing Errors

Improper Filing: e.g., contains a preliminary amendment

Not In Condition for Examination: e.g., contains a
a 37 CFR § 1.47 petition for a non-signing inventor

Untimely Filing: e.g., filed during mid-prosecution

Incomplete Filing



unexecuted oath
missing or defective drawings
missing or non-compliant sequence listings
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Accelerated Examination:
Filing Tips

Satisfy the Filing Requirements
1.
For a Filing Date: Provide a specification, at least one claim and any
required drawing - §§ 1.81(a) and 1.84
2.
For a Complete Filing: Include
•
•
•
the basic filing fee
an oath or declaration pursuant to § 1.63
a correspondence address - § 1.33(a)

Avoid:

37 CFR § 1.16(f) surcharge

Notice To File Missing Parts to address the above deficiencies

See MPEP § 601.01(a) ; 37 CFR § 1.53
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Accelerated Examination:
Filing Tips (Cont.)

Use an application data sheet (ADS)
•
in lieu of oath for foreign or domestic benefit claims
•
to effect cross-reference (37 CFR § 1.78)

For non-English specifications, timely provide English
language translation under 37 CFR § 1.52(d), an accuracy
statement and the fee

Include necessary Sequence Listing (if applicable)
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Accelerated Examination:
Petition Requirements

Petition must be accompanied by:
1.
Pre-Examination Search
2.
Accelerated Examination Support Document (AESD)

Statements that the applicant will:
1.
Make election w/o traverse in a telephonic interview
2.
Agree to have an interview when requested by the examiner
3.
Not separately argue any dependent claim on appeal

See: Form PTO/SB/28, Petition to Make Special Under Accelerated Examination Program
at:
http://www.uspto.gov/patents/process/file/efs/guidance/Form_fillable_pdfs_available.jsp
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Accelerated Examination:
Pre-Exam Search

•
Must include a search of:
U.S. Patents
•
Patent application publications
•
Foreign patent documents
•
Non-patent literature

Search directed to the claimed invention giving claims
their broadest reasonable interpretation

Include a classification search and text search
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Accelerated Examination:
Deficient Pre-Exam Search

Petition Dismissed: if partially deficient
•
Will include specifics regarding deficiency with
suggestions to remedy
Example: Missing or Incomplete Search
•
•
Missing: point out that search is required
Incomplete: guidance directed at improving the search will be
given in the decision
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Accelerated Examination:
Common Search Errors

Incomplete Search:

substantive: does not address key claim limitations

procedural: does not include foreign patent search
- does not document USPAT search terms
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Accelerated Examination:
Search Tips

•

Search the claimed invention
search must be commensurate in scope with the claims
Search should include U.S. Patents and publications,
foreign patents and publications, and non-patent literature

Provide the text search logic
•
a listing of terms will not suffice
13
Accelerated Examination: Examination
Support Document (AESD) Requirements

AESD must include:
1.
An information disclosure statement (IDS) citing each
reference deemed most closely related to the claims
2.
An identification of where each limitation disclosed in
each reference is found
•
Refer to specific paragraphs or drawing elements
3. A detailed explanation of how each claim is patentable
over each reference
•
Be specific – general statements are not sufficient
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AE: AESD Requirements (Cont.)

AESD must also include:
4. A concise statement of utility of the invention.
5. A showing of support for each claim limitation in
specification
•
Point to page and line numbers or drawing elements
6. An identification of any cited references that may be
disqualified as prior art under 35 U.S.C. § 103(c)
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Accelerated Examination:
Common AESD Errors



Form PTO/SB/08 (formerly PTO-1449) fails to include
reference(s) discussed in the AESD
Fail to apply reference(s) to claim limitations
Fail to provide a detailed explanation of how each claim
is patentable over each reference
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Accelerated Examination:
AESD Tips


Clearly point out by specific claim language how each
claim is patentable over each reference
Each reference discussed must be presented in an IDS

Show support in the specification and/or drawings for
each limitation of each claim. Be specific

Clearly and specifically identify the limitations in each
claim

A chart is a clear, convenient format
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Accelerated Examination:
Petition Review

Denied if:
•
Fails to meet filing requirements
•
Ineligible (plant, reissue, reexamination proceeding,
national stage application under 35 U.S.C. § 371)

Dismissed if it is defective
•
Defects are specifically noted
•
One (1) chance to cure

Ultimately Denied if:
•
Applicant is unable to timely cure defect(s)
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Accelerated Examination:
Applicant’s Reply

Shorter Statutory Periods (SSP) for applicant reply:
•
1-month (or 30 days) for any action except final rejection or
allowance
•
No time extensions under 37 CFR § 1.136(a) – only § 1.136(b)
•
Reply must be electronically filed via EFS-Web

If response includes either amended or newly-added
claims:
•
An updated search will be required if claims are not encompassed
by the pre-examination search
•
An updated AESD will be required if claims are not encompassed
by original AESD
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Accelerated Examination:
Non-Responsive Reply
An amendment (including after-final and RCE
submissions) is non-responsive (not entered) if it:

Exceeds the 3/20 claim limit;

Presents claims to a non-elected invention;

Presents claims not encompassed by the preexamination search, or an updated search; or

Presents claims requiring an updated AE support
document, which is not submitted.
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Accelerated Examination:
Non-Responsive Reply (Cont.)

Must respond timely:

Examiner may provide one month (or 30 days) to supply
the omission or a fully responsive reply for a bona-fide
response to FAOM only

No extensions under 37 CFR § 1.136(a)

Abandoned if not timely cured
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Accelerated Examination:
Withdrawal From Special Status

No AE provision for “withdrawal” from special status
•
An RCE will not effect “withdrawal”

Can abandon in favor of a “continuation” which is not
special unless a new AE petition is filed with the
continuation application and granted
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Accelerated Examination:
Statistics Overview
* As of 1/7/10 (Statistics are calculated on a quarterly basis.)
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Accelerated Examination:
Statistics Overview
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Accelerated Examination:
Statistics Overview
Cumulative AE Petitions Decided on Merits or Pending
(Applications filed through 12/31/09, N=2811)
Status as of 1/7/10
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Accelerated Examination:
Benefits

Final patentability determination in 12 months

Good for inventions with a short lifespan

Patent may be granted at the peak of the technology’s life

Benefits inventions in very competitive markets

Information provided more quickly to those seeking to
avoid infringement

Can be used to accelerate prolonged prosecution

Claim drafting is more focused and clear

Earlier and extended interaction between applicant and
examiner
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Accelerated Examination
Information Links
 AE
Home Page: http://www.uspto.gov/web/patents/accelerated
AE Federal Register Notice:
http://www.uspto.gov/web/offices/com/sol/notices/71fr36323.pdf

Sample AE Petition Form SB/2B:
http://www.uspto.gov/web/forms/sb0028_fil.pdf

Sample AE Pre-Examination Search Document:
http://www.uspto.gov/web/patents/accelerated/ae_presearch_sample.doc

Sample AE Support Document:
http://www.uspto.gov/web/patents/accelerated/ae_support_document_sample.doc


FAQs: http://www.uspto.gov/web/patents/accelerated/ae_faq.htm
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Green Technology Pilot
Program
Discussion Points
1. Authority and Overview: resources/overview
2. Petition Requirement: common errors and tips
3. Petition Review: process, statistics, examples
4. Future
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Green Technology: Authority

See Pilot Program for Green Technologies Including
Greenhouse Gas Reduction, 74 FR 64666 (Dec. 8, 2009),
1349 Off. Gaz. Pat. Office 362 (Dec. 29, 2009).

Pilot was announced by Secretary Locke in Washington,
DC – coinciding with the start of UN’s Climate Change
Conference in Copenhagen, Denmark

Part of the Obama Administration’s effort to spur
innovation and create jobs

Green Tech Information on the USPTO web site:
http://www.uspto.gov/patents/init_events/green_tech.jsp
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Green Technology: Overview

Pilot will run for twelve months from its effective date of
December 8, 2009

Limited to specific areas of green technology
—
—
—
—
—
Environmental quality
Energy conservation
Development of renewable energy resources
Greenhouse gas emission reduction
Must meet USPC requirements set forth in the Federal Register Notice

Limited to the first 3,000 petitions granted by USPTO

“Special” status
—
—
Advances an application out of turn for initial examination
Accorded special status in any appeal to the BPAI and in the patent
publication process
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Green Technology:
Filing Requirements
1.
Non-reissue, non-provisional utility application filed under 35 USC
§ 111(a) or a 35 USC § 371 application
2.
Application must have been filed prior to December 8, 2009 or be a
35 USC § 371 filing based on an international application filed prior
to December 8, 2009
3.
Filed electronically via EFS-Web
4.
Filed at least one day prior to the date that a first Office action
appears in PAIR
5.
Include a request for early publication in compliance with 37 CFR
§ 1.219 and the publication fee pursuant to 37 CFR § 1.18(d). Note
that payment is required even if the application has already
published
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Green Technology:
Filing Requirements (Cont.)
6.
≤3/20 claims directed to a single invention having no
multiple dependent claims
7.
State basis for special status and include a statement
explaining how the materiality standard is met
8.
Include a statement that the applicant agrees to make a
telephonic election without traverse if a restriction
requirement is made by the examiner
9.
Application must be classified in one of the U.S. patent
classifications (USPCs) set forth in the Federal Register
Notice
32
Green Technology:
Filing Requirements (Cont.)

USPC requirement includes subclasses in 58 distinct classification
classes and encompasses seven TCs

Eligible classifications cover a wide range of green technologies
—
Some examples include:
• Biofuel (USPC 44/589, 605)
• Solar energy (USPC 126/561-714; 320/101)
• Hybrid-powered vehicles (USPC 180/65.21-65.29; 73/35.01-35.13, 112115, 116-119A, 121-132)

USPC requirement is purposefully narrow in order for the USPTO to
balance the workload

The USPTO recognizes that many technologies could be
considered “green” but are not included in the pilot
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Green Technology:
Common Filing Errors

USPC requirement not met
—
Accounts for >80% of dismissals to-date

Petition is missing the materiality statement

Petition does not include publication fee

Application filed after December 8, 2009
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Green Technology: Filing Tips

Use of USPTO Form PTO/SB/420, Petition to Make Special
Under the Green Technology Pilot Program, is strongly
encouraged

Ensure that the USPC requirements are met
—

Contact SPE/examiner to correct erroneous USPC’s prior to
filing petition
Include payment of publication fee
—
Must be paid even if application has been published
35
Green Technology:
Petition Review

The Technology Centers are currently deciding all Green
Technology petitions

Current goal is for an initial decision to be rendered within
two weeks of petition receipt date

Applications must be in a docket-ready status, i.e.,
released by Office of Patent Application Processing
(OPAP), in order for a decision to be rendered

A single request for reconsideration may be filed within 30
days of a decision dismissing the petition

Applicant may amend the claims and suggest a new
USPC to overcome any initial USPC defect
36
Green Tech: Statistics
37
Green Tech: Future

USPTO may extend the pilot program (with or without
modifications) to extend longer than twelve months
and/or include more than 3,000 granted petitions

Any extension will be announced by the USPTO via a
written notice, i.e. a Federal Register or OG Notice.

Future suggestions regarding the Green Tech Petition
Pilot should be directed to Pinchus Laufer
([email protected]) and Blaine Copenheaver
([email protected])
38
Thank You!
39