Transcript No Slide Title

Accelerated Examination Program
Andrew Faile
Director, TC 2600
Revised Accelerated Examination (AE) Program
and Petition to Make Special Procedures
Overview
 Effective August 25, 2006, the requirements for filing petitions for
accelerated examination and other petitions to make special have
been revised.
GOAL: to achieve a final decision by the examiner within 12 months
from the filing date of the application
 See Changes to Practice for Petitions in Patent Applications to Make
Special and for Accelerated Examination, 71 Fed. Reg. 36323 (June 26,
2006) (notice) available at http://www.uspto.gov/web/offices/pac/dapp/ogsheet.html
 MPEP 708.02 (8th Edition) will be revised in due course to reflect the
changes.
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Revised Accelerated Examination (AE) Program
and Petition to Make Special Procedures
Overview
The new requirements apply to all petitions to make
special. Thus, a uniform practice will be established.
Except: Petitions on the basis of health, age and the Patent
Prosecution Highway (PPH) pilot program
If the petition meets the requirements set forth in the
notice,
The application will be granted special status under the revised
AE program, and
The new processing and examination procedures will apply to the
application.
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Revised Accelerated Examination (AE) Program
and Petition to Make Special Procedures
Effective Date Provision: 8/25/06
On or after August 25, 2006
Any petition for accelerated examination, and any other petition to
make special (except petitions based on applicant’s health or age or
the PPH pilot program) must meet the requirements set forth in the
notice.
Petitions to make special that were filed before 8/25/06 need only comply
with the previous requirements set forth in MPEP 708.02 (8th Edition).
These applications will be processed and examined using the
previous procedures set forth in MPEP 708.02 (8th Edition).
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Revised Accelerated Examination (AE) Program
and Petition to Make Special Procedures
Summary
 The revised AE program will allow applicants who desire
quick patent protection for their inventions to:
Receive a final patentability decision by the examiner within 12
months; and
Choose which applications they want to advance for examination.
 In order to meet the 12-month goal, applicant will be
required to:
Provide additional information with the petition for AE and
Comply with revised procedures throughout the examination
process
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Revised Accelerated Examination (AE) Program
and Petition to Make Special Procedures
The Office’s Twelve-Month Goal
The 12-month goal is successfully achieved when one of
the following final dispositions occur:
Notice of Allowance;
Final Office action;
Notice of appeal;
Request for Continued Examination (RCE); and
Abandonment.
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Revised Accelerated Examination (AE) Program
and Petition to Make Special Procedures
Summary - Benefits for Applicants
Expedited handling throughout the patent application
process, including:
 Office of Initial Patent Examination (OIPE);
 Examination;
Post-appeal process; and
Patent issue process.
Earlier and better interactions with the examiner.
More participation in clarifying and focusing the issues
during the prosecution.
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Revised Accelerated Examination (AE) Program
and Petition to Make Special Procedures
Eligible Applications
 Any non-reissue utility or design application filed under
35 U.S.C. 111(a) on or after the effective date is eligible.
 Not eligible: plant applications, international applications
including applications entering the national stage under 35
U.S.C. 371, and reissue applications.
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Revised Accelerated Examination (AE) Program
and Petition to Make Special Procedures
Filing Requirements
 The application must be filed with:
The petition to make special (form PTO/SB/28); and
The fee under § 1.17(h), or a statement that the claimed
subject matter is directed to environmental quality, energy, or
countering terrorism (no fee required, see §1.102(c)(2)).
The application must be complete under § 1.51 and in
condition for examination upon filing.
For example, the application must include the filing fees and
an executed oath or declaration under § 1.63.
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Revised Accelerated Examination (AE) Program
and Petition to Make Special Procedures
Filing Requirements (Cont’d)
The application, petition, and required fees must be filed
electronically via EFS or EFS-Web.
Current EFS-Web system does not allow filing of
sequence listings
Mid-October 2006 release of EFS-Web will address this
Interim Filing procedure for sequence listings (use any
one of the following three options):
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Interim Filing Procedure for Sequence
Listings

Option 1
 The entire application filing except the sequence listing
is filed through EFS-Web and the sequence listing is
filed electronically on the same calendar day through
ePAVE as a “follow-on” paper.

Option 2
 The entire filing except the petition for accelerated
examination is filed through ePAVE and the petition
(including all attachments) is filed on the same
calendar day through EFS-Web.
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Interim Filing Procedure for Sequence
Listings

Option 3
 The entire application filing except the sequence listing
is filed through EFS-Web and the paper copy
and computer readable form of the sequence listing is
filed on the same calendar day by Express Mail
(directed to Mail Stop: Sequence).
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Revised Accelerated Examination (AE) Program
and Petition to Make Special Procedures
Filing Requirements (Cont’d)
The application must contain:
3 or fewer independent claims; and
20 or fewer total claims.
The application must not contain any multiple dependent
claims.
The claims must be directed to a single invention.
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Role of SPREs in the Accelerated Examination (AE)
Program
SPREs are the Deciding Officials on AE Petitions
Review petitions for compliance with the AE Program
Petition Dismissed
SPRE will point out noted defects
Applicant has one chance to perfect the petition
Petition Denied
SPRE will point out defects that cause the petition to be
denied and application returned to the art unit queue
Petition Granted
Application examined under the AE program
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Revised Accelerated Examination (AE) Program
and Petition to Make Special Procedures
Filing Requirements (Cont’d)
The petition (form PTO/SB/28) must include:
A statement that applicant will agree to make an election without
traverse in a telephonic interview;
A statement that applicant will agree to have an interview when
requested by the examiner;
A statement that applicant will agree not to separately argue the
patentability of any dependent claim during any appeal;
A statement that a pre-examination search was conducted; and
An accelerated examination support document (ESD).
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Deficiencies Resulting in the Denial of the
Accelerated Examination (AE) Petition
 Petitions will be Denied if:
 Application Not eligible for the AE Program.
 Reissue, 371, Plant, or Reexamination Proceeding
 Issuance of Notice to File Missing Part(s).
 Application should be reviewed to verify that it was
complete for examination on filing
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Deficiencies Resulting in the Dismissal of the
Accelerated Examination (AE) Petition (Cont’d)
Petitions will be Dismissed if:
Pre-examination search does not meet the requirements
of the Notice.
AE Support Document does not meet the requirements of
the Notice.
Applicant has one chance to correct a deficient Preexamination search or AE support document
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Evaluating the Pre-Examination Search
Requirements
 Statement that a pre-examination search was conducted
 U.S. Patents
 Patent application publications
 Foreign patent documents
 Non-patent literature
 Search directed to the claimed invention where claims
are given their broadest reasonable interpretation
 Search must encompass disclosed features that may be
claimed
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Evaluating the Pre-Examination Search
Requirements
 A classified search of the US patents and published
patent applications in the Class and subclass where the
claimed invention is most likely to be classified in the
current United States Patent Classification system
(USPC)
 Where the PTO review considers that another or
different classification is preferred, the search by the
applicant will usually be considered acceptable unless
the performed classified search is so divergent that it
also calls other aspects of the pre-examination search
into question.
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Evaluating the Pre-Examination Search
Requirements
 A text search of the US patents and published patent
applications that covers the subject matter of the independent
claims using terms recognized in the art must be performed.
 Claims are given their broadest reasonable interpretation.
 The search should consider individual features by
themselves and combinations of features.
 The search should cover the broadest scope encompassed
by the claims as well as claims of narrow and intermediate
breadth.
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Evaluating the Pre-Examination Search
Requirements
 A text search of foreign patent documents that includes the
sources required under the PCT minimum documentation
requirements, to the extent available.
 The PCT minimum documentation requirements can be
found at http://www.wipo.int/standards/en/pdf/04-02-01.pdf.
 This search may be completed using the USPTO Universal
Public Workstation (UPWS) in the USPTO Public Search
Room Facility or through other available commercial
database providers.
 The text search should be similar to that provided for US
patents and published patent applications.
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Evaluating the Pre-Examination Search
Requirements
 A text search of the suggested non-patent literature (NPL)
resources from the current USPTO search templates
 Search templates are found on the USPTO website at:
http://www.uspto.gov/web/patents/searchtemplates/searchtemplates.htm
 A search employing any special tools (e.g., nucleic acid or
protein sequence searching tools) as identified in the current
USPTO search templates.
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Evaluating the Pre-Examination Search
Requirements
•Justification must be provided when a particular search resource
has not been considered during the search of any one of:
•US patents
•Patent application publications
•Foreign patent documents
•NPL
•The justification provided must be specific
•No general boiler-plate assertions; e.g. “no relevant prior art
expected to be found” or “the best prior art was already located”.
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Evaluating the Pre-Examination Search
Requirements
 Use of Foreign Office search reports
 Must meet all of the AE search criteria to be used
 Example: A foreign office search report that includes a
search of the PCT minimum documentation and
provides the required search history may be used to
meet that requirement in the above-noted search.
 The other portions of the search need to be performed
for a sufficient pre-examination search submission.
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Evaluating the Pre-Examination Search
Requirements
 Petition Dismissal
 Identified deficiencies that require further search by the
applicant will include a specific discussion of the
deficiency and suggestions to the applicant on how the
deficiency may be overcome.
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Evaluating the
Accelerated Examination Support Document (AESD)
The accelerated examination support document must include:
 An information disclosure statement (IDS) citing each reference deemed
most closely related to the subject matter of each claim;
 An identification of where each limitation disclosed in the references is
found.
 A detailed explanation of how each claim is patentable over the
reference(s);
 A concise statement of utility of the invention;
 A showing of support for each claim limitation in specification and any
parent application, including any means-plus-function limitations; and
 An identification of any cited references that may be disqualified as
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prior art under 35 U.S.C. 103(c).
Evaluating the
Accelerated Examination Support Document (AESD)
An identification of where each limitation disclosed in the references is
found.
Not intended to be an exhaustive listing of every conceivable
subjective interpretation of how a claim limitation may read on the
reference
Applicants should point out what are considered to be the relevant
representations of the limitation in the reference (may be more than
one instance)
The USPTO will adopt a rule of reason when evaluating this portion of
the AESD.
The identification will be deemed to be sufficient unless the
correspondence is so deficient that it would materially effect
examination of the application.
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Evaluating the
Accelerated Examination Support Document (AESD)
A detailed explanation of how each claim is patentable over the reference
Applicants should be specific in their explanation
Should include the identification of specific claim limitations that
support their position.
General statements that the claims are neither anticipated nor
rendered obvious by the cited references or that the references are
not properly combinable will not be acceptable.
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Evaluating the
Accelerated Examination Support Document (AESD)
A concise statement of utility of the invention;
Where each of the independent claims share a common utility, these
claims may be grouped together in this explanation.
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Evaluating the
Accelerated Examination Support Document (AESD)
A showing of support for each claim limitation in specification and any
parent application, including any means-plus-function limitations
Applicants should specify where in the specification each limitation of
the claim finds support.
The USPTO will adopt a rule of reason when evaluating this portion of
the AESD.
However, where the limitation is intended to cover multiple
embodiments of the structures, acts, or materials to perform the
recited function, each should be separately identified under this
requirement.
Unless the identification is so deficient that is would materially effect
examination of the application, the showing of specification support
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will be deemed to be sufficient for this part of the AESD.
Evaluating the
Accelerated Examination Support Document (AESD)
An identification of any cited references that may be disqualified as prior
art under 35 U.S.C. 103(c).
It is sufficient for an applicant to identify a reference that might be
subject to disqualification without any further explanation at this time.
Permits an examiner to determine when a “back-up” rejection may be
appropriate, both in the potential interview process and/or the resulting
Office action.
If the identified reference is applied in any ground of rejection, it is
highly recommended that the applicant make the determination of that
possible disqualification at the earliest possible time in the
prosecution.
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Revised Accelerated Examination (AE) Program
and Petition to Make Special Procedures
Processing and Examining Procedures
Once the application is granted special status, the application will
be promptly taken up for action (e.g., within 2 weeks of petition
decision), with special examining procedures set forth in the notice.
The examiner will consider the AE Support Document and conduct
a complete prior art search.
Prior to mailing any first Office action rejecting claims,
A telephone interview will be conducted, unless an interview is
deemed unlikely to overcome the rejection; and
 A conference will be conducted in the USPTO to ensure the
viability of the rejection(s).
There will also be a conference before mailing any final Office
action.
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Revised Accelerated Examination (AE) Program
and Petition to Make Special Procedures
Processing and Examining Procedures (Cont’d)
 Non-final Office actions will have a shorter period for
reply:
 One-month (or 30 days) SSP for any action, other than
a final rejection or allowance.
 No extensions of time under § 1.136(a) permitted.
 Failure to timely file a reply will result in abandonment of
the application.
Extensions of time are only available under § 1.136(b).
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Revised Accelerated Examination (AE) Program
and Petition to Make Special Procedures
Examining Procedures: Applicant’s Reply
 Any reply must be:
filed via EFS-Web;
complete, fully responsive; and
limited to the rejection(s), objection(s) and requirements made.
An updated AE support document is required for any amended or
newly added claims that are not encompassed by the previously-filed
AE support document.
An updated search is required for any amended or newly added
claims that are not encompassed by the pre-examination search.
The above requirements are imposed in order to be able to complete
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the examination within 12 months.
Revised Accelerated Examination (AE) Program
and Petition to Make Special Procedures
Examining Procedures: Applicant’s Reply (Cont’d)
 The Office will treat any amendments (including after-final
amendments and RCE submissions) as not being fully
responsive if the amendment:
 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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Revised Accelerated Examination (AE) Program
and Petition to Make Special Procedures
Post-Allowance Procedures
 While the mailing of a notice of allowance is the final
disposition for purposes of the Office’s 12 month goal, in
order for the application to be expeditiously issued as a
patent, applicant must:
Within one month, pay the issue fee (and any
outstanding fees due) and return the form PTOL-85B
(Part B of the Notice of Allowance and Fee(s) Due); and
Not file any post-allowance papers that are not required
by the Office.
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Revised Accelerated Examination (AE) Program
and Petition to Make Special Procedures
Appeal Procedures
While the mailing of a final rejection is the final
disposition for purposes of the Office’s 12 month goal, in
order for the application to be expeditiously forwarded to
the Board of Patent Appeals and Interference for a
decision, applicant must:
Promptly file the notice of appeal, appeal brief, and appeal
fees; and
Not request a pre-appeal brief conference (which would not
be of value because a conference would already have been
conducted).
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Revised Accelerated Examination (AE) Program
and Petition to Make Special Procedures
The Office’s Twelve-Month Goal
 The final disposition may occur later than 12 months in
certain situations.
For example, if there is a secrecy order, national
security review, interference, petition under §§ 1.181,
1.182, or 1.183, or non-compliant or not fully responsive
amendment.
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Revised Accelerated Examination (AE) Program
and Petition to Make Special Procedures
Additional Information

Additional information is available on the
USPTO’s Internet web site
at:http://www.uspto.gov/web/patents/accelerated/

For inquiries, please email:
[email protected]
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Accelerated Examination Website
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Accelerated Examination Website

To get to the AE website from the USPTO
Homepage:

Go to “Patents” on the home page

Click on “Main”

Click on “Accelerated Examination” (on the
left hand side)
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Revised Accelerated Examination (AE) Program
and Petition to Make Special Procedures
Thank you
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