Accelerated Examination Program

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• Accelerated Examination Program
• Andrew Faile
• Director, TC 2600

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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/off
  ices/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 applicants 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 Offices
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 (Contd)

• 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 (Contd)

• 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 (Contd)

• 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 (Contd)

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• 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
  Pre-examination 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/searchtemplat
  es/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 prior art under 35 U.S.C.
  103(c).

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• 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
  will be deemed to be sufficient for this part of
  the AESD.

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• 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 (Contd)
.

• 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 Applicants 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 the examination within 12 months.

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Revised Accelerated Examination (AE) Program and
Petition to Make Special Procedures Examining
Procedures Applicants Reply (Contd)

• 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
  pre-examination 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
  Offices 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 Offices 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 Offices
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
  USPTOs Internet web site athttp//www.uspto.gov/
  web/patents/accelerated/
• For inquiries, please email AcceleratedExaminati
  on_at_uspto.gov

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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