The Accelerated Examination

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Todays Presenters
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Some Housekeeping Items

• Todays seminar is scheduled to last for 1 and ½
  hours
• Audience members may submit questions to the
  presenters at any time using the E-mail
  Presenters link at the bottom of your screen
• Similar questions will be aggregated together
• All registered attendees will receive an e-mail
  with a link to download the slides from todays
  webinar
• This webinar is being recorded and will be
  available for playback within 48 hours of the
  conclusion of this event

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Agenda

• Welcome Background Information
• Review of New Accelerated Examination Process
• Responsibilities of USPTO
• Responsibilities of Practitioners
• Accelerated Examination and EFS-Web
• QA

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Welcome and Background Information
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The New Accelerated Examination Program What It
Does

• Allows applicants to obtain a final decision on
  an application within 12 months
• Created for situations where prolonged pendency
  could doom the patent application and/or
  commercial viability
• USPTO examined its current process to identify
  workflow bottlenecks
• USPTO is taking on many new burdens as a result
  of this re-engineering process
• Requires that IP practitioners take on new
  responsibilities as well

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Accelerated ExaminationBenefits to Applicants

• Expedited handling throughout the entire patent
  application process
• Office of Initial Patent Examination (OIPE)
• Examination
• Post-appeal process
• Earlier and better interactions with the examiner
• More participation in clarifying and focusing the
  issues during the prosecution

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Accelerated ExaminationNew USPTO
Responsibilities

• Application will be promptly taken up for action
  with special examining procedures
• Examiner will consider the search and 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
• A conference will be conducted in the USPTO to
  ensure the viability of the rejection(s)
• Conference will occur before final Office Action
  is mailed

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Accelerated ExaminationNew Practitioner
Responsibilities
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Revised AE Program and Petition to Make Special -
Procedures Overview
August
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Revised AE Program and Petition to Make Special -
Procedures Overview
See Changes to Practice for Petitions in Patent
Applications to Make Special and for Accelerated
Examination, 71 Fed. Reg. 36323 (June 26, 2006)
(notice)
http//www.uspto.gov/web/offices/com/sol/notices/7
1fr36323.htm
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Revised AE Program and Petition to Make Special -
Procedures Overview

• The new requirements apply to almost all
  petitions to make special
• Establishes a uniform practice

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Exceptions
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Revised AE Program and Petition to Make Special -
Procedures Overview

• If the petition meets the requirements set forth
  in the notice
• The application will be granted special status
  under the revised AE program
• The new processing and examination procedures
  will apply to the application

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Revised AE Program and Petition to Make Special
12 Month Goal

• The 12-month goal is successfully achieved when
  one of the following final dispositions occurs
• Notice of Allowance
• Final Office action
• Notice of appeal
• Request for Continued Examination (RCE)
• Abandonment

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Revised AE Program and Petition to Make Special
Application Eligibility

• Any non-reissue utility or design application
  filed under 35 U.S.C. 111(a) on or after the
  effective date is eligible

Plant applications International applications
(including 371 National Stage)Reissue
applications are NOT Eligible
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Revised AE Program and Petition to Make Special
Filing Requirements

• The application must be filed with
• The petition to make special (form PTO/SB/28
  recommended)
• 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)).

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Revised AE Program and Petition to Make Special
Filing Requirements

• The application must be complete under 1.51 and
  in condition for examination upon filing
• Example application must include the filing fees
  and an executed oath or declaration under 1.63

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Revised AE Program and Petition to Make Special
Filing Requirements

• Application, petition, and required fees must be
  filed electronically via EFS-Web
• EFS-Web system can now handle filing of sequence
  listings, large text files, and computer program
  listings
• Must be a registered EFS filer to submit
  follow-on papers
• Check EFS-Web materials to ensure preparation of
  PDF images compatible with EFS-Web system

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Revised AE Program and Petition to Make Special
Filing Requirements

• The application must contain
• 3 or fewer independent claims
• 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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(No Transcript)
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Role of Special Program Examiners (SPREs) in the
AE Program

• SPREs are the Deciding Officials on AE Petitions
• Review petitions for compliance with the AE
  Program

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Role of Special Program Examiners (SPREs) in the
AE Program Outcomes

• 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 AE Program and Petition to Make Special
Filing Requirements

• The petition (form PTO/SB/28 recommended) must
  accompany the application and 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
• An accelerated examination support document
  (AESD).
• Applicant should contact the Office if a decision
  is not received by applicant after two months
  from the filing of the petition

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Deficiencies Resulting in Denial of the 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 will be reviewed to verify that it
  was complete for examination on filing

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Deficiencies Resulting in Dismissal of the AE
Petition

• 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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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 should encompass disclosed features that
  may be claimed

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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 Pre-Examination Search

• Pre-Examination Search must include the following
  sources, unless the applicant can specifically
  justify not searching a particular source
• US Patents and published patent applications
• Classified search in the class and subclass where
  the claimed invention is most likely to be
  classified in the current US Patent
  Classification system (USPC)
• Text search that covers the subject matter of the
  claims using terms recognized in the art

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Evaluating the Pre-Examination Search

• Foreign patent documents
• Text search similar to that provided for US
  patents and published patent applications
• Includes the sources required under the PCT
  minimum documentation requirements, located at
• http//www.wipo.int./standards/en/pdf/04-02-01.pdf
  
• May be completed using the USPTO Universal Public
  Workstation (UPWS) in the USPTO Public Search
  Room Facility and Patent and Trademark Depository
  Libraries, or through other available commercial
  database providers

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Evaluating the Pre-Examination Search

• Non-patent literature (NPL)
• Search of the suggested NPL resources from the
  current USPTO search templates, including any
  special tools (e.g. nucleic acid or protein
  sequence searching) found at

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http//www.uspto.gov/web/patents/searchtemplates/s
earchtemplates.htm
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Evaluating the Pre-Examination Search

• 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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Revised AE Program and Petition to Make Special
Filing Requirements

• Accelerated Examination Support Document (AESD)
  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 claim limitation
  disclosed in the references is found
• A detailed explanation of how each claim is
  patentable over the reference
• A concise statement of utility of the invention
• A showing of support for each claim limitation in
  the specification and any parent application,
  including any means-plus-function limitations
• 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)

• The USPTO will adopt a rule of reason when
  evaluating the AESD
• An identification of where each claim limitation
  is found in the reference
• 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 the relevant
  representations of the limitation in the
  reference
• 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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Revised AE Program and Petition to Make Special
Processing Examination Procedures

• Once application is granted special status, the
  application will be promptly taken up for action,
  with special examining procedures set forth in
  the Notice
• The examiner will consider the AE Support
  Document and conduct a complete prior art search

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Revised AE Program and Petition to Make Special
Processing Examination Procedures

• Prior to mailing any first Office action
  rejecting claims,
• An interview will be conducted, unless an
  interview is deemed unlikely to overcome the
  rejection
• 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 AE Program and Petition to Make Special
Processing Examination Procedures

• 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 AE Program and Petition to Make Special
Processing Examination Procedures- Applicants
Response

• Any reply must be
• Filed via EFS-Web
• Complete, fully responsive
• 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
• The above requirements are imposed in order to be
  able to complete the examination within 12 months

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Revised AE Program and Petition to Make Special
Processing Examination Procedures- Applicants
Response

• 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
• Presents claims requiring an updated AE Support
  Document, which is not submitted

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Revised AE Program and Petition to Make Special
Appeal Procedures

• While the mailing of 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
• 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 AE Program and Petition to Make Special
12 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
• Any failure to meet the goal, or other issues
  relating to this goal, are neither petitionable,
  nor appealable

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Revised AE Program and Petition to Make Special
Pointers

• An applicant with a pending application can enter
  this program through the filing of a continuation
• Do not file a preliminary amendment. Incorporate
  the new text into the application as filed
• The explanation of patentability must discuss
  obviousness as well as anticipation
• The sample search on the website shows level of
  documentation required in reporting the search

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Revised AE Program and Petition to Make Special
Additional Information

• Additional information is available on the
  USPTOs web site at
• http//www.uspto.gov/web/patents/accelerated/
• The Sample Search Document may be particularly
  helpful to searchers for providing information in
  the proper format for submission to the Office
• See especially the Guidelines for Applicants
  document
• For inquiries by email AcceleratedExam_at_uspto.gov
  
• Inquiries by telephone Office of Patent Legal
  Administration (OPLA) at [phone], or
  Pinchus M. Laufer at [phone]

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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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Accelerated Examination EFS-Web
Tony Uranga EFS-Web Outreach Team
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Filing Through EFS-Web

• AE application and all follow-on documents must
  be filed through EFS-Web
• The Accelerated Examination petition is filed
  with new Utility or Design Application
• Fees must be paid at time of submission (same
  calendar day)
• AE submission requires 3 additional documents in
  addition to standard patent and design
  application documents (specification, claims,
  abstract, oath/declaration, transmittal, IDS)

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AE Document Descriptions

• AE documents descriptions for new application
• Petition for 12-month Accelerated Examination
  (SB-28 recommended)
• Statement of pre-examination search
• Accelerated Examination support document
• Found in General Transmittal or Petition Category
• AE document descriptions for follow-on
  submissions
• Transmittal amendment/reply Accelerated
  Examination
• Found in General Transmittal category

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E-Commerce Assistance

• Patent Electronic Business Center can assist with
  EFS-Web related questions on Accelerated
  Examination
• 1-866-217-9197 M-F 6am to Midnight ET
• AE Dedicated web page assistance
• http//www.uspto.gov/web/patents/accelerated
• Tutorials, guidelines, examples, FAQs

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The e-Filing Process

• Can File AE applications as a Registered or
  Unregistered user
• Only Registered users can file follow-on papers
  electronically
• Filing process is exactly the same as filing a
  new utility or new design application
• The 3 required AE documents
• Additional petition fee of 130 is required

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The e-Filing Process

• No fee required for applications concerning
• Environmental quality
• Energy
• Counter-terrorism
• Recommended that good image quality documents are
  submitted

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Accelerated ExaminationSB-28 Form

• SB-28 Form is required when Submitting Under
  Accelerated Examination Program
• Must use Version 2.0 of the form and Adobe Reader
  7.0.8
• Version number is located on lower left hand
  corner of each page

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Filing as a Registered User
Select Design or Utility for AE submission
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Entering Bibliographic Data
Enter Bibliographic Data
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Entering Bibliographic Data
Enter Bibliographic Data
Enter Customer Number
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Attach and Validate
Attach, upload and validate documents
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Browse to Attach the Documents
Browse to required AE documents
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AE Required Documents How to Attach
Select Petition General Transmittal Categories
Select required AE documents
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AE Follow-on Required Documents How to Attach
General Transmittal Category
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AE Follow-on Required Documents How to Attach
General Transmittal Category
Select required AE documents Follow-on
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Future EFS-Web and AE Enhancements

• EFS-Web is working on creating a separate
  Accelerated Examination filing process
• A specific Acceleration Examination selection
  button will be made available to e-Filers
• Accelerated Examination required documents
  descriptions will be hard coded at Attach
  Document screen
• E-Filers must attach the required AE documents in
  order to continue with submission
• Possible 2007 spring release

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Additional Training Opportunities

• EFS-Web Basic Training Available
• November 7
• November 28
• EFS-Web Advanced Training Available
• November 3
• November 9
• November 16
• November 30

Please Register for training events at
https//websurveyor.webex.com Schedule Training
at efstraining_at_uspto.gov
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Revised AE Program and Petition to Make Special
QA
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