Accelerated Examination

Green Technology Petition Pilot Program

Robert W. Bahr Acting Associate Commissioner

for Patent Examination Policy

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Discussion Points

1. Accelerated Examination (AE)

2. Green Technology Pilot Program

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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/index.jsp

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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

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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

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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 pre-examination 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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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

Accelerated ExaminationAccelerated ExaminationInformation LinksInformation Links

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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

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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, 112-

115, 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

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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

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Green Tech: Statistics

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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 (Pinchus.Laufer@uspto.gov) and Blaine Copenheaver (Blaine.Copenheaver@uspto.gov)

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Thank You!Thank You!