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United States Patent Classification: Workshop for Patent Information User’s Group 20th

Annual Conference

Office of Patent ClassificationU.S. Patent and Trademark Office

Alexandria, VAMay 22,2008

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Presentation Overview

Section 1 (Steve)Introduction Basic Facts About USPCInternal Uses & External Uses

Section 2 (Terry)Reclassification Projects Types, Properties of USPC Schedules and Definitions, Types of Subclasses including Harmonized E-Subs, Classification Type Terminology (OR, PR, XR), Theoretical Model for Organization of a Class

Section 3: Classifying Documents in USPC (Joe)Controlling Claim, Most Comprehensive Claim, Exercises

Section 4: Tools for Searchers (Steve)USPC on WWW, IPC on WWW, PTDL, PSF

Section 5: IPC and Tri-Lateral Harmonization Efforts (Terry)Section 6: Accelerated Examination & Examination Support Documents (Steve)

Overview, Petition Requirements, ESDs

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Has been in use for over 107 years471 Classes> 159,000 Subclasses

USPC Master Classification File (MCF) contains more than 9.75 Million USPTO Documents

Patent, Pre-grant Publications, andOther Documents (Plant patents, Design patents, pre-1836 X patent documents, Statutory Invention Registrations, Defensive publications, etc.)

Facilitates Prior Art SearchFacilitates Assigning work to organizations and people at USPTO

Ranges of Subclasses within classes are assigned to Art Units within the Technology Centers (TCs)Art Units employ Examiners

Basic Facts: USPC…

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New Case Routing, Assignment and Docketing PGPub Classification, by outsourcing contractorReclassification, by outsourcing contractorReclassification activities including classification data processing and publishing, by internal staffClassification Data MCF bi-Monthly Data Loads, for BRS Search

Searching, by USPTO Examiners and Staffby Search Professionalsby Public, at PTDLsExamination Support Documents, Accelerated Examination

PublishingGrants and Pubs, by publication contractorOfficial Gazette

Data Exchange, with foreign IPOsData Sales, to entitiesStatistical Reporting

USPTO Processes Linked to USPC

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Class Schedules Class Schedules

Context Model: USPC, PTO Publications, Patent Applications, Processes & People

> 9.7 Million USPTO Publications

USPC {Cl/SC} to Art Unit data

USPC {Cl/SC} to Art Unit data

ClassDefinitionsClassDefinitions

Index to USPC

Index to USPC

USPC- to-IPC Concor dances

USPC- to-IPC Concor dances

471 Classes

159,053Sub-Classes

Classified into

~ 1 M USPTO Patent Applications

Relied on by

Examined by

Researched by

PTO Publications & Applications

USPC

• > 5,600 USPTO Examiners• Thousands of Searchers• USPTO Contractors • Other IPOs• “The Public”, PTDLs• 10’s of Thousands of

Inventors• > 400,000 Inventions Per

year

And Docketed by

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External Uses of USPC

Re-use in commercial search systems & commercial information productsPrior Art Search

by Inventors, by Search Firms, by Researchers, by Publicat PTDL (USPC is a pillar in 7-Step U.S. Patent Search Strategy taught by PTDLP and referenced by many on WWW)at USPTO Public Search Facility (PSF)

Search Templates, indexed to USPC Class/SubclassesMechanism for Monitoring Activity in an Art AreaExamination Support Document (ESD) Requirements for Accelerated Examination (AE)How else are you using USPC?

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Section 2 (Terry)

Reclassification Projects Types, Properties of USPC Schedules and Definitions, Types of Subclasses including Harmonized E-Subs, Classification Type Terminology (OR, PR, XR), Theoretical Model for Organization of a Class

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Types of Reclassification Projects

Harmonize with IPC, ECLA, JPO/FINationalBreakdown overcrowded artCreate cross-reference art collectionsConsolidate scattered artReorganization of artSpecial (e.g., Nanotechnology)

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ClassA class generally separates one

technology from another.

SubclassA subdivision of art within a class; each

subclass delineates processes, structural features, or functional features of the subject matter covered by a class.Subclasses are subordinate to a class

USPC Schedules and Definitions, Terminology

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Class ScheduleThe Manual of Classification (MOC)

The collection of all the USPC class schedules

Classes Arranged by Related Subject MatterClassed Arranged by Art Unit

USPC Schedules and Definitions, Terminology

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Class DefinitionsClasses have a Class DefinitionSubclasses have a Subclass Definition

Index to USPCUSPC to IPC ConcordanceUSPC to LOCARNO ConcordanceClassification Orders resulting from Reclassification Projects

Document Changes to USPC

USPC Schedules and Definitions, Terminology

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USPC Classification Schedule Terminology –

Types of Subclasses

MAINLINE – subclasses at the first level of “indentation” under the class

Indented, Subordinate – subclasses indented under another subclass

Coordinate – subclasses that depend from the same subclass and are at the same indent level

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USPC Classification Schedule Terminology –

Types of Subclasses

Primary (a sub-class that can be an OR orPR)

“Regular” subclasses e.g., 257/9, D6/406.3Alpha – Subclasses with alphanumeric e.g., 73/304R, 73/304C

Secondary E-subs – EPO European Classification (ECLA) 257/E43.001XRAC – Cross-reference art collections 388/907, 977/700DIG – Digests 29/DIG17, 165/DIG510FOR – Foreign Art Collections 165/FOR104

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Note -

Harmonized Subclasses in USPC

The JPO (FI) and EPO (ECLA) systems are International Patent Classification (IPC) based systems.

E-subclasses are intended to be an integral part of a multi-step process to harmonize the USPTO, EPO and JPO classification systems. They are usually added as Cross-Reference Art Collections to the US class schedules.

E-subclasses to date have been based upon ECLA classifications that correspond in whole or in part to portions of US classes. ECLA contains all European and US documents and some Japanese patent documents. Initially, when E-subclasses are published in USPC the E-subclasses are populated with US and Foreign documents that have been classified by EPO examiner and classifiers.

Maintenance of E-subs in USPC belongs to USPTO staff and contractors. Classification of US documents into a USPC primary subclass that has a corresponding harmonized subclass, will include designation of at least one E-subclass as a cross reference (patent) or secondary classification (PGPub).

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Class 100, Sample Schedule Views on WWW

MAINLINE ViewMAINLINE View All Indent Levels ViewAll Indent Levels View

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USPC Document Classification Types

Original (OR) classification of Patent DocumentsDefined by its “position” when a document has multiple classificationsEvery Patent has one and only one OR classificationOR classifications may only be in Primary SubclassesSubclasses are characterized by the OR documents

Primary (PR) classification of PGPub DocumentsEvery PGPub has one and only one PR classificationPR classifications may only be in Primary Subclasses

Cross-reference (XR) classifications of Patent Documents & Secondary (SR) classifications of PGPub Documents

May be in Numbered, Alpha, Cross-Reference Art Collections or in Digest subclasses

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Have Titles – title is descriptive of subject matterClasses are mutually exclusive - no overlapDefinitions Describing in detail the type of subject matter in the class or subclass

Notes to distinguish one class from anotherDefine exceptionsOther locations to search for related subject matter

Subclasses incorporate titles and definition of parent subclasses

USPC Classes & Subclasses - Properties

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USPC Classification Schedules

General Subclass Arrangement is from Complex and Special Combinations to Simple

Classes “within” ClassesIndicated in Class Schedules by “Box notes”

Carry hierarchical relationships of parent schedule Refer to other Classes

Class 128 SURGERY and Classes 600, 601, 602Class 260 CHEMISTRY OF CARBON COMPOUNDS and Classes 518, 520-528, 530, 532, 534, 536, 540, 544, 546, 548, 549, 552, 554, 556, 558, 560, 562, 564, 568

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Sample –

Class 100, Switch Between Mainline and

All Indent Schedule Level Views on WWW

1. Click on Drop-down list, Select desired View 1. Click on Drop-down list, Select desired View

Coo

rdin

ate

Mai

nlin

e Su

bcla

sses 2. Click on

Submit 2. Click on

Submit

Indented Subclasses

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Subclass Full Title Example from USPC on WWW

Click on Subclass title in schedule to view subclass

full-title or hierarchy

Click on Subclass title in schedule to view subclass

full-title or hierarchy

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USPC Model of a Class Covering ”A”

Indented Subclasses General SpecificLess limited More limited

General - Simple - Less Comprehensive

Specific - Complex - More Comprehensive

Coo

rdin

ate

Subc

lass

esCONDITION RESPONSIVE OR AUTOMATIC CONTROLMEASURING AND TESTINGSPECIALSCOMBINATIONS WITH SUBJECT MATTER OF ANOTHER CLASSCONVERTIBLEPLURAL

SUBCOMBINATIONS SPECIALIZED TO THE CLASS

MISCELLANEOUS

Basic Subject Matter of Class “A”

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USPC Classification Definitions

Define and elaborate on the class schedules and subclass titlesSet forth the properties and circumstances possessed by all the subject matter that is intended to be included in the class/subclass and not possessed completely by any other subclassDetail relationships to related USPC areas

Line NotesSearch This Class, Subclass notesSearch Class, Subclass notes

Published in subclass number orderViewable on-line in “full-definition” view

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Classification Definitions -

Parts of a Class Definition

Statement of general subject matter of the classLines to other classes*See or Search Class referencesSee or Search This Class Subclass referencesSee Other Classification systemsGlossary

Note: * The “Lines to Other Classes” section of the class definition should be used only to specify relationships that cannot be codified as “see or search class” or “see or search this class subclass” references.

Note: * The “Lines to Other Classes” section of the class definition should be used only to specify relationships that cannot be codified as “see or search class” or “see or search this class subclass” references.

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Statement of general subject matter of the subclassSee or Search Class referencesSee or Search This Class Subclass referencesSee Other Classification systemsGlossary

USPC Classification Definitions -

Parts of a Subclass Definition

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USPC –

What Publication Features Get Classified?

The Invention as Defined by the Claims Read in the Light of the Disclosure

A separate Mandatory Classification is required for each claim which is separately classifiable

Claimed Inventive Subcombinations Also Require Mandatory Classification

Other Publication Features Can Lead to Discretionary Classifications

Up to person classifying the document

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Section 3: Mr. Joe Falk

Inclusive and Exhaustive Nature of Subclasses

2 ExamplesClassifying within a Class

3 ExercisesControlling ClaimMost Comprehensive Claim

2 ExercisesRules for Determining the Class for an Invention

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Inclusive Nature Of Subclasses

A patent document is classified in a subclass so long as the subclass covers at least a portion of the claimed subject matter of the document.

Example follows…

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Inclusive Nature of Subclasses -

Example

Consider a claim to a table and chair combination.

Where would the combination be classified in the following classification schedule?

1 TABLE, CHAIR, AND CUPHOLDER2 TABLE3 CHAIR

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Exhaustive Nature of Coordinate Subclasses

Each subclass, among coordinate subclasses, is a complete collection of the subject matter it provides for that did not fall out above it in the schedule

For example, in the following coordinate array of subclasses, all patents disclosing AB (except those containing ABC) will be in subclass 2 (or a subclass indented under it)1 ABC2 AB3 AC

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Classifying Within a Class

1. Classify each claim independently, a separate mandatory classification is required for each claim which is separately classifiable

2. Classify all claims by traversing the coordinate branches and subordinate leafs of the schedule.

The OR classification is the most indented subclass in the first appearing subclass array in the schedule, which is commonly the first (highest) mandatory classification appearing in the schedule.

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Classifying Within a Class (cont.)

3 ExercisesAssume for the following 3 exercises that the claimed subject matter fits in one class…

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100 A OR B OR C101 . A and B102 . A103 . . With C104 . C105 . . With D106 . . With E

Claim 1 - A & B

Document OR classified in subclass

101

Exercise 1: Classifying Combinations within a Class; Selecting the Original (OR) Subclass

Class X

Classified in Subclass 101Claim 2 – A & C Classified in Subclass 103

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100 A OR B OR C101 . A and B102 . A103 . . With C104 . C105 . . With D106 . . With E

Claim 1 - C & F

Document OR classified in subclass

105

Exercise 2: Classifying Combinations within a Class; Selecting the Original (OR) Subclass

Class X

Classified in Subclass 104Claim 2 - C, D & E Classified in Subclass 105

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1 BAR, LINK, AND BALL2 BAR AND LINK3 BAR AND BALL4 CHAIN5 . With end fastener6 . . With flaccid cover7 . . Removable8 BAR9 LINK10 BALL11 . Hollow12 . . Perforated

Exercise 3: Searching and Classifying Combinations

Where would you CLASSIFY a combination of a link, ball, and chain?

Where would you SEARCH for a combination of a link, ball, and chain?

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The controlling claim determines which USPC Class the Original (OR) classification of a granted US patent is assigned to when subject matter of the claim(s) is classifiable in different classes.

Definition -

The Controlling Claim

:

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I) The class that takes the most comprehensive claim (note: the notion of most comprehensive claim is defined next)

II) The class that takes the claim that is the highest in the hierarchy of categories of subject matter

III) Selection Among Superiority of Types of Subject Matter

IV) The first appearing relevant class in the “CLASSES WITHIN THE U.S. CLASSIFICATION SYSTEM, Arranged by Related Subject Matter”

How to determine the Class for the Invention –

The Controlling Claim

:

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Definition: The most comprehensive claim is defined as the claimed disclosure setting forth the greatest combinatorial extent of elements.

Details of subcombinations are irrelevant for determination of Most Comprehensive Claim

Does not apply when subject matter of individual claims is not related.

I. THE MOST COMPREHENSIVE CLAIM

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Claim 1. A cake making device comprising a baking oven, having a heating means and means to hold a pan,

in combination with a cooling chamber, in combination with an icing chamber.

Claim 2. The device of claim 1 wherein the baking oven has three different baking pan positions and a pair of heating elements

Claim 3. The device of claim 1 in combination with a wrapping chamber.

Determining Most Comprehensive Claim, Example 1

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Claim 1. A process of preparing an un-iced cake comprisingheating batter in a pan in an oven, and cooling theresultant cake.

Claim 2. A process of preparing an iced cake, comprisingheating batter in a pan in an oven,cooling the resultant cake,and icing the cake.

Claim 3. A process of preparing a wrapped, iced cake, comprising making an iced cake, and wrapping the iced cake.

Determining Most Comprehensive Claim, Example 2

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II. Hierarchy Of Categories Of Subject Matter

(1) Process of using the product (2).

(2) The product.

(3) Process of making the product (2).

(4) Apparatus to make the product (2).

(5) Material used to make the product (2).

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III. Selection Among Superiority of Types of Subject Matter

1. Relating to maintenance or preservation of life

2. Chemical subject matter 3. Electrical subject matter 4. Mechanical subject matter

a. Dynamic (relates to moving things or combinations of relatively moving parts)

b. Static (stationary things or parts nonmoveably related)

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IV. The first appearing relevant class in the CLASSES WITHIN THE U.S. CLASSIFICATION SYSTEM, Arranged by Related Subject Matter

The document of “special rules”The tie breaker!Note on Super-conductor Technology

http://www.uspto.gov/web/offices/opc/documents/classescombined.pdf

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Section 4: Tools for Searchers –

Steve

USPTO USPC WWW Home Page

International Patent Classification

PTDLP & PTDL 7-Step Strategy

Search Templates

Text Search – PATFT, APPFT

USPTO Public Search Facility

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USPTO USPC WWW Homepage

http://www.uspto.gov/web/offices/opc

/

http://www.uspto.gov/web/offices/opc

/

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http://www.uspto.gov/go/classification/http://www.uspto.gov/go/classification/

USPTO USPC WWW Search Home Page

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On-line HTML and PDF Classification Schedules and Definitions

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USPTO WWW USPC Index to USPC

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USPTO WWW USPC Classification Orders

Classification Orders document the history of changes to USPC. Several views into these histories are accessible on USPTO WWW.

Classification Orders document the history of changes to USPC. Several views into these histories are accessible on USPTO WWW.

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USPC Classification Order Index (COI)

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Classification Order Number, Date, Reclassification Project Number, Project TeamSummary of USPC Classifications Abolished and Established and Art Units effectedSections

Section A – Classification Manual ChangesSection B – Listing of Principle Source of Established and Disposition of Abolished SubclassesSection C – Changes to U.S. – I.P.C. ConcordanceSection D – Definition Changes and New or Additional

USPC Classification Orders –

Parts of the Class Order

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USPTO USPC WWW International Patent Classification Links

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Searching IPC with TACSY natural language queries

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IPC Catchword Index

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EPO IPC-based European Classification (ECLA) –

Example

of an ECLA Scheme not based on current version of IPC -

Challenge for Tri-lateral Projects

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USPTO WWW USPC Concordance -

Sample

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USPTO PTDL 7-Step U.S. Patent Search Strategy

Classification

1. Brainstorm keywords related to the purpose, use and composition of the invention.

2. Look up the words in the Index to the U.S. Patent Classification to find potential class/subclasses.

3. Verify the relevancy of the class/subclasses by using the Classification Schedule in the Manual of Classification .

4. Read the Classification Definitions to verify the scope of the subclasses and note “see also”

references.

Access Full-Text

5. Search the Issued Patents and the Published Applications databases by “Current US Classification”

and access full-text patents and published applications.

Review and References

6. Review the claims, specifications and drawings of documents retrieved for relevancy.

7. Check all references and note the “U.S. Cl.”

and “Field of Search”

areas for additional class/subclasses to search.

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USPTO Search Templates –

STIC & TCs

Search templates define the field of search, search tools, and search methodologies which should be considered each time a patent application is examined in that classification area. The templates describe search tools for U.S. and foreign patents and non-patent literature. Additionally, general Internet search tools used by patent examiners are listed.

The search templates are based upon input from patent examiners and other searchers at the USPTO and capture their institutional knowledge of the most relevant prior art search sources for determining the patentability of subject matter in the area of technology. The listed areas represent where (what resources) and how (methodology) most of the prior art considered in the examination process is found during the search process.

The templates provide more structure to the search activity and set a standard to measure the completeness of any search. In addition to the "where to search" information, the search templates provide important guidance on what tools and methodologies; e.g. structure searches (tool) and classified searching, respectively, should be employed in the search process.

Applicants can use the templates in formulating their own pre-examination searches prior to the filing of a U.S. patent application or the submission of a "Petition to Make Special" (based on MPEP 708.02, subsection VIII. -special examining procedure for certain new applications - accelerated examination).

http://www.uspto.gov/web/patents/searchtemplates/

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USPTO Patent and PGPub Search

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USPTO Patent and PGPub Search Field codes

Field Code Field Name Field Code Field Name

PN Patent Number IN Inventor Name

ISD Issue Date IC Inventor City

TTL Title IS Inventor State

ABST Abstract ICN Inventor Country

ACLM Claim(s) LREP Attorney or Agent

SPEC Description/Specification AN Assignee Name

CCL Current US Classification AC Assignee City

ICL International Classification AS Assignee State

APN Application Serial Number ACN Assignee Country

APD Application Date EXP Primary Examiner

PARN Parent Case Information EXA Assistant Examiner

RLAP Related US App. Data REF Referenced By

REIS Reissue Data FREF Foreign References

PRIR Foreign Priority OREF Other References

PCT PCT Information GOVT Government Interest

APT Application Type

Field Code Field Name Field Code Field Name

DN Document Number IN Inventor Name

PD Publication Date IC Inventor City

TTL Title IS Inventor State

ABST Abstract ICN Inventor Country

ACLM Claim(s) GOVT Government Interest

SPEC Description/Spe cification AN Assignee Name

CCL Current US Classification AC Assignee City

ICL International Classification AS Assignee State

APT Application Type ACN Assignee Country

APN Application Serial Number KD Pre-Grant Publication

Document Kind Code

APD Application Date RLAP Related US App. Data

PRIR Foreign Priority PCT PCT Information

Patent Full-text DatabasePatent Full-text Database Pre-Grant Publication DatabasePre-Grant Publication Database

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Section 5: IPC and Tri-Lateral Harmonization Efforts (Terry)

IPC and Tri-Lateral Harmonization EffortsBenefits

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USPTO Role of OPC and ILS staff with IPC and Tri-lateral Projects

Office of Patent Classification (OPC) and International Liaison Staff (ILS) for technical projects

Work with representatives from WIPO on IPC projectsLead and Participate in Tri-lateral Harmony Projects with EPO, JPO and WIPO

Level of participation varies by projectParticipate on IPC Projects and Task ForcesAttend IPC Revision Working Group (RWG) meetings and Committee of Experts (CE) meetingsCoordinate Tri-lateral projects with IPC Core and Advanced Level maintenanceEducating USPTO employees, Improving IPC placements

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International Patent Classification – IPC Reform

Resulted in the creation of the Core Level (CL) and Advance Level (AL)The Advance Level Subcommittee (ALS) responsible for AL reclassificationStandardized SequenceCreation of Quality Control Task Force (QCTF) to investigate IPC classification problems and propose solutions

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International Patent Classification – IPC Reform

As a major enhancement of IPC Reform, existing patent documents have been updated to reflect international reclassification activities effective as of January 1, 2006.

Accordingly, US Patents and US Published Applications (PGPUBs) have been updated to include IPC Reform classification data resulting from reclassification activities.

IPC Reform format change – eliminates the need to zero fill or pad the IPC Main Group to a minimum number of digits (this approach supports further expansion of the IPC Classification system) – merely search as represented in the IPC Classification schedule, without spaces, as ‘AnnAn/nn’ (e.g., A41D20/00, B03C3/32, C07D501/14, H04N5/225, etc.)

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International Patent Classification – IPC Reform, “9th Edition”

Entering into force January 2009Creation of new subclass H04W for “wireless communication”Continued creation of IPC definitions, removal of informative references from the schemesRemoval of references from guidance headingsOption for searching terms and cross references in the schemes, definitions, and Catchword Index on WWW

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Classification Harmonization

Share reclassification workIncrease in documents to be classified

500,000 (EPO: ECLA) 500,000 (JPO: FI) 300,000 (USPTO: USPC) docs / yearFurther increase expected

Establish a well-structured documentationFacilitate access to foreign documents with common schemesEnhance the availability of foreign documentsFurther expand (IPC Advanced Level)

Linked to the USPTO Strategic Plan

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Classification Harmonization (cont.)

Office EPO JPO USPTO

System ECLA FI USPC

Basis IPC IPC USPC

Applied to most of PCT min. JP only US only*

Classifications 125,000 190,000 159,000

Three different classification systems(IPC-AL: 70,000 Classifications)

* Routine classification of foreign documents into USPC stopped ~ 1996, however, foreign documents are now added to USPC via Harmony Projects and

E-Subs.

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Positive Effects of Trilateral Office & IPC Harmonization

One Harmonized Classification Scheme across all Tri-Lateral Offices and the IPC One Harmonized Classification Scheme across all Tri-Lateral Offices and the IPC

USPTOJPOEPO IPC

Nano docs. Nano docs. Nano docs. B82B & C

IPC search in Nano technology

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Trilateral Harmony into IPC

No.of divisionsHarmonized

USPCUSPC

1985 1990 1995 2000 2006 2009 2012

150K

50K

100K

200K

Int.Cl4

FIFI

ECLAECLAAdvanced Level

Core Level(30% of ALClasses)

Reformed IPCReformed IPC

68711groups

Int.Cl5 Int.Cl6 Int.Cl7

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Section 6: Steve

Accelerated Examination (AE) OverviewExamination Support Documents (ESD)

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Accelerated ExaminationAccelerated Examination

Overview

Filing Requirements

Examination Procedure

Statistics through 02/20/08

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Accelerated Examination Overview

GOAL: Achieve a final decision by the examiner within 12 months from the filing dateEffective August 25, 2006

Petitions prior to this date are not included

The new requirements apply to allpetitions to make special, except for:

Age and healthPatent Prosecution Highway

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Accelerated Examination Filing Requirements

Be filed electronicallyBe complete at filingContain 3 independent and 20 total claims or fewer directed to a single inventionInclude a petitionInclude a fee (unless the claims are directed to environmental quality, energy, or countering terrorism)

The application must:

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The petition must include statements that applicant:

Will make election without traverseWill have an interviewWill not separately argue any dependent claim during appeal

The petition must be accompanied by:

A pre-examination searchAn accelerated examination support document (ESD)

Accelerated Examination Filing Requirements (cont.)

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Petition will be initially denied if:It fails to meet filing requirementsApplication is not eligible (plant, reissue, reexam, 371)

Petition will be dismissed if it has defects:

Defects will be specifically notedApplicant has one chance to cure

Petition will be ultimately denied if:Applicant was unable to cure defects in prescribed time period

Accelerated Examination Review Within the USPTO

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The pre-examination search must include a search of:

U.S. PatentsPatent application publicationsForeign patent documentsNon-patent literature

Search directed to the claimed invention giving claims their broadest reasonable interpretationInclude a classified search and text search

Accelerated Examination The Pre-Examination Search

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Will include specifics of deficiency with suggestions for overcoming it

Unless it is readily apparent that the applicant’s search is wholly deficient

Here, only general guidance directed at improving the search will be given in the decision

Petition Dismissal or Denial:

Accelerated Examination If the Search is Deficient

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An information disclosure statement citing each reference deemed most closely related to the claimsAn identification of where each limitation disclosedin each reference is found

Refer to specific paragraphs or drawing elementsA detailed explanation of how each claim is patentable over each reference

Be specific – general statements are not sufficient

The accelerated examination support document must include:

Accelerated Examination The Examination Support Document

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A concise statement of utility of the invention A showing of support for each claimlimitation in the specification

Point to page, line numbers or drawing elements

An identification of any cited reference(s) that may be disqualified as prior art under 35 U.S.C. 103(c)

Accelerated Examination The Examination Support Document

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The application will be taken up for action shortly after petition decisionThe examiner will complete a prior art searchPrior to any first Office action rejection:

Conference held to confirm rejection Telephone or personal interview is conducted

An additional conference will be held prior to any final rejection

Accelerated Examination Examination Processing

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Search the claimed invention. The search must be commensurate in scope with the claims.Search should include U.S. Patents and pubs, foreign patents & pubs and non-patent literature.Provide the text search logic. A listing of terms will not suffice.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 found in each reference. A chart is a clear, convenient format.Clearly point out by specific claim language how each claim is patentable over each reference.

Accelerated Examination Tips for Getting a Petition Granted

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AE Petitions Status as of 2/20/08 (All filed N=657 as of 8/31/07)

264, 40%

224, 34%

87, 13%

76, 12%0, 0%6, 1%

Granted

Denied (Not Meeting Formal Requirements, such asapplication not being complete upon filing)

Denied (Based on Merits)

Dismissed (No response from Applicant - Applicantcould have cured, but chose not to attempt)

Pending (Undecided)

Express Abandonments

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AEs Decided on Merits/Substance 2/20/08 (Met formal req’ts, N=427 as of 8/31/07)

264, 62%

87, 20%

76, 18%

Granted

Denied

Dismissed (No response from Applicant - Applicantcould have cured, but chose not to respond)

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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 Examination Information Links

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Thank You PIUG

And, Congratulations on 20 Years!