1. Accelerating Patent
Prosecution
Thursday, October 18, 2012

2. • Petition to Make Special
• Accelerated Examination
• Prioritized Examination
• First Action Interview Pilot Program
• Patent Prosecution Highway

3. Petition to Make Special MPEP 708.02
• Applicant is 65 or older
– “Statement by one named inventor that he/she
is 65” or more
– Requires proof of age or statement from
practitioner
• Applicant’s health
– Normal course of prosecution may result in
applicant’s inability to assist prosecution
– Requires proof
• Application advanced out of turn
• No fee required

4. Accelerated Examination MPEP 708.02(a)
• Goal: 12 months to disposition
• Available for
– Utility applications
– Design applications (MPEP 708.02(a)(VIII)(A)
• Not available for
– Plant applications
– Reissue applications
– §371 national stage applications
– Reexamination proceedings
– RCEs (unless the previously granted special status); and
– Petitions to make special based on applicant’s health or
age or under the PPH pilot program

5. Accelerated Examination MPEP 708.02(a)
• Filing petition:
– Fee ($130) (except for environment, energy, anti-terrorism, or
superconductivity inventions)
– Application must be "complete" and "in condition for examination"
 e.g., all required fees, oath/declaration of actual inventor, spec,
claims, drawing, title, abstract, priority claims
– File electronically
– Include suggested classification (class and subclass)
– 3 independent claims; 20 total; no multiple dependent claims
– No preliminary amendments
– Statement of agreement:
 to have interview w/Examiner to discuss prior art/potential rejections with
intent to resolve all patentability issues at that time
 to elect by telephone interview, without traverse, if restriction required
 not to argue patentability of any dependent claim separately on appeal
– Patentability search + support document

6. Accelerated Examination MPEP 708.02(a)
• Pre-filing patentability search; describe search methods
• Accelerated Examination Support document
– IDS and references
– Identification of all claim limitations disclosed in each
reference, and where
– Detailed explanation of how each claim is patentable
over the cited references
– Identify support for each claim limitation in the
specification
• Petition dismissed if any items omitted

7. Accelerated Examination MPEP 708.02(a)
• Expedited prosecution
– Goal:12 months to allowance, final OA, RCE, or abandonment
– Failure to meet goal is not petitionable nor appealable
– Examiner begins examination within two weeks
– Examiner will telephone applicant with restriction requirement
– Applicant must elect w/o traverse by telephone
– Special status for continuing apps must be petitioned individually
– Examiner telephones applicant to discuss any rejections
– If interview does not result in allowance, OA is mailed
– One month to reply to non-final OA, or abandonment
– No extensions of time permitted
– USPTO has conference prior to mailing any OA (same as for pre-appeal
brief review)
– Appeal not accelerated but post-appeal prosecution is accelerated
– RCE will delay disposition, but the prosecution remains accelerated

8. Prioritized Examination (AIA) MPEP 708.02(b)
• Goal: 12 months to disposition, 1st OA within 4 months
• Track I of Three Track Initiative
• Current cap of 10,000 requests granted/year (may change upon evaluation of
program)
– 4239 grants as of June 18, 2012
• Available for:
– Utility applications
– Plant applications
– RCEs (including §371 nationalizations) (but only 1st RCE)
– CON, CIP, DIV, bypass CONs
– Regardless of whether parent application had "prioritized" status
– File separate request for each
• Not available for:
– Design applications
– Reissue applications
– §371 nationalizations – newly filed
– Reexam

9. Prioritized Examination (AIA) MPEP 708.02(b)
• Filing:
– Certification and request form PTO/SB/424
– Filed with new application
– Filed concurrent with or subsequent to filing RCE (but before 1st OA)
– PE fee ($4800; $2400 small entity) and processing fee ($130)
– All fees (including filing, search, exam, publication) paid concurrent with
request
– Claim limitation: 4 independent, 30 dependent, no multiple dependent
claims
– No support doc required, however, “applicants should consider one or
more of the following”:
– Acquiring good knowledge of the state of the prior art
– Filing application in condition for examination (same as AE)
– Filing replies completely responsive to OAs
– Being prepared to conduct interviews with examiner
– File electronically

10. Prioritized Examination (AIA) MPEP 708.02(b)
• Expedited prosecution
– Goal: 12 months to allowance, final OA,
Appeal, RCE, or abandonment
– Placed in examiner’s special docket
– Normal time periods for reply
– Extensions of time terminate priority status
– Amendments outside of claim number
limitations terminate priority status
– Priority does not continue through Appeal,
Interference, or after filing RCE

11. First Action Interview Pilot Program
• Opportunity to advance through prosecution by discussing
the case with the Examiner before any rejections
• Makes grant of interview before 1st OA non-discretionary
– Distinguish from MPEP 713.02 re: discretionary
interview
• Examiner supplies search and pre-interview
communication prior to interview
• 2100 requests so far
• Extended through November 16, 2012
– Office currently analyzing feedback to July 9, 2012
request for comments

12. First Action Interview Pilot Program
• Requirements:
– Utility application or §371 nationalization (no
reissues)
– Request must be filed prior to 1st OA
– Claim limitation: 3 independent, 20 total, no
multiple dependent
– Preliminary amendment allowed to fix claims
– Single invention – elect without traverse or
withdraw from program

13. First Action Interview Pilot Program
• File request electronically
• 1 month to fix any errors and comply with requirements (not extendable)
• Application not advanced out of turn
• Examiner conducts prior art search
• Examiner allows claims, schedules interview (minor amendments) OR
provides pre-interview communication
– Includes citations to prior art references
– Includes identification of any rejections and/or objections if at least one claim
is not allowable
– 1 month to respond
• Amendments between communication and 1st OA (if any) entered at
Examiner’s discretion
• Applicant can choose whether to have the interview
– File request to not have interview  OA and 1 month to respond
– File reply (pre-interview communication treated as OA), or
– Schedule the interview (w/in 60 days) and file proposed amendments or
remarks

14. First Action Interview Pilot Program
• Interview
– Be prepared to discuss:
– Assist examiner in understanding invention
– Establish the state of the art
– Patentable features of claimed invention
– If agreement, allowance
– If no agreement, OA entered
– 1 month to respond; limited extensions of time
– Applicant can choose to convert proposed amendments
into reply

15. Patent Prosecution Highway
• An application with claims determined to be patentable in an
Office of First Filing (OFF) may be eligible to go through an
accelerated examination in an Office of Second Filing (OSF).
– OSF uses search and examination results of OFF
• Claims determined to be patentable in a PCT also apply (Written
Opinion; Int. Prelim Report on Patentability)
– Test basis: JPO, EPO, KIPO, APO, ROSPATENT, SPTO
– Called PCT-PPH program
• Direct claim of priority not necessary
– ex: a bypass con that claims benefit to a PCT application, which PCT
application claims priority to application A filed with the OFF
– When a claim of application A is considered allowable, the bypass
con is eligible for PPH

16. Patent Prosecution Highway
Requirements:
• Application to be accelerated must have a qualifying
relationship to the OFF/PCT application
• At least one claim in the OFF/PCT application must
be indicated as patentable
• All of the claims in the application must "sufficiently
correspond" to the claims in the OFF/PCT application
– “sufficiently correspond” if scope is same or similar
– Commentators note that this is the difficult part in practice
– Basically, copy the claims in the OFF/PCT application
– Perhaps suggest Examiner Amendment
• Substantive examination for the application cannot
have already started (No OA)

17. Patent Prosecution Highway
• Procedure:
– Submit request to enter PPH by EFS
 No petition fee
– Submit copies of all actions from OFF
applications with allowable claims
– Submit IDS and copies of documents it lists
– Submit claims correspondence table
– if PPH request is not granted there is one
chance to fix any problems in the request
– when request granted (usually within 2 months),
examination is accelerated
– examined 2-3 months after PPH request granted

18. Patent Prosecution Highway
The U.S. application must be:
• a Paris Convention application which either validly claims priority to one or more applications
filed in a qualifying OFF, or validly claims priority to a PCT application that contains no
priority claims;
• a national stage application under the PCT, which PCT application validly claims priority
under sec. 365(b) to an application filed in the OFF; validly claims priority to another PCT
application that contains no priority claim; or contains no priority claim;
• a bypass application filed under 35 USC 111(a) that claims benefit under 35 USC 120 to a
PCT application, which PCT application 1. Claims priority under 35 USC 365(b) to an
application filed with the OFF, or 2. Claims priority under 35 USC 365(b) to a PCT
application that contains no priority claims, or 3. contains no priority claims;
• a national stage entry of the corresponding PCT application;
• a national stage entry of another PCT application which claims priority to the corresponding
PCT application;
• a national application that claims domestic/ foreign priority to the corresponding PCT
application;
• a national application which forms the basis for the priority claim in the corresponding PCT
application;
• a continuing application of an OSF application that satisfies one of the conditions above; or
• if the USPTO is the OSF, a U.S. application that claims domestic benefit to a U.S.
provisional application which forms the basis for the priority claim in the corresponding PCT
application.

19. Patent Prosecution Highway
• Benefits:
– Reduced pendency
 Examined before other categories of apps (except
special status and accelerated examination)
 25% first action allowance
– Greater success
 ~92% allowance rate
– Reduced costs
 Average 1.7 actions per disposal

20. Comparison
PTMS AE PE FAI PPH
Disposition 12 months 12 months
Goal
Disposition 10 months (as of 5.19 months
Actual 2/2009)
(40 months avg)
Time to 1st OA 1.64 months 22 months 6 months
(22 months avg)
1st OA Avg? 43% (as of 4/9/2012) Avg? 35% 25%
allowance rate
Allowance rate 64% (at disposition) 51% (at 92%
(51% avg) disposition)
Additional cost None $130 petition fee + $4800 PE fee + None Cost to prepare claim
cost for search and $130 petition fee correspondence table,
support document office actions,
translations
Cost savings Fewer OAs Fewer OAs – 1.7 (2.5
avg)
Risks/ - Additional Petition Shortened
disadvantages prosecution record separately for periods to
- Shortened periods to RCE reply, limited
reply, no extensions - PE ends at extensions
appeal
Additional Post appeal -Reduced Reduced prosecution
Benefits prosecution and RCE prosecution record
remain accelerated record