(287) DEPARTMENT OF COMMERCE
Patent and Trademark Office
[Docket No.: PTO-P-2016-0024]
Changes in Accelerated Examination Practice
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Notice.
SUMMARY: In 2006, the United States Patent and Trademark Office (USPTO
or Office) introduced the accelerated examination program to permit an
application to be advanced out of turn if the applicant files a
grantable petition under the program. Since its institution, the patent
landscape has witnessed numerous legal changes such as the America
Invents Act (AIA), the Patent Law Treaties Implementation Act (PLTIA)
implementing the provisions of the Patent Law Treaty (PLT), and the
USPTO's adoption of the Cooperative Patent Classification system (CPC)
along with changes to USPTO systems. Accordingly, the Office is
updating the accelerated examination program to reflect these changes
in the law and examination practice.
DATES: Effective on August 16, 2016.
FOR FURTHER INFORMATION CONTACT: Pinchus M. Laufer, Senior Legal Advisor
((571) 272 7726) or Matthew Sked, Legal Advisor ((571) 272-7627), Office of
Patent Legal Administration, Office of the Deputy Commissioner for Patent
Examination Policy.
SUPPLEMENTARY INFORMATION:
I. Purpose of the Notice
The USPTO published a notice in June 2006 (2006 AE Notice) to implement
the accelerated examination program under which an application will be
advanced out of turn for examination if the applicant files a petition to
make special with the appropriate showing. See Changes in Practice for
Petitions in Patent Applications To Make Special and for Accelerated
Examination, 71 FR 36323 (June 26, 2006). This showing requires the
applicant to meet several conditions, including conducting a
pre-examination search, providing an accelerated examination support
document (AESD), and requiring the application be complete under
37 CFR 1.51 at the time of filing. In light of recent changes in the law
such as the America Invents Act (AIA), Patent Law Treaties Implementation
Act (PLTIA) to implement the provisions of the Patent Law Treaty (PLT) and
the conversion to the Cooperative Patent Classification system (CPC), some
of the requirements and practices of the program reflected in the 2006 AE
Notice are no longer appropriate. Therefore, the program is being updated
to account for these changes. The full updated accelerated examination
guidelines may be found on the accelerated examination Web page
(http://www.uspto.gov/patent/initiatives/accelerated-examination) and in a
forthcoming update to the Manual of Patent Examining Procedure (MPEP). In
particular, the changes are explained beginning at Section I.A of this
notice. Subsequent to the implementation of the AE program in 2006, the
Office implemented the prioritized examination program (referred to as
"Track I") provided for in the AIA in a final rule published on
September 23, 2011. See Changes to Implement the Prioritized Examination
Track (Track I) of the Enhanced Examination Timing Control Procedures under
the Leahy-Smith America Invents Act, 76 FR 59050 (September 23, 2011).
Since implementation of Track I in 2011, the USPTO has received fewer than
200 AE requests annually. In view of the relatively low usage of the AE
program, the USPTO plans to publish a request for comments in the Federal
Register to seek public input on whether there is value in retaining the
AE program in view of the more popular Track I program.
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A. Pre-Examination Search
The 2006 AE Notice requires that the pre-examination search include A
classification search of the United States Patent Classification system
(USPC) by class and subclass. 71 FR at 36324. However, the USPTO has since
harmonized its classification system for utility applications with Europe
to create a common classification scheme known as the CPC. Therefore, a
classified search of U.S. patents and published patent applications would
need to include the relevant group(s)/subgroup(s) of the CPC rather than
the class(es)/subclass(es) of the USPC. Applicants should consult with the
USPTO's classification resources to determine the relevant group(s)/
subgroup(s) of the CPC to consider. The classification resources may be
found in Chapter 900 of the MPEP
(http://www.uspto.gov/web/offices/pac/mpep/documents/0900.htm) and the
Office of Patent Classification Home Page
(http://www.uspto.gov/patents-application-process/patent-search/
classification-standards-and-development). It is noted that a
pre-examination search regarding a design application should continue to
use the USPC because the CPC only applies to utility applications.
B. Accelerated Examination Support Document
The accelerated examination support document (AESD) was previously
required to contain an indication of whether any cited references may be
disqualified as prior art under pre-AIA 35 U.S.C. 103(c) as amended by the
Cooperative Research and Technology Enhancement (CREATE) Act (Pub. L.
108-453, 118 Stat. 3596 (2004)). 71 FR at 36325. In 2011, the AIA was
enacted, which amended 35 U.S.C. 103 to remove subsection (c). Instead,
applicants enjoy a common ownership and obligation of assignment exception
to prior art under AIA 35 U.S.C. 102(b)(2)(C). Therefore, an application
that is subject to examination under AIA 35 U.S.C. 102 and 103 would need
to, instead, include an indication in the AESD whether any of the cited
prior art may be disqualified as prior art under 35 U.S.C. 102(b)(2)(C).
Applications that are subject to examination under pre-AIA 35 U.S.C. 102
and 103 would need to continue to indicate whether any of the cited
references are disqualified as prior art under pre-AIA 35 U.S.C. 103(c).
Applicants should consult MPEP 2159 in ascertaining whether the application
is subject to examination under pre-AIA or AIA 35 U.S.C. 102 and 103.
Applicants are reminded, that if the application is filed on or after
March 16, 2013, and claims the benefit of or priority to an application
where the filing date of a foreign, U.S. provisional, U.S. nonprovisional,
or international application is prior to March 16, 2013, it is necessary
for the applicant to specify whether pre-AIA or AIA 35 U.S.C. 102 and
103 applies.
It is noted that further minor changes have been made to the 2006 AE
Notice to reflect changes made by the AIA such as the citation change of
35 U.S.C. 112(a) and (f) and the appeal board's designation as the Patent
Trial and Appeal Board (PTAB).
C. Reply by Applicant
The 2006 AE Notice provides shortened statutory periods of one month or
thirty days, whichever is longer, without extensions under 37 CFR 1.136(a).
71 FR at 36325, 36327. This provision of the 2006 AE Notice was updated in
2013, when the Office issued a final rule to implement the PLT stating:
"The Office is revising the Accelerated Examination program to provide that
Office actions (other than a notice of allowance) will set a shortened
statutory period for reply of at least two months. In addition, extensions
of this shortened statutory period under 37 CFR 1.136(a) will be permitted,
but filing a petition for an extension of time will result in the
application being taken out of the Accelerated Examination program."
Changes To Implement the Patent Law Treaty, 78 FR 62368, 62373 (Oct. 21,
2013).
D. Complete Application Upon Filing
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In listing the conditions that must be met at the time of filing, the
2006 AE Notice states that no petition under 37 CFR 1.47 for a non-signing
inventor may be present. 71 FR at 36327. However, in implementing the AIA,
37 CFR 1.47 was removed and 37 CFR 1.46 was amended to allow an assignee,
an obligated assignee, or a person who otherwise shows sufficient
proprietary interest in the matter to make an application for patent.
Included among the amendments to 37 CFR 1.46 is a provision in
37 CFR 1.46(b)(2) that requires a petition in order to designate a person
with sufficient proprietary interest as the applicant. Thus, the conditions
for participation in the AE are hereby revised to preclude any petition
under 37 CFR 1.46(b)(2) to designate a person with sufficient proprietary
interest as the applicant. In fact, applicant should refrain from filing
any petition that would delay the processing of the application including a
petition under 37 CFR 1.78 to accept a delayed benefit claim.
Additionally, the 2006 AE Notice states that a foreign priority claim
under 35 U.S.C. 119(a)-(d) should be identified in the executed oath or
declaration or an application data sheet (if applicable). 71 FR at 36326.
Further, the 2006 AE notice also states that any domestic benefit claim
must be in the first sentence of the specification or in an application
data sheet. 71 FR at 36326. However, after the AIA, current rules require
all domestic benefit and foreign priority claims to be made in the
application data sheet (except for foreign priority claim in a national
stage application under 35 U.S.C. 371) (see 37 CFR 1.55 and 1.78).
Therefore, any priority claim would need to be made in an application data
sheet under 37 CFR 1.76.
Finally, the 2006 AE Notice requires the applicant to file using the
USPTO's electronic filing system (EFS) or EFS-Web. The USPTO's original
electronic filing system (EFS) was discontinued. Therefore, applicants will
need to file their accelerated examination applications through EFS-Web.
It is noted that an executed oath or declaration is no longer a
condition for examination after the AIA. However, it is a requirement under
37 CFR 1.51 and will need to be present upon filing for entry in the
program. A missing oath or declaration will not result in a notice to file
missing parts when the application is reviewed by the Office of Patent
Application Processing (OPAP). Nonetheless, the presence of the oath or
declaration in compliance with 37 CFR 1.63 or substitute statement in
compliance with 37 CFR 1.64 will subsequently be reviewed in the Technology
Centers by the Quality Assurance Specialist (QAS) office. Failure to have a
compliant oath, declaration, or substitute statement upon filing will
prevent the application from being accorded special status.
II. Changes to the 2006 AE Notice
As detailed above, the 2006 AE Notice has been modified to reflect
changes in law and examination practice. The changes are set out below as
paragraphs that replace paragraphs in the original notice.
The changes in Part I are as follows:
71 FR at 36324, col. 2, fifth paragraph ("(3) . . .") is replaced
with the following:
(3) The application, petition, and required fees must be filed
electronically using the USPTO's electronic filing system (EFS-Web). If the
USPTO's EFS-Web is not available to the public during the normal business
hours for the system at the time of filing the application, applicant may
file the application, other papers, and fees by mail accompanied by a
statement that EFS-Web was not available during the normal business hours,
but the final disposition of the application may occur later than twelve
months from the filing of the application. See Part VIII (subsection The
Twelve-Month Goal) for more information.
71 FR at 36324, col. 3, fourth paragraph ("(8) . . .") is replaced with
the following:
(8) At the time of filing, applicant must provide a statement that a
preexamination search was conducted, including an identification of the
field of search (i.e., group/subgroup of the CPC for utility applications
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and class/subclass of the USPC for design applications) and the date of the
search, where applicable, and for database searches, the search logic or
chemical structure or sequence used as a query, the name of the file or
files searched and the database service, and the date of the search.
71 FR at 36325, col. 1-2, ninth paragraph ("(E) . . .") is replaced with
the following:
(E) The accelerated examination support document must include a showing
of where each limitation of the claims finds support under 35 U.S.C. 112(a)
in the written description of the specification. If applicable, the showing
must also identify: (1) Each means- (or step-) plus-function claim element
that invokes consideration under 35 U.S.C. 112(f); and (2) the structure,
material, or acts in the specification that correspond to each means-
(or step-) plus-function claim element that invokes consideration under
35 U.S.C. 112(f). If the application claims the benefit of one or more
applications under title 35, United States Code, the showing must also
include where each limitation of the claims finds support under 35 U.S.C.
112(a) in each such application in which such support exists.
71 FR at 36325, col. 2, first paragraph ("(F) . . .") is replaced
with the following:
(F)(1) For an application that is subject to examination under the
pre-AIA 35 U.S.C. 102 and 103: The accelerated examination support
document must identify any cited references that may be disqualified as
prior art under pre-AIA 35 U.S.C. 103(c) as amended by the Cooperative
Research and Technology Enhancement (CREATE) Act (Pub. L. 108-453, 118
Stat. 3596 (2004)).
(F)(2) For an application that is subject to examination under AIA
35 U.S.C. 102 and 103: The accelerated examination support document must
identify any cited references that may be disqualified as prior art under
35 U.S.C. 102(b)(2)(C).
The changes in Part III are as follows:
71 FR at 36325, col. 3, second paragraph ("If an . . .") is replaced
with the following:
If an Office action other than a notice of allowance is mailed, the
Office action will set a shortened statutory period of two (2) months.
Extensions of time under the provisions of 37 CFR 1.136(a) will be
permitted, but will result in the application being taken out of the
program. Failure to timely file a reply will result in abandonment of the
application. See Parts V and VI for more information on post-allowance and
after-final procedures.
The changes in Part VI are as follows:
71 FR at 36326, col. 1-2, third paragraph ("After-Final and Appeal
Procedures") is replaced with the following:
After-Final and Appeal Procedures: The mailing of a final Office action
or the filing of a notice of appeal, whichever is earlier, is the final
disposition for purposes of the twelve-month goal for the program. Prior to
the mailing of a final Office action, the USPTO will conduct a conference
to review the rejections set forth in the final Office action (i.e., the
type of conference conducted in an application on appeal when the applicant
requests a pre-appeal brief conference). In order for the application to be
expeditiously forwarded to the Patent Trial and Appeal Board (PTAB) for a
decision, applicant must: (1) Promptly file the notice of appeal, appeal
brief, and appeal fees; and (2) not request a pre-appeal brief conference.
A pre-appeal brief conference would not be of value in an application under
a final Office action because the examiner will have already conducted such
a conference prior to mailing the final Office action. During the appeal
process, the application will be treated in accordance with the normal
appeal procedures. The USPTO will continue to treat the application special
under the accelerated examination program after the decision by the PTAB.
The changes in Part VIII are as follows:
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71 FR at 36326, col. 3, ninth paragraph ("(G) . . .") is replaced with
the following:
(G) Electronic submissions of sequence listings in compliance with
37 CFR 1.821(c) or (e), large tables, or computer listings in compliance
with 37 CFR 1.96, submitted via the USPTO's electronic filing system
(EFS-Web) in ASCII text as part of an associated file (if applicable);
71 FR at 36326, col. 3, tenth paragraph ("(H) . . .") is replaced with
the following:
(H) Foreign priority claim under 35 U.S.C. 119(a)-(d) identified in
the application data sheet (if applicable);
71 FR at 36326-27, col. 3, eleventh paragraph ("(I) . . .") is
replaced with the following:
(I) Domestic benefit claims under 35 U.S.C. 119(e), 120, 121, 365(c), or
386(c) in compliance with 37 CFR 1.78 (e.g., the specific reference to the
prior application must be submitted in an application data sheet, and for
any benefit claim to a non-English language provisional application, the
application must include a statement that: (a) An English language
translation, and (b) a statement that the translation is accurate, have
been filed in the provisional application) (if applicable);
71 FR at 36327, col. 1, third paragraph ("(L) . . .") is replaced with
the following:
(L) No petition under 37 CFR 1.46(b)(2) to designate a person with
sufficient proprietary interest as the applicant.
71 FR at 36327, col. 1, fifth paragraph ("Applicant should . . .") is
replaced with the following:
Applicant should also provide a suggested classification (i.e.,
group/subgroup of the Cooperative Patent Classification for utility
applications or class/subclass of the U.S. Patent Classification for design
applications) for the application on the transmittal letter, petition, or
an application data sheet as set forth in 37 CFR 1.76(b)(3) so that the
application can be expeditiously processed.
71 FR at 36327, col. 1, sixth paragraph ("The petition . . .") is
replaced with the following:
The petition to make special will be dismissed if the application omits
an item or includes a paper that causes the Office of Patent Application
Processing (OPAP) to mail a notice during the formality review (e.g., a
notice of incomplete application, notice to file missing parts, notice to
file corrected application papers, notice of omitted items, or notice of
informal application). The opportunity to perfect a petition (Part II) does
not apply to applications that are not in condition for examination on
filing.
71 FR at 36327, col. 1, seventh paragraph ("Reply Not . . .") is
replaced with following:
Reply Not Fully Responsive: If a reply to a non-final Office action is
not fully responsive, but a bona fide attempt to advance the application to
final action, the examiner may provide two (2) months for applicant to
supply the omission or a fully responsive reply. Extensions of time under
the provisions of 37 CFR 1.136(a) are permitted, but will result in the
application being taken out of the program. Failure to timely file the
omission or a fully responsive reply will result in abandonment of the
application.
If the reply is not a bona fide attempt, no additional time period will
be given. The time period set forth in the previous Office action will
continue to run.
August 10, 2016 MICHELE K. LEE
Under Secretary of Commerce for Intellectual Property and
Director of the United States Patent and Trademark Office
[1430 OG 57]