(288) DEPARTMENT OF COMMERCE
Patent and Trademark Office
[Docket No.: PTO-P-2006-0014]
Changes to Practice for Petitions in
Patent Applications to Make Special and for
Accelerated Examination
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Notice.
SUMMARY: The United States Patent and Trademark Office (USPTO) has
established procedures under which the examination of a patent application
may be accelerated. Under one of these procedures, the USPTO will advance an
application out of turn for examination if the applicant files a grantable
petition to make special under the accelerated examination program. The
USPTO is revising its procedures for applications made special under the
accelerated examination program with the goal of completing examination
within twelve months of the filing date of the application. The USPTO is
similarly revising the procedures for other petitions to make special,
except those based on applicant's health or age or the recently announced
Patent Prosecution Highway (PPH) pilot program between the USPTO and the
Japan Patent Office.
DATES: Effective Date: The change in practice in this notice applies to
petitions to make special filed on or after August 25, 2006.
FOR FURTHER INFORMATION CONTACT: Pinchus Laufer, Detailee, Office of
Patent Legal Administration, Office of the Deputy Commissioner for Patent
Examination Policy, by telephone at (571) 272-7726, or by facsimile at
(571) 273-7726. Comments concerning petition to make special practice may
be sent by electronic mail message over the Internet addressed to
MPEPFeedback@uspto.gov, or submitted by mail addressed to:
Mail Stop Comments - Patents, Commissioner for Patents, P.O. Box 1450,
Alexandria, VA, 22313-1450.
Any inquiries concerning electronic filing of the application should be
directed to the Electronic Business Center (EBC) at (866) 217-9197. Any
inquiries concerning a specific petition to make special should be
directed to the appropriate Technology Center Special Program Examiner.
SUPPLEMENTARY INFORMATION: New patent applications are
normally taken up for examination in the order of their United States
filing date. The USPTO has a procedure for requesting accelerated
examination 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 37 CFR 1.102 and Manual of
Patent Examining Procedure Sec. 708.02 (VIII) (8th ed. 2001) (Rev.
3, August 2005) (MPEP). The USPTO is revising its procedures for
applications made special under the accelerated examination program
with the goal of completing examination within twelve months of the
filing date of the application. See Part VIII (subsection
The Twelve-Month Goal) for more information.
The USPTO is similarly revising the procedures for other petitions to
make special, except those based on applicant's health or age or the
PPH pilot program. Specifically, other petitions to make special
(i.e., petitions based on: manufacture, infringement,
environmental quality, energy, recombinant DNA, superconductivity
materials, HIV/AIDS and cancer, countering terrorism, and biotechnology
applications filed by small entities (see MPEP Sec. 708.02))
will be processed and examined using the revised procedure for
accelerated examination. Thus, all petitions to make special, except
those based on applicant's health or age or the PPH pilot program, will
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be required to comply with the requirements of petitions to make
special under the accelerated examination program that are set forth in
this notice.
Any petition to make special, other than those based on applicant's
health or age or the PPH pilot program, filed on or after the effective
date must meet the requirements set forth in this notice. Applications
filed before the effective date will not be eligible for the revised
accelerated examination program. Until the effective date, applicant
may file a petition to make special in an application filed before the
effective date by complying with the previous guidelines and
requirements in MPEP Sec. 708.02 (I-II, and V-XII). A petition to make
special filed after the effective date will only be granted if it is
based upon applicant's health or age or is under the PPH pilot program,
or if it complies with the requirements set forth in this notice. See
Part VIII, for more information on eligibility.
Part I. Requirements for Petitions to Make Special under
Accelerated Examination: A new application may be granted
accelerated examination status under the following conditions:
(1) The application must be filed with a petition to make special under
the accelerated examination program accompanied by either the fee set
forth in 37 CFR 1.17(h) or a statement that the claimed subject matter
is directed to environmental quality, energy, or countering terrorism.
See 37 CFR 1.102(c)(2). Applicant should use form PTO/SB/28
for filing the petition.
(2) The application must be a non-reissue utility or design application
filed under 35 U.S.C. 111(a).
(3) The application, petition, and required fees must be filed
electronically using the USPTO's electronic filing system (EFS), or
EFS-Web. If the USPTO's EFS and EFS-Web are not available to the public
during the normal business hours for these systems at the time of
filing the application, applicant may file the application, other
papers and fees by mail accompanied by a statement that EFS and EFS-Web
were 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.
(4) At the time of filing, the application must be complete under 37
CFR 1.51 and in condition for examination. For example, the application
must be filed together with the basic filing fee, search fee,
examination fee, and application size fee (if applicable), and an
executed oath or declaration under 37 CFR 1.63. See Part
VIII (subsection Conditions for Examination) for more information.
(5) The application must contain three or fewer independent claims and
twenty or fewer total claims. The application must also not contain any
multiple dependent claims. By filing a petition to make special under
the accelerated examination program the applicant is agreeing not to
separately argue the patentability of any dependent claim during any
appeal in the application. Specifically, the applicant is agreeing that
the dependent claims will be grouped together with and not argued
separately from the independent claim from which they depend in any
appeal brief filed in the application (37 CFR 41.37(c)(1)(vii)). The
petition must include a statement that applicant will agree not to
separately argue the patentability of any dependent claim during any
appeal in the application. See form PTO/SB/28.
(6) The claims must be directed to a single invention. If the USPTO
determines that all the claims presented are not directed to a single
invention, applicant must make an election without traverse in a
telephonic interview. The petition must include a statement that
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applicant will agree to make an election without traverse in a
telephonic interview. See form PTO/SB/28.
(7) The applicant must be willing to have an interview (including an
interview before a first Office action) to discuss the prior art and
any potential rejections or objections with the intention of clarifying
and possibly resolving all issues with respect to patentability at that
time. The petition must include a statement that applicant will agree
to have such an interview when requested by the examiner. See form PTO/
SB/28.
(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 by United States class and subclass 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.
(A) This preexamination search must involve U.S. patents and patent
application publications, foreign patent documents, and non-patent
literature, unless the applicant can justify with reasonable certainty
that no references more pertinent than those already identified are
likely to be found in the eliminated source and includes such a
justification with this statement.
(B) This preexamination search must be directed to the claimed
invention and encompass all of the features of the claims, giving the
claims the broadest reasonable interpretation.
(C) The preexamination search must also encompass the disclosed
features that may be claimed. An amendment to the claims (including any
new claim) that is not encompassed by the preexamination search or an
updated accelerated examination support document (see item 9) will be
treated as not fully responsive and will not be entered. See
Part IV (Reply by Applicant) for more information.
(D) A search report from a foreign patent office will not satisfy
this preexamination search requirement unless the search report satisfies
the requirements set forth in this notice for a preexamination search.
(E) Any statement in support of a petition to make special must be
based on a good faith belief that the preexamination search was
conducted in compliance with these requirements. See 37 CFR
1.56 and 10.18.
(9) At the time of filing, applicant must provide in support of the
petition an accelerated examination support document.
(A) An accelerated examination support document must include an
information disclosure statement (IDS) in compliance with 37 CFR 1.98
citing each reference deemed most closely related to the subject matter
of each of the claims.
(B) For each reference cited, the accelerated examination support
document must include an identification of all the limitations in the
claims that are disclosed by the reference specifying where the
limitation is disclosed in the cited reference.
(C) The accelerated examination support document must include a
detailed explanation of how each of the claims are patentable over the
references cited with the particularity required by 37 CFR 1.111(b) and
(c).
(D) The accelerated examination support document must include a concise
statement of the utility of the invention as defined in each of the
independent claims (unless the application is a design application).
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(E) The accelerated examination support document must include a showing
of where each limitation of the claims finds support under the first
paragraph of 35 U.S.C. 112 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, para. 6; 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, para. 6. 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
the first paragraph of 35 U.S.C. 112 in each such application in which
such support exists.
(F) The accelerated examination support document must identify any
cited references that may be disqualified as prior art under 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)).
Part II. Decision on Petition To Make Special:
Applicant will be notified of the decision by the deciding
official. If the application and/or petition does not meet all the
prerequisites set forth in this notice for the application to be
granted special status (including a determination that the search is
deemed to be insufficient), the applicant will be notified of the
defects and the application will remain in the status of a new
application awaiting action in its regular turn. In those instances in
which the petition or accelerated examination support document is
defective in one or more requirements, applicant will be given a single
opportunity to perfect the petition or accelerated examination support
document within a time period of one month (no extensions under 37 CFR
1.136(a)). This opportunity to perfect a petition does not apply to
applications that are not in condition for examination on filing.
See Part VIII (subsection Condition for Examination). If the
document is satisfactorily corrected in a timely manner, the petition
will then be granted, but the final disposition of the application may
occur later than twelve months from the filing date of the application.
Once a petition has been granted, prosecution will proceed according to
the procedure set forth below.
Part III. The Initial Action on the Application by the Examiner:
Once the application is granted special status, the application will be
docketed and taken up for action expeditiously (e.g., within two weeks of
the granting of special status). If it is determined that all the claims
presented are not directed to a single invention, the telephone restriction
practice set forth in MPEP Sec. 812.01 will be followed. Applicant must make
an election without traverse during the telephonic interview. If applicant
refuses to make an election without traverse, or the examiner cannot reach
the applicant after a reasonable effort, the examiner will treat the first
claimed invention (the invention of claim 1) as constructively elected
without traverse for examination. Continuing applications (e.g., a
divisional application directed to the non-elected inventions) will not
automatically be given special status based on papers filed with the
petition in the parent application. Each continuing application must on its
own meet all requirements for special status.
If the USPTO determines that a possible rejection or other issue must
be addressed, the examiner will telephone the applicant to discuss the
issue and any possible amendment or submission to resolve such issue.
The USPTO will not issue an Office action (other than a notice of
allowance) unless either: (1) An interview was conducted but did not
result in the application being placed in condition for allowance; or
(2) there is a determination that an interview is unlikely to result in
the application being placed in condition for allowance. Furthermore,
prior to the mailing of any Office action rejecting the claims, the
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USPTO will conduct a conference to review the rejections set forth in
the Office action.
If an Office action other than a notice of allowance or a final Office
action is mailed, the Office action will set a shortened statutory
period of one-month or thirty-days, whichever is longer. No extensions
of this shortened statutory period under 37 CFR 1.136(a) will be
permitted. 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.
Part IV. Reply by Applicant: A reply to an Office action must be
limited to the rejections, objections, and requirements made. Any amendment
that attempts to: (1) Add claims which would result in more than three
independent claims, or more than twenty total claims, pending in the
application; (2) present claims not encompassed by the preexamination
search (see item 8 of Part I) or an updated accelerated examination support
document (see next paragraph); or (3) present claims that are directed to a
nonelected invention or an invention other than previously claimed in the
application, will be treated as not fully responsive and will not be
entered. See Part VIII (subsection Reply Not Fully responsive) for more
information.
For any amendment to the claims (including any new claim) that is not
encompassed by the accelerated examination support document in Part I,
item 9, applicant is required to provide an updated accelerated
examination support document that encompasses the amended or new claims
at the time of filing the amendment. Failure to provide such updated
accelerated examination support document at the time of filing the
amendment will cause the amendment to be treated as not fully
responsive and not to be entered. See Part VIII (subsection
Reply Not Fully Responsive) for more information. Any IDS filed with an
updated accelerated examination support document must also comply with
the requirements of 37 CFR 1.97 and 1.98.
Any reply or other papers must be filed electronically via EFS-Web so
that the papers will be expeditiously processed and considered. If the
papers are not filed electronically via EFS-Web, or the reply is not
fully responsive, the final disposition of the application may occur
later than twelve months from the filing of the application.
Part V. Post-Allowance Processing: The mailing of a
notice of allowance is the final disposition for purposes of the
twelve-month goal for the program. In response to a notice of
allowance, applicant must pay the issue fee within three months from
the date of mailing of the Notice of Allowance and Fee(s) Due (form
PTOL-85) to avoid abandonment of the application. In order for the
application to be expeditiously issued as a patent, the applicant must
also: (1) Pay the issue fee (and any outstanding fees due) within one
month from the mailing date of the form PTOL-85; and (2) not file any
post-allowance papers that are not required by the USPTO (e.g., an
amendment under 37 CFR 1.312 that was not requested by the USPTO).
Part VI. 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 Board of Patent
Appeals and Interferences (BPAI) 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
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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 BPAI.
Any after-final amendment, affidavit, or other evidence filed under 37
CFR 1.116 or 41.33 must also meet the requirements set forth in Part IV
(Reply by Applicant). If applicant files a request for continued
examination (RCE) under 37 CFR 1.114 with a submission and fee, the
submission must meet the reply requirements under 37 CFR 1.111
(see 37 CFR 1.114(c)) and the requirements set forth in Part
IV (Reply by Applicant). The filing of the RCE is a final disposition
for purposes of the twelve-month goal for the program. The application
will retain its special status and remain in the accelerated
examination program. Thus, the examiner will continue to examine the
application in accordance with the procedures set forth in Part III and
any subsequent replies filed by applicant must meet the requirements of
Part IV. The goal of the program will then be to reach a final
disposition of the application within twelve months from the filing of
the RCE.
Part VII. Proceedings Outside the Normal Examination Process:
If an application becomes involved in proceedings outside the normal
examination process (e.g., a secrecy order, national security review,
interference, or petitions under 37 CFR 1.181-1.183), the USPTO will treat
the application special under the accelerated examination program before
and after such proceedings. During those proceedings, however, the
application will not be accelerated. For example, during an interference
proceeding, the application will be treated in accordance with the normal
interference procedures and will not be treated under the accelerated
examination program. Once any one of these proceedings is completed, the
USPTO will process the application expeditiously under the accelerated
examination program until it reaches final disposition, but that may occur
later than twelve months from the filing of the application.
Part VIII. More Information: Eligibility: Any non-reissue utility or
design application filed under 35 U.S.C. 111(a) on or after the effective
date of this program is eligible for the revised accelerated examination
program. The following types of filings are not eligible for this revised
accelerated examination program: Plant applications, reissue applications,
applications entering the national stage from an international application
after compliance with 35 U.S.C. 371, reexamination proceedings, RCEs under
37 CFR 1.114 (unless the application was previously granted special status
under the program), and petitions to make special based on applicant's
health or age or under the PPH pilot program. Rather than participating in
this revised accelerated examination program, applicants for a design
patent may participate in the expedited examination program by filing a
request in compliance with the guidelines set forth in MPEP Sec. 1504.30.
See 37 CFR 1.155.
Form: Applicant should use form PTO/SB/28 for filing a petition to make
special, other than those based on applicant's health or age or the PPH
pilot program. The form is available on EFS-Web and on the USPTO's Internet
Web site at http://www.uspto.gov/web/forms/index.html.
Conditions for Examination: The application must be in condition for
examination at the time of filing. This means the application must include
the following:
(A) Basic filing fee, search fee, and examination fee, under 37 CFR
1.16 (see MPEP section 607(I)),
(B) Application size fee under 37 CFR 1.16(s) (if the specification and
drawings exceed 100 sheets of paper) (see MPEP section 607(II));
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(C) An executed oath or declaration in compliance with 37 CFR 1.63;
(D) A specification (in compliance with 37 CFR 1.52) containing a
description (37 CFR 1.71) and claims in compliance with 37 CFR 1.75;
(E) A title and an abstract in compliance with 37 CFR 1.72;
(F) Drawings in compliance with 37 CFR 1.84;
(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) in ASCII text as part of an associated file (if applicable);
(H) Foreign priority claim under 35 U.S.C. 119(a)-(d) identified in the
executed oath or declaration or an application data sheet (if applicable);
(I) Domestic benefit claims under 35 U.S.C. 119(e), 120, 121, or
365(c)in compliance with 37 CFR 1.78 (e.g., the specific reference
to the prior application must be submitted in the first sentence(s) of
the specification or 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);
(J) English language translation under 37 CFR 1.52(d), a statement
that the translation is accurate, and the processing fee under 37 CFR
1.17(i) (if the specification is in a non-English language);
(K) No preliminary amendments present on the filing date of the
application; and
(L) No petition under 37 CFR 1.47 for a non-signing inventor.
Furthermore, if the application is a design application, the
application must also comply with the requirements set forth in 37 CFR
1.151-1.154.
Applicant should also provide a suggested classification, by class and
subclass, 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.
The petition to make special will be dismissed if the application omits
an item or includes a paper that causes the Office of Initial Patent
Examination (OIPE) 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.
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 one month or thirty-days, whichever
is longer, for applicant to supply the omission or a fully responsive reply.
No extensions of this time period under 37 CFR 1.136(a) will be permitted.
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 or it is a reply to a final Office action,
no additional time period will be given. The time period set forth in
the previous Office action will continue to run.
Withdrawal From Accelerated Examination: There is no
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provision for "withdrawal" from special status under the
accelerated examination program. An applicant may abandon the
application that has been granted special status under the accelerated
examination program in favor of a continuing application, and the
continuing application will not be given special status under the
accelerated examination program unless the continuing application is
filed with a petition to make special under the accelerated examination
program. The filing of an RCE under 37 CFR 1.114, however, will not
result in an application being withdrawn from special status under the
accelerated examination program.
The Twelve-Month Goal: The objective of the accelerated examination
program is to complete the examination of an application within twelve
months from the filing date of the application. The twelve-month goal is
successfully achieved when one of the following final dispositions occurs:
(1) The mailing of a notice of allowance; (2) the mailing of a final Office
action; (3) the filing of an RCE; or (4) the abandonment of the application.
The final disposition of an application, however, may occur later than the
twelve-month timeframe in certain situations (e.g., an IDS
citing new prior art after the mailing of a first Office action).
See Part VII for more information on other events that may
cause examination to extend beyond this twelve-month time frame. In any
event, however, this twelve-month timeframe is simply a goal. Any
failure to meet the twelve-month goal or other issues relating to this
twelve-month goal are neither petitionable nor appealable matters.
Paperwork Reduction Act: This notice involves information collection
requirements which are subject to review by the Office of Management and
Budget (OMB) under the Paperwork Reduction Act of 1995 (44 U.S.C. 3501 et
seq.). The collection of information involved in this notice has been
reviewed and previously approved by OMB under OMB control number 0651-0031.
The Office has submitted a Change Worksheet to OMB for review of form
PTO/SB/28 Petition to Make Special Under the Accelerated Examination.
Notwithstanding any other provision of law, no person is required to
respond to nor shall a person be subject to a penalty for failure to
comply with a collection of information subject to the requirements of
the Paperwork Reduction Act unless that collection of information
displays a currently valid OMB control number.
Section 708.02 of the Manual of Patent Examining Procedure
will be revised in due course to reflect this change in practice.
June 20, 2006 JON W. DUDAS
Under Secretary of Commerce for
Intellectual Property and Director of the
United States Patent and Trademark Office
[1308 OG 106]