Introduction
The United States Patent and Trademark Office ("USPTO" or "the Office") has recently revised the requirements for filing petitions for accelerated examination ("AE") and other petitions to make special. The new requirements became effective on August 26, 2006. Under the new rules, an applicant will be required to provide additional information with the petition for accelerated examination, and comply with revised procedures throughout the examination process.
The goal of this change is to achieve a final decision by the examiner within 12 months from the filing date of the application. It is important to bear in mind, however, that this twelve-month period is merely a target, and a failure to meet it is neither petitionable nor appealable.
Background information
New patent applications are normally taken up for examination in the order of their United States filing date. Under this system, depending on the technology area to which the application is directed, an applicant may expect to have to wait for years to have his or her application examined, due to the backlog of applications.
There are many factors that contribute to this delay in examination. For example, while applicants are not generally required to perform a search for prior art, they are required to disclose all prior art of which they are aware. Some applicants send a very large number of documents to the examiner, without pointing out the materiality of each reference.
Additionally, examination pendency is influenced by the relatively high number of claims that applicants often include in their applications. For example, over 40% of new applications in FY 2004 had more than 20 claims.
Despite the oft-maligned long pendencies for examination of regular applications, and a fee of only $130, the previous procedure for expedited treatment was not particularly popular with applicants. For example, since 1997, the number of petitions to make special filed has fluctuated between about 300-700 per year.
The reason for the small number of filings may have been that under the old rules, a petition to make special did not expedite initial application processing or post-allowance publication. In addition, the Office had not stated any specific pendency goal. The new procedure addresses these perceived shortcomings, and may thereby increase the popularity of the new expedited process. However, it is interesting to note that the Office has indicated that it only has the capacity to handle up to 5% of its caseload on an expedited basis.
Summary of the new provisions
Eligibility
Any non-reissue utility or design application filed under 35 U.S.C. 111(a) on or after August 26, 2006 is eligible for the new AE process. Plant applications, international applications including applications entering the national stage under 35 U.S.C. 371, and reissue applications are not eligible.
The petition to grant accelerated examination
In addition to conducting and filing the aforementioned pre-examination search (detailed below), to qualify for the new accelerated examination program, an applicant must file:
- The application via the USPTO’s electronic filing system (follow-on submissions must also be electronically filed);
- Three or fewer independent claims and no more than 20 claims in total (the application may not contain any multiple dependent claims);
- A statement agreeing to elect, via telephonic interview and without traverse, a single invention for examination, if so required by the examiner;
- A statement agreeing to an interview with the examiner at the examiner’s request to discuss any issues arising in the examination;
- An "accelerated examination support document" ("AESD") (detailed below); and
- A statement that the applicant will not separately argue the patentability of any dependent claim during any appeal.
In addition, the application must be in condition for examination at the time of filing. The petition 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. There is no opportunity to perfect a petition that accompanies an application that is not in condition for examination at the time of filing.
In those instances in which the petition or the accelerated examination support document is defective, in contrast to the application itself, the applicant will be given a single opportunity to perfect within one month. In that case, however, even if the defective document is corrected in a timely manner, the final disposition of the application may occur later than twelve months from its filing date. If defects are not corrected, the application will lose its accelerated status and instead be treated as a new application awaiting examination in its regular turn.
The accelerated examination support document
As mentioned above, an accelerated examination support document (AESD) must be filed with the petition for AE. The AESD must include:
- An information disclosure statement (IDS) citing the references most closely related to each claim;
- An indication of where each limitation disclosed in the references can be found;
- A detailed explanation of how each claim is patentable over each reference;
- A concise statement of the utility of the invention as defined in each of the independent claims (unless the application is a design application); and
- A showing of support in the specification and any parent application under of 35 U.S.C. 112, first paragraph, for each claim limitation.
Adequacy of the preexamination search
At the time of filing, the applicant must provide a statement that a preexamination search was conducted, including an identification of the field(s) of search by United States class and subclass, and the date(s) of the search. For database searches, the search logic or chemical structure or sequence used as a query and the database service must be disclosed. The USPTO search notes for classification can be consulted to determine if any other highly relevant classes should be considered.
Where the PTO review determines that another or different classification is preferred or required to be searched, the search by the applicant will nevertheless usually be considered acceptable unless the performed search is so divergent that it calls other aspects of the pre-examination search into question. Notably, in instances of differing opinions on the appropriate search area, the submitted search will simply be accepted and the examiner will perform the PTO preferred search during the examination process.
At a minimum, the preexamination search must generally involve the following sources:
- U.S. patents and patent application publications;
- Foreign patent documents, such as the sources required under the PCT minimum documentation requirements; and
- Non-patent literature, such as the resources listed in the current USPTO search templates.
The search must be conducted giving the claims their broadest reasonable interpretation, and should consider both individual features alone and combinations.
Finally, a search report from a foreign patent office will not automatically satisfy the preexamination search requirement—the search report must still satisfy the individual requirements for a preexamination search.
The accelerated examination process
If a petition for AE is granted, the associated application will "promptly" be taken up for action (e.g., within 2 weeks of the grant of the petition). Interestingly, the examiner will consider the AESD and in any case separately conduct a complete prior art search. (According to the USPTO, this process is intended to permit an initial evaluation of the effectiveness of the AESD requirements and the extent to which examiners should rely upon applicant submissions.)
Prior to mailing any first Office Action rejecting claims, a telephone interview will be conducted, unless an interview is deemed unlikely to overcome the rejection. In addition, a conference will be conducted at the USPTO before mailing any final Office Action (i.e., the type of conference conducted in an application on appeal when the applicant requests a pre-appeal brief conference). If the examiner requests an interview to discuss any rejection or objection, he or she will provide the applicant with copies of foreign patent references, non-patent literature documents, and copies of applications not available in the Public PAIR system.
All replies to Office actions must be filed electronically. The period for reply to any Office action other than a final rejection or allowance is one-month. (Extensions of time are generally not available). A final rejection will trigger the standard three-month shortened statutory period for response; extensions of time for response are available at this point. If the applicant decides to amend or add a claim, the applicant is required to submit an updated AE support document, if the amendments were not encompassed by the previously-filed AE support document.
Strategic considerations
An applicant who filed an application prior to August 25, 2006 may still consider whether he or she can benefit from the AE program. For example, if the applicant becomes aware of the infringement of a pending application, the applicant may wish to petition for expedited prosecution under the program. Generally, this can be accomplished by filing a continuation application meeting all the requirements of the AE program.
If the applicant expects to amend the application to include claims directed to other disclosed features of the invention, the applicant should include those features in the initial pre-examination search. Otherwise, the applicant may not have enough time to complete the required additional search and amend the AESD within the shortened period for response.
Applicants under the AE program should bear in mind that no way exists to "withdraw" from the program once a petition for AE is granted. This may be a factor, for example, if the applicant believes he or she may want to prosecute an application that exceeds the limit on the number of claims associated with participation in the AE program.
Applicants should consider that the added obligation under the AE program to search relevant art fields and characterize the search results carries with it all the requirements of the duty of candor in making representations to the Office. Thus, the potential risks associated with allegations of inequitable conduct during enforcement may be increased due to the added obligations required under the AE program.
An applicant who avails him- or herself of the accelerated examination process can also expect to incur additional costs in prosecution as a direct result of the necessary searching and characterization of prior art. Such expenses could add an additional 50% or more to the filing costs, depending on the field of art. The applicant will have to consider whether the amount of time that could potentially be saved by successful participation in the accelerated examination process will justify this added expense. This question will likely often be a function of the expected examination pendency associated with application in a particular art area, when prosecuted under normal procedures.
In light of the aforementioned considerations, it is important to note that participation in the accelerated examination program provides no guarantee that an applicant will receive a final disposition within 12 months. As discussed in this article, the circumstances that may derail an application from the 12-month track are numerous. Therefore, whether an applicant should attempt to take advantage of the PTO’s new program is a question that deserves careful and thoughtful consideration. The experienced patent attorneys of Cooley Godward Kronish, LLP are able to provide the professional counsel to ensure that all relevant considerations are addressed.
Conclusion
The above strategies may not be applicable or appropriate in all situations. Moreover, the above discussion is not an exhaustive review of all strategies that may be employed in light of the proposed rules. As such, we recommend that applicants fully consider the potential benefits and shortcomings of all available strategies before proceeding. The attorneys listed below are available to discuss the latest information and strategies related to the newly-implemented accelerated examination rules.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
