Action:
Applicants should be given the option of choosing an accelerated examination
procedure. An application subject to an accelerated examination procedure
would have a pendency of no longer than 12 months.
Background Information:
New patent applications are normally taken up for examination in the order
of their effective United States filing date. However, the Commissioner
may provide that a patent application will be advanced out of turn for
examination if a petition to make special under 37 CFR 1.102(c) or (d)
is granted.
Currently, applicants can file a "petition to
make special" for utility patent applications requesting accelerated examination
under the guidelines set forth in MPEP 708.02, subsection VIII. Under the
current "petition to make special" procedure, applicants must (1) pay a $130
petition fee, (2) direct all claims to a single invention, (3) conduct a
pre-examination prior art search, (4) submit a copy of the references most
closely related to the claimed subject matter, and (5) submit a detailed
discussion of the most closely related references. At a cost of $130, it
might be expected that the "petition to make special" procedure would be
widely used. However, the number of petitions to make special, accelerated
examination based on MPEP 708.02, subsection VIII, filed per year has been
very small. For calendar year 1997, 359 petitions were filed; for 1998,
490 petitions were filed; for 1999, 549 petitions were filed; for 2000, 670
petitions were filed; and for 2001, 373 petitions were filed. The reason
for the small number of filings may be that a grantable petition to make
special does not serve to expedite initial application processing and post-allowance
publication, or that the Office has not stated any specific pendency reduction
goal for the "petition to make special" procedure.
The proposed accelerated examination procedure provides an attractive option
to applicants frustrated by extended pendency and who desire their patents
to issue more quickly.
Options Considered:
An
applicant may request expedited examination process for a newly filed
non-provisional application by submitting a request for expedited examination
along with
the required fee at the time of filing of the application. An application
subject to this expedited examination process will have a pendency of no
longer than 12 months. In order for a newly filed non-provisional application
to be eligible for this expedited examination process, the following
requirements to be used in a pilot phase of the program must be met:
· A
complete application must be electronically submitted to the USPTO. Payment
of any patent filing/process fees must be paid by either authorizing the
charge to applicant's deposit account or charging the fees to a credit
card;
· Applicant
must perform a pre-examination search including U.S. patents and published
applications, foreign patents and publications, and non-patent literature. Applicant
must include a statement that a pre-examination search was made, listing
the field of search by class and subclass, databases searched, and the search
queries used in such database searches. Based on the pre-examination search
performed, applicant must provide a presumptive classification for the
application;
· Applicant
must submit an information disclosure statement (IDS) complying with 37 CFR
1.98. Applicant must identify each reference cited in the IDS that is deemed
to be the most closely related to the claimed subject matter and include
a relevancy discussion for each reference identified. Applicant would
be required to supply a copy of each reference identified as the most closely
related to the claimed subject matter in the IDS in an electronic image
format;
· The
application must be limited to a total of no more than 20 claims with no
more than 3 of those claims being independent claims. Examiners will only
examine the independent claims and the dependent claims will stand or fall
with the independent claims; and
· All
the claims must be directed to a single invention.
During prosecution of the application, the following expedited procedures
must be followed:
· The
newly filed non-provisional application will be taken up for examination
by the examiner before all other categories of applications, and the application
will be given a complete first action on an expedited basis. A first action
rejection will set a two-month shortened statutory period for reply. No
supplemental amendment is permitted. No extension of time is permitted;
· All
correspondence to the Office after the initial filing of the application,
including replies to Office actions, must be made by facsimile transmission
or via e-mail within the two-month period;
· The
examiner will, within two weeks from the date of receipt of applicant's reply,
take up the application for final disposition. This disposition will constitute
either a final rejection with a setting of a two-month shortened statutory
period for reply, or a notice of allowance. If a notice of allowance and
issue fee due is mailed, the notice will indicate that applicant is required
to submit a publication ready version of the application along with the issue
fee within one-month from the mailing date of the notice. No extension
of time is permitted;
· If
a final rejection is mailed, the Office action will set a two-month shortened
statutory period for reply. An amendment after final rejection to be entered
must place the application in condition for allowance. Otherwise, a reply
to the final rejection is limited to the filing of a notice of appeal under
37 CFR 1.191 or the filing of a request for continued examination (RCE) under
37 CFR 1.114. The filing of a notice of appeal or an RCE will remove the
application from the expedited examination process;
· During
the two-month period for reply to the final rejection, applicant is encouraged
to request an interview with the examiner for the purpose of reaching an
agreement on an amendment, which would place the application in condition
for allowance. If an agreement cannot be reached to place the application
in condition for allowance, applicant's reply to the final rejection is
limited to the filing of a notice of appeal or an RCE;
· Any
supplemental IDSs must be submitted via an RCE.
After allowance, these applications subject to the expedited examination
process will be given top priority for printing.
USPTO Recommended Course of Action:
Adopt the option with the aforestated criteria as a pilot and seek statutory
change to provide for a cost-based expedited examination procedure that
would guarantee applicant a pendency of no longer than 12 months from filing
to
patent issuance. Implement accelerated examination as part of an additional
track under the proposed multi-track examination process. USPTO has determined
that it has a maximum capacity to handle 5 percent of its workload on an
expedited basis. The pilot will determine whether the criteria produce
an over or under target participation rate.
Proof of Concept:
Once legislation is obtained to establish
a fee for a cost-based expedited examination procedure, USPTO will commence
a pilot program to determine whether the aforestated are the appropriate
criteria for the accelerated examination procedure. The public will be
notified of the availability and the requirements of the pilot program
by means of a publication. The results of the pilot program will be analyzed. The
criteria for the accelerated examination procedure will be revised accordingly
based on the results of the pilot program prior to full implementation
of the accelerated examination procedure.
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