[Federal Register: June 26, 2006 (Volume 71, Number 122)]
[Notices]
[Page 36323-36327]
From the Federal Register Online via GPO Access [wais.access.gpo.gov]
[DOCID:fr26jn06-42]
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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.
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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
[[Page 36324]]
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 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
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
[[Page 36325]]
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).
(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, ] 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, ] 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
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
[[Page 36326]]
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 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://frwebgate.access.gpo.gov/cgi-bin/leaving.cgi?from=leavingFR.html&log=linklog&to=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));
(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
[[Page 36327]]
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 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.
Dated: June 20, 2006.
Jon W. Dudas,
Under Secretary of Commerce for Intellectual Property and Director of
the United States Patent and Trademark Office.
[FR Doc. E6-10022 Filed 6-23-06; 8:45 am]
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