Getting to the Goalpost: Achieving Patent Allowance in the United - PowerPoint PPT Presentation

Accelerated Examination Requirements Pre-Examination Search Document http://www.uspto.gov/patent/initiatives/accelerated-examination Scope of search • Identify field of search by U.S. class/subclass • Date of search • For database searches, the search logic or chemical structure used as query and name of files searched and database service • Search must include U.S. patents/publications, foreign patent, documents and non-patent literature • Search must encompass all features of claims, including those that may be later claimed • Statement of search must meet the requirements

Accelerated Examination Requirements Pre-Examination Search Document http://www.uspto.gov/patent/initiatives/accelerated-examination Does search report from foreign patent office satisfy pre- examination search? • Partially for foreign search requirement:  if it includes a text search of foreign patent documents that includes the sources required under the PCT minimum documentation requirements and provides required search history • Other portions of search (U.S. and non-patent) still need to be done • PCT search report is usually not satisfactory since it does not include search history

Accelerated Examination Requirements Accelerated Examination Support Document http://www.uspto.gov/patent/initiatives/accelerated-examination • Must include an Information Disclosure Statement (IDS) citing the references deemed most closely related to the subject of each claim • Must identify, for each cited reference, all the limitations in the claims that are disclosed by the reference specifying where the limitation is disclosed in the cited reference • Must include a detailed explanation of how each claim is patentable over the cited reference

Accelerated Examination Requirements Accelerated Examination Support Document http://www.uspto.gov/patent/initiatives/accelerated-examination • Must include a concise statement of the utility of the invention as defined in each independent claim (except for design application) • Must include a showing of where each limitation of the claims find support under 35 USC112, first paragraph • Must identify each means- (or step-) plus-function claim under 35 USC 112, sixth paragraph • Must identify corresponding structure, material, or acts in the specification

Accelerated Examination Petition Review • Petition is carefully examined for strict compliance with all requirements  If search or AESD are insufficient, petition will be dismissed (will indicate what needs to be done)  Applicant will get one opportunity (one month) to remedy  Can generally telephone to confirm with USPTO specialist that planned corrections will perfect the filing • If application is not in compliance and ready for examination, petition will be denied with no opportunity to cure

Accelerated Examination Petition Review Common application defects include: • Presence of preliminary amendment • More than 3 independent claims or 20 total claims • Defect causing Office of Initial Patent Examination (OIPE) to mail a defect notice • Improper benefit claim to a prior application • Presence of petition for a non-signing inventor

Accelerated Examination Timeline U.S. Pat. No. 7,188,939 • First patent processed under AE • Issued within 6 months after filing

Accelerated Examination Special Considerations • only 1 month to respond to an office action • Petition is denied » handled with no special status • Petition granted

Accelerated Examination Statistics

Accelerated Examination 2500 Number of Petitions Filed 2000 1500 1000 500 0 2007 2008 2009 2010 2011 2012 2013 2014 2015 Year

Expediting U.S Prosecution What are your options? – Track One Prioritized Examination – Accelerated Examination – PPH – Petition to Make Special – First Action Interview Pilot Program – Collaborative Search Pilot Program

PPH Overview Claims allowable in the Office of first filing are eligible for accelerated examination in an Office of later filing

PPH Overview Global and IP5 PPH Participants with the USPTO PPH Agreements with other IPO’s ∙ Argentina ∙ Eurasian ∙ Philippines ∙ Mexico ∙ Romania ∙ Brazil ∙ Nicaragua ∙ Taiwan ∙ Czech Republic

PPH Eligibility • Related foreign application has allowable subject matter (including PCT’s) • Foreign application and U.S. application share common earliest priority date  Direct claim of priority not necessary • E.g. by-pass continuation which claims benefit of a PCT application claiming priority to application A filed with OEE » when claim in A is considered allowable, by-pass continuation is eligible for PPH • Substantive examination has not started in USPTO • Provisional, plant, design and reissue applications are not eligible

PPH Requirements • Applicant must submit:  PPH Request  Claims correspondence table indicating how all claims correspond to allowable claim(s)  Copy of last Office Action issued before Decision of Grant or latest PCT work product  Information Disclosure Statement (IDS) listing the documents cited by the Foreign Patent Office or PCT • No special PPH filing fee

PPH Request Form PTO/SB/20GBL

PPH Examination Procedure • Application granted special status  Usually within 2 months of filing request  Examination begins 2-3 months after request granted  If PPH Request is not granted, get one chance to fix • Claims must correspond to allowed foreign or PCT claims at all times during examination • All subsequent foreign Office Actions must be submitted to the USPTO

PPH Statistics • U.S. Statistics, as of end of December, 2017 1 PPH Request to First OA 6.3 months PPH Request to Final 18.9 months Disposition First OA Allowance Rate 22.7% Grant Rate 84% 1 http://www.jpo.go.jp/pph-portal/statistics

Expediting U.S Prosecution What are your options? – Track One Prioritized Examination – Accelerated Examination – PPH – Petition to Make Special – First Action Interview Pilot Program – Collaborative Search Pilot Program

Petition To Make Special • Petitions to Make Special are Available for: • Age- 65 or older • Health  Normal course of prosecution may result in applicant’s inability to assist prosecution  Requires proof but can request to keep information out of the public record (e.g. doctor’s certificate) • Application advanced out of turn • Can be filed anytime during pendency

Petition To Make Special Form- PTO/SB/130 Signed by: • Inventor with statement of age OR • Attorney- retain evidence of age (e.g., copy of driver’s license) No Fee!

Expediting U.S Prosecution What are your options? – Track One Prioritized Examination – Accelerated Examination – PPH – Petition to Make Special – First Action Interview Pilot Program – Collaborative Search Pilot Program

First Action Interview Program • Applicant is entitled to a first action interview, upon request, prior to the first Office Action on the merits • Examiner conducts prior art search and mails a pre- interview communication • Does not advance application out of turn • No fee

First Action Interview Program Eligibility • Type of Application • Non-reissue, non-provisional utility application under 35 U.S.C. § 111(a) • National stage application under 35 U.S.C. § 371 • Claims • 3 or fewer independent and 20 or fewer total claims • No multiple dependent claims • Single invention • Request filed at least one day before First OA

First Action Interview Program Form PTO/SB/413C

First Action Interview Program Begin 1) Examiner conducts prior art search 2) If not allowed, issues Pre-Interview Communication Interview Route 3) Within 30 days + 1 mo. extension, Applicant must submit interview request form 4) Must conduct or at least schedule interview within 60 days from request’s filing date 5) Interview request form must include proposed amendments or arguments clearly labeled as “PROPOSED” at header or footer No Interview Route 3) File via EFS-Web a request to not have an interview, a formal reply, or take no action USPTO considers Pre-Interview Communication as 1 st OA

First Action Interview Program

First Action Interview Program Form PTOL-413A

First Action Interview Program Statistics USPTO Patent Dashboard, https://www.uspto.gov/corda/dashboards/patents

Collaborative Search Program • Pilot program with KIPO and JPO began Nov. 1, 2017 for 3 years • Applications accorded special status prior to first office action • Limited to 400 applications/year • No fee required

Collaborative Search Program Requirements • Non-reissue, non-provisional utility application filed under 35 U.S.C. § 111(a) or national stage application filed under 35 U.S.C. § 371 and earliest priority date after 3/16/2013 • Completed petition (Form PTO/SB/437) filed before examination has commenced via EFS-Web • Petition and any request filed in designated partner IP office within 15 days of U.S. petition filing • 3 or fewer independent claims, 20 or fewer total claims, no multiple dependent claims

Collaborative Search Program Form PT/SB/437

Collaborative Search Program

Collaborative Search Program Timeline 4 months 2 months Petition Granted Exchange Results Exchange Draft OA Issue First OA

Summary Track 1 Accel. Exam. Petition To PPH FAI Collab. Search Make Special Program $4140 $140 No Fee No Fee No Fee No Fee 4 Indep Claims 3 Indep Claims No Limit Claims match 3 Indep Claims 3 Indep Claims 30 Total Claims 20 Total Claims allowable foreign 20 Total Claims 20 Total Claims claims No Support Pre-Exam Search + No Support Correspond. Claim No Support Petition to partner Documents AESD Documents Table + Last foreign Documents IP Office + OA + IDS Correspond. Claim Table 3.1 months to 1 st 2.4 months to 1 st Moves application 6.3 months to 1 st 15.5 months to ~6-7 months to 1 st OA OA to Special Docket OA Pre-Interview OA Comm.

Current Client Service Standards • Time to first Examiner ’ s Report (ER) for 90% of applications from request for examination (due within 5 years of PCT filing) – Organic Chemistry = 15 months – Mechanical = 16 months – Biotechnology = 17 months – General Chemistry and Electrical = 18 months • Time to subsequent ER for 90% of applications – Mechanical = 5 months – General and Organic Chemistry = 6 months – Biotechnology and Electrical = 9 months

Time to Examination Applicant may control the prosecution time: • Examination may be deferred up to five years from filing date (likely to change to 3 years in 2019) • …Or examination may be expedited

Special Order • Two procedures: 1. Fee based ($500)  Statement required explaining why failure to advance will prejudice rights of requestor (no affidavit, declaration, or other evidence required)  Third party could request 2. Green technology (“Green IP”)  Applicant Declaration Required • Application relates to technology the commercialization of which would help to resolve or mitigate environmental impacts or conserve the natural environment and resources

PPH • PPH request can be based  either on the latest PCT work product (written opinion of the ISA (WO-ISA) or international preliminary examination (IPER))  or on the national work product established during the processing of a national application or a PCT application that has entered the national phase before one of the participating offices including USPTO • No government fee

PPH Workflow

Key Differences Between PPH in US & Canada • In the USPTO, it seems that the goal of the PPH Program is to accelerate examination of the application, not its allowance • In the USPTO, a shorter wait time to the first Office Action offers the most significant advantage of the PPH Program • In Canada, quick allowance seems to be the main goal

Benefits of using the PPH program in Canada • Significantly lower prosecution costs • Higher allowance rate • Fewer office actions

Time from PPH Request to First Office Action Average Pendency from PPH Request to First Office Action (Months) 14 12 10 8 Months 6 4 2 0 PPH Applications (CIPO) PPH Applications (USPTO) All Applications (CIPO)

Time from PPH Request to Final Decision Average Pendency from PPH Request to Final Decision (Months) 35 30 25 20 Months 15 10 5 0 PPH Applications (CIPO) PPH Applications (USPTO) All Applications (CIPO)

Average Number of Office Actions Average Number of Office Actions 3,5 3 2,5 2 Number 1,5 1 0,5 0 PPH Applications (CIPO) PPH Applications (USPTO) All Applications (CIPO) All Applications (USPTO)

First Action Allowance Rate First Action Allowance Rate (%) 35 30 25 Percentage 20 15 10 5 0 PPH Applications (CIPO) PPH Applications (USPTO) All Applications (CIPO) All Applications (USPTO)

Advancing Prosecution After Final What are your options? – Challenge the Finality of the Rejection – Amendment After Final – Request for Continued Examination – After Final Consideration Pilot Program v2.0 – Appeal

Challenging Finality • A final action is intended to close prosecution after any second or subsequent examination the claims. • Proper unless the Examiner introduces a new ground of rejection that is:  NOT necessitated by a claim amendment; OR  NOT based on information submitted in an IDS filed after the preceding non-final action but before the final action. • Proper on a first action only if:  Application is continuation or after filing an RCE and all the claims are drawn to the same invention and would have been properly finally rejected. • E.g., by filing an RCE without amendments.

Challenging Finality • If the criteria is met, then a request for withdrawal of a premature Final Office Action may be filed • Request may be negotiated with the Examiner during an interview prior to filing • Must be filed while the application is still before the Examiner • Not a response to the Final Office Action  If successful, then the Examiner will withdraw finality  If unsuccessful, then a complete response must be filed

Advancing Prosecution After Final What are your options? – Challenge the Finality of the Rejection – Amendment After Final – Request for Continued Examination – After Final Consideration Pilot Program v2.0 – Appeal

Amendment After Final • Entry of proposed amendment is not a matter of right, i.e., the Examiner may refuse entry. • Amendments will likely be entered if they put the application in condition for allowance by:  Cancelling each rejected claim; and/or  Complying with any requirements or objections. • Examiner is not required to interview the case, but may do so voluntarily upon request.

Advancing Prosecution After Final What are your options? – Challenge the Finality of the Rejection – Amendment After Final – Request for Continued Examination – After Final Consideration Pilot Program v2.0 – Appeal

Request for Continued Examination • A reply to the Final Office Action may be filed no later than six months from the mailing date of the Action. • Must result in allowance; else, an RCE or a notice of appeal must be filed to advance prosecution. • The submission may include:  An IDS  An amendment  New arguments  New declarations • If an Office Action is outstanding, then the submission must provide a complete reply.

Request for Continued Examination • May not be used to cancel pending claims and introduce new claims directed to a different invention • May be filed after receipt of a Notice of Allowance and before payment of the Issue Fee to:  Ensure consideration of previously uncited art  Make other changes to the claims  Create an opportunity to make additional corrections • May be filed after payment of the issue fee with a petition for similar reasons  May be avoided by the QPIDS procedure

Advancing Prosecution After Final What are your options? – Challenge the Finality of the Rejection – Amendment After Final – Request for Continued Examination – After Final Consideration Pilot Program v2.0 – Appeal

AFCP v2.0 Eligibility • Provides a limited opportunity to amend the claims without filing an RCE • A utility, design or plant non-provisional application that has received a final rejection  National stage applications  Continuing applications  But not reissue or reexamination applications • Only one request for consideration may be filed

AFCP v2.0 Requirements • A transmittal form (PTO/SB/434) requesting consideration under AFCP 2.0 • A response, including an amendment to at least one independent claim that does not broaden its scope • A statement applicant is willing to participate in an Examiner interview • Any fees due (e.g. extension of time)

AFCP v2.0 Procedure • Examiner reviews submission to determine all requirements have been met • Examiner is given 3 hours to perform any additional search if required  if cannot be completed, will mail Advisory Action • Examiner considers if amendment places application in condition for allowance  YES! » Notice of Allowance  NO!?! » Schedules interview

Advancing Prosecution After Final What are your options? – Challenge the Finality of the Rejection – Amendment After Final – Request for Continued Examination – After Final Consideration Pilot Program v2.0 – Appeal

Appeal Process

Notice of Appeal • Who can file a Notice of Appeal?  An applicant whose claims has been twice rejected  A patent owner during re-examination • When to File a Notice of Appeal  For an applicant, upon any claim being twice rejected  For an owner, upon claims being finally rejected during re- examination • How to File a Notice of Appeal  File a Notice of Appeal, form AIA/31  Pay the required fees

Notice of Appeal Form AIA/31

Appeal Brief • Requirements  A petition to invoke the supervisory authority of the Director under 37 CFR 1.181  A claim amendment  A letter from the examiner stating that prosecution is suspended without withdrawing the appealed rejection • Deadlines  No extension fee required if filed within 2 months from the date of filing the Notice of Appeal.  Extension fee required after 2 months.

Appeal Brief • Consequences of Not Filing an Appeal Brief  If no allowed claims, then the appeal will be dismissed and the application will go abandoned.  If allowed claims, then the application is not abandoned and may be reinstated by filing a petition.  If the claims contain allowable subject matter, yet are objected for dependency, then the application will go abandoned.

Examiner's Answer • May counter arguments in the Appeal Brief • May include a new ground of rejection  New evidence and/or arguments • Response options may vary accordingly:  May argue against the counter-arguments in the reply brief  If a new grounds of rejection is asserted, then: • May request to withdraw the appeal and re-open prosecution • May maintain the appeal and address each now ground of rejection in the reply brief

Reply Brief • May be filed within the later of:  Two months from the date of the Examiner’s Answer  A decision refusing a petition refusing to designate a new ground of rejection in the Examiner’s Answer • Generally not required • If not filed, then the application is forwarded to the Board for decision on the appeal • May be required if:  The Examiner’s Answer (or a substitute) designates a new ground of rejection

Oral Hearing, Decisions, Rehearings • An oral hearing is available upon request (form AIA/31) • If the rejection is affirmed or affirmed-in-part, then the Applicant may :  Appeal to the D.C. Court of Appeals; or  File an amendment with an RCE • If the rejection is reversed, then the case is brought up for immediate action by the Examiner, who may:  Issue a notice of allowance; or  Reopen prosecution and enter a new rejection. • A request for rehearing may be filed within two months of the date of the decision.