USPTO Examination Related Initiatives

1. USPTO Examination Related Initiatives Bob Spar Director, Office of Patent Legal Administration Deputy Commissioner for Patent Examination Policy Maryland Patent Law Association September 14, 2006 Bob.Spar@uspto.gov (571) 272-7700

2. USPTO Examination Related Initiatives Quality Approached from different angles: Proposed Rule Makings Examination Initiatives Technology Innovation

3. Proposed Rule Makings • Claims • Continuations, RCEs, and Applications Containing Patentably Indistinct Claims (Continued Examination) • Accelerated Examination (AE), Petitions to Make Special (Practice Change Only) • Information Disclosure Statements (IDSs) • Other Possible Rule Makings: • Markush Practice/Alternatives in Claims • Preexamination Search Reports • Changes To Support EFS-Web filings • Amendments in Reexaminations and Reissues • Deferred Examination

4. Proposed Rule Makings • Quality Objectives: • Examination: Focused initial patentability examination of a limited number of representative claims – Get it right the first time • Operational efficiency – Create finality in the examination process • Improved quality of issued patents – Give more timely notice of, and greater public certainty on, the scope of patent protection by reducing the number of patents that have overlapping disclosures and claims

5. Notice of Proposed Rule Making Claims Changes to Practice for the Examination of Claims in Patent Applications 71 FR 61 (Jan. 3, 2006); 1302 OG 1329 (Jan. 24, 2006) See further information on USPTO website at:http://www.uspto.gov/web/offices/pac/dapp/opla/presentation/focuspp.html Very large number of comments received during the extended comment period which ended May 3, 2006 All comments posted on USPTO website:http://www.uspto.gov/web/offices/pac/dapp/opla/comments/fpp_claims/claims_comments.html

6. Claims NPR Rules Proposed to be Changed or Added in 37 CFR • § 1.75(b) and (c) Claim(s) • § 1.104(a)(1), (b), and (c)(1) Nature of examination • § 1.105(a)(1)(ix) Requirements for information • § 1.117 (new) Refund due to cancellation of claim • § 1.261 (new) Examination support document • § 1.704 (c)(11) and (c)(12) Reduction of period of adjustment of patent term

7. Notice of Proposed Rule Making Continued Examination Changes to Practice for Continuing Applications, Requests for Continued Examination Practice, and Applications Containing Patentably Indistinct Claims 71 FR 48 (Jan. 3, 2006); 1302 OG 1318 (Jan. 24, 2006) See USPTO website for further info Very large number of comments received during the extended comment period which ended May 3, 2006 All comments posted on USPTO website:http://www.uspto.gov/web/offices/pac/dapp/opla/comments/fpp_continuation/continuation_comments.html

8. Continued Examination NPRList of Rules Proposed to be Changed • 37 CFR 1.78 – Claiming benefit of earlier filing date and cross-references to other applications • 37 CFR 1.114 – Request for continued examination • 37 CFR 1.495 – Entering the National Stage in the United States of America

9. Continued Examination NPRProposedReorganization of entire rule § 1.78 with new subsections • Section 1.78 is proposed to be reorganized as follows: • § 1.78(a) – definitions established; • § 1.78(b) - claims under 35 USC 119(e) for the benefit of a prior-filed provisional application; • § 1.78(c) - delayed claims under 35 USC 119(e); • § 1.78(d) - claims under 35 USC 120, 121, or 365(c) for the benefit of a prior-filed nonprovisional application; • § 1.78(e) - delayed claims under 35 USC 120, 121, or 365(c); • § 1.78(f) - applications naming at least one inventor in common; • § 1.78(g) - applications or patents under reexamination naming different inventors and containing patentably indistinct claims; and • § 1.78(h) - the treatment of parties to a joint research agreement under the CREATE Act.

10. Public Comments on Claims and Continued Examination NPRs • The Office received about 520 comments on both the claims and continuations NPRs, with over 330 comments on the Continued Examination Practice NPR and over 180 comments on the Claims NPR from: • Intellectual Property Organizations; • Businesses; Government Agencies; Universities/ Other Organizations; • Law Firms; • Patent Practitioners, Independent Inventors, and Miscellaneous Individuals.

11. Next Steps on Claims and Continued Examination NPRs • The Office is still considering all the public comments. • All the public comments have been put in notebooks, with grouping of similar comments, and carefully reviewed; and • suggestions have been analyzed vis à vis goals and objectives; • Decisions will be made by taking into account all factors. • The final rule making notice will include replies to the comments. • The Office plans to combine both the Claims and Continued Examination NPRs into one final rule notice. • Publication and Effective date of final rules: ?

12. Notice of Proposed Practice Change Changes to Practice for Petitions in Patent Applications to Make Special and for Accelerated Examination 71 FR 36323 (June 26, 2006); 1308 OG 106 (July 18, 2006) Available at http://www.uspto.gov/web/offices/pac/dapp/ogsheet.html Effective August 25, 2006

13. Revised Accelerated Examination (AE) Program and Petition to Make Special Procedures Overview • Effective August 25, 2006, the following have been revised: • Requirements for filing petitions for accelerated examination, and other petitions to make special, and • Procedures set forth in MPEP 708.02 (8th Edition) for processing and examining these special cases. • GOAL: to achieve a final decision by the examiner within 12 months from the filing date of the application • See Changes to Practice for Petitions in Patent Applications to Make Special and for Accelerated Examination, 71 Fed. Reg. 36323 (June 26, 2006) (notice) available at http://www.uspto.gov/web/offices/pac/dapp/ogsheet.html • MPEP 708.02 (8th Edition) will be revised in due course to reflect the changes.

14. Revised Accelerated Examination (AE) Program and Petition to Make Special Procedures Overview • The new requirements apply to all petitions to make special. Thus, a uniform practice will be established. • Except: Petitions on the basis of health, age and the Patent Prosecution Highway (PHH) pilot program • If the petition meets the requirements set forth in the notice, • The application will be granted special status under the revised AE program, and • The new processing and examination procedures will apply to the application.

15. Revised Accelerated Examination (AE) Program and Petition to Make Special Procedures Effective Date Provision: 8/25/06 • Any petition for accelerated examination, and any other petition to make special (except petitions based on applicant’s health or age or the PPH pilot program) must meet the requirements set forth in the notice. • For example, the petition and application must be filed electronically via EFS or EFS-Web. • Petitions to make special filed before 8/25/06 only had to comply with the previous requirements set forth in MPEP 708.02 (8th Edition). • The application will be processed and examined using the previous procedures set forth in MPEP 708.02 (8th Edition). • Petitions for the revised AE program were not accepted before 8/25/06.

16. Revised Accelerated Examination (AE) Program and Petition to Make Special Procedures Summary • The revised AE program will allow applicants who desire quick patent protection for their inventions a way: • To receive a final patentability decision by the examiner within 12 months; and • To choose which applications they want to advance for examination. • In order to meet the 12-month goal, an applicant will be required to provide additional information with the petition for AE, and comply with revised procedures throughout the examination process, to assist the examiner in expeditiously arriving at a final disposition.

17. Revised Accelerated Examination (AE) Program and Petition to Make Special Procedures Summary - Benefits for Applicants • Expedited handling throughout the patent application process, including: • Office of Initial Patent Examination (OIPE); • Examination; • Post-appeal process; and • Patent issue process. • Earlier and better interactions with the examiner. • More participation in clarifying and focusing the issues during the prosecution.

18. Revised Accelerated Examination (AE) Program and Petition to Make Special Procedures Filing Requirements • The application must be filed with: • The petition to make special form PTO/SB/28; and • The fee under § 1.17(h), or a statement that the claimed subject matter is directed to environmental quality, energy, or countering terrorism (no fee required, see §1.102(c)(2)). • The application must be complete under § 1.51 and in condition for examination upon filing. • For example, the application must include the filing fees and an executed oath or declaration under § 1.63. .

19. Revised Accelerated Examination (AE) Program and Petition to Make Special Procedures Filing Requirements (Cont’d) • The application, petition, and required fees must be filed electronically via EFS or EFS-Web. • The application must contain: • 3 or fewer independent claims; and • 20 or fewer total claims. • The claims must be directed to a single invention. • The application must not contain any multiple dependent claims. .

20. Revised Accelerated Examination (AE) Program and Petition to Make Special Procedures Filing Requirements (Cont’d) The petition* (form PTO/SB/28) must include: • A statement that applicant will agree to make an election without traverse in a telephonic interview; • A statement that applicant will agree to have an interview when requested by the examiner; • A statement that applicant will agree not to separately argue the patentability of any dependent claim during any appeal; • A statement that a pre-examination search was conducted; and • An accelerated examination support document (ESD). *Applicant should contact the Office if a decision is not received by applicant after three months from the filing of the petition. .

21. Revised Accelerated Examination (AE) Program and Petition to Make Special Procedures Filing Requirements: Pre-examination Search • The statement that a pre-examination search was conducted must include: • An identification of the field of search by U.S. 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; • the database service; and • the date of the search. .

22. Revised Accelerated Examination (AE) Program and Petition to Make Special Procedures Filing Requirements: AE Support Document The accelerated examination support document must include: • An information disclosure statement (IDS) citing each reference deemed most closely related to the subject matter of each claim; • An identification of where each limitation disclosed in the references is found. • A detailed explanation of how each claim is patentable over the reference; • A concise statement of utility of the invention; • A showing of support for each claim limitation in specification and any parent application, including any means-plus-function limitations; and • An identification of any cited references that may be disqualified as prior art under 35 U.S.C. 103(c). .

23. Revised Accelerated Examination (AE) Program and Petition to Make Special Procedures Processing and Examining Procedures • Once the application is granted special status, the application will be promptly taken up for action (e.g., within 2 weeks of petition decision), with special examining procedures set forth in the notice. • The examiner will consider the AE Support Document and conduct a complete prior art search. • 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; and • A conference will be conducted in the USPTO to ensure the viability of the rejection(s). • There will also be a conference before mailing any final Office action. .

24. Revised Accelerated Examination (AE) Program and Petition to Make Special Procedures Processing and Examining Procedures (Cont’d) • Office actions will have a shorter period for reply: • One-month (or 30 days) SSP for any action, other than a final rejection or allowance. • No extensions of time under § 1.136(a) permitted. • Failure to timely file a reply will result in abandonment of the application. • Extensions of time are only available under § 1.136(b). .

25. Revised Accelerated Examination (AE) Program and Petition to Make Special Procedures Examining Procedures: Applicant’s Reply • Any reply must be: • filed via EFS-Web; • complete, fully responsive; and • limited to the rejection(s), objection(s) and requirements made. • An updated AE support document is required for any amended or newly added claims that are not encompassed by the previously-filed AE support document. • The above requirements are imposed in order to be able to complete the examination within 12 months. .

26. Revised Accelerated Examination (AE) Program and Petition to Make Special Procedures Examining Procedures: Applicant’s Reply (Cont’d) • The Office will treat any amendments (including after-final amendments and RCE submissions) as not being fully responsive if the amendment: • Exceeds the 3/20 claim limit; • Presents claims to a non-elected invention; • Presents claims not encompassed by the pre-examination search; or • Presents claims requiring an updated AE support document, which is not submitted. .

27. Revised Accelerated Examination (AE) Program and Petition to Make Special Procedures Post-Allowance Procedures . • While the mailing of a notice of allowance is the final disposition for purposes of the Office’s 12 month goal, in order for the application to be expeditiously issued as a patent, applicant must: • Within one month, pay the issue fee (and any outstanding fees due) and return the form PTOL-85B (Part B of the Notice of Allowance and Fee(s) Due); and • Not file any post-allowance papers that are not required by the Office.

28. Revised Accelerated Examination (AE) Program and Petition to Make Special Procedures Appeal Procedures • While the mailing of a final rejection is the final disposition for purposes of the Office’s 12 month goal, in order for the application to be expeditiously forwarded to the Board of Patent Appeals and Interference for a decision, applicant must: • Promptly file the notice of appeal, appeal brief, and appeal fees; and • Not request a pre-appeal brief conference (which would not be of value because a conference would already have been conducted). .

29. Revised Accelerated Examination (AE) Program and Petition to Make Special Procedures The Office’s Twelve-Month Goal • The objective is to achieve a final decision by the examiner within 12 months from the filing date of the application. • The 12-month goal is successfully achieved when one of the following final dispositions occur: • Notice of Allowance; • Final Office action; • Notice of Appeal; • Request for Continued Examination (RCE); and • Abandonment.

30. Revised Accelerated Examination (AE) Program and Petition to Make Special Procedures The Office’s Twelve-Month Goal (Cont’d) • The final disposition may occur later than 12 months in certain situations. • For example, if there is a secrecy order, national security review, interference, petition under §§ 1.181, 1.182, or 1.183, or non-compliant or not fully responsive amendment. • Any failure to meet the goal, or other issues relating to this goal, are neither petitionable, nor appealable.

31. Revised Accelerated Examination (AE) Program and Petition to Make Special Procedures Eligible Applications • Any non-reissue utility or design application filed under 35 U.S.C. 111(a) is eligible. • Not eligible: plant applications, international applications including applications entering the national stage under 35 U.S.C. 371, and reissue applications.

32. Revised Accelerated Examination (AE) Program and Petition to Make Special Procedures Summary Quality Patents in Less Time • In exchange for quick examination, examiners will receive more focused and detailed information about the invention and the closest prior art from applicants. • The upfront disclosure by applicants will help examiners to more quickly make the correct decision on whether a claimed invention is patentable.

33. Revised Accelerated Examination (AE) Program and Petition to Make Special Procedures More Information • Additional information is posted on the USPTO’s Internet Web site at:http://www.uspto.gov/web/patents/accelerated • For more information, please contact the Office of Patent Legal Administration at (571) 272-7701 or e-mail to PatentPractice@USPTO.gov.

34. Revised Accelerated Examination (AE) Program and Petition to Make Special Procedures Filings to date • Less than 20 filed in the first 2 weeks of the program. • Applications classified in Electrical, Mechanical, Games and Business Methods. • Some applicants appear to be filing groups of these petitions.

35. Revised Accelerated Examination (AE) Program and Petition to Make Special Procedures Pointers • An application filed before August 25, 2006 can enter this program through the filing of a continuation. • Do not file a preliminary amendment. Incorporate the new text into the application as filed. • The explanation of patentability must discuss obviousness as well as anticipation.

36. Revised Accelerated Examination (AE) Program and Petition to Make Special Procedures Sequence Listings Until the next deployment of EFS-Web (tentatively scheduled for October 2006), EFS-Web will not have the facility for handling large text files such as sequence listings. In the interim, applications which contain a sequence listing (or other large text files) for which accelerated examination is requested may be filed in any of the following options:

37. Revised Accelerated Examination (AE) Program and Petition to Make Special ProceduresInterim Filing Options for Sequence Listings Until the next deployment of EFS-Web (expected in October 2006), • The entire application, except the sequence listing, is filed through EFS-Web, and the sequence listing is filed electronically on the same calendar day through ePAVE as a “follow-on” paper. • The entire application, except the sequence listing, is filed through EFS-Web, and the paper copy and computer readable form of the sequence listing is filed on the same calendar day by hand delivery or Express Mail (directed to Mail Stop: Sequence). • The entire application, except the petition for AE, is filed through ePAVE, and the petition (including all attachments) is filed on the same calendar day through EFS-Web.

38. Notice of Proposed Rule Changes IDS NPR Changes to Information Disclosure Statement Requirements and Other Related Matters 71 FR 38808 (10 July 2006); 1309 OG 25 (Aug. 1, 2006) Comment period ended September 8, 2006

39. Objectives of Proposed Changes in IDS NPR Three quality of examination objectives: 1. Get IDS(s) to examiner before initial examination 2. Reduce number of IDS cites in applications; which should result in only the most pertinent being cited 3. Provide meaningful information to the examiner about any large documents, foreign language documents, or when a large number of documents are submitted 4th Objective: Help applicants avoid having to submit an IDS for documents served on them by 3rd parties

40. Results to be Achieved by Proposed Changes in IDS NPR Quality results achieved if objectives are met: 1. Less wasted time by examiner on unrelated, cumulative or not understood cites in IDSs 2. Most relevant prior art known by applicant will be appropriately considered by examiner in preparing 1st Office action, so search and examination process can be better focused 3. IDSs will be meaningful, add early value to the examination process, help examiner to issue a high quality 1st Office action, and avoid wasting time

41. Proposed Changes In IDS NPRTime Periods 1- 4 Application Prosecution Timeline and corresponding IDS requirements Application Filed First Office Action on the Merits (FAOM) Allowance of Application Payment of Issue Fee Time Sufficient for Consideration Patent • Third Period • Timeliness cert., and • Patentability Justification which includes: Explanation, • Non-cumulative description, and either: • (A) Patentability reasons • for unamended claims; or • (B)(1) Statement of unpatentable claims, • (B)(2) Amendment, and • (B)(3) Patentability reasons for amended claim(s) • Fourth Period • Timeliness cert.; • Patentability Justification which includes: • Explanation, • Non-cumulative description, • Statement of unpatentable claims, • Amendment, and • Patentability reasons for amended claim(s); and • Petition to w/d from allowance • First Period • Up to 20 citations permitted • w/o any explanation req’d. • Explanations req’d for: • each ref. >25 pages, or in • non-English language, or for • all refs when more than 20 • Second Period • Explanation, and • Non-cumulative • description

42. Proposed Changes in IDS NPR What is the “explanation” if it is required? A. An identification of: (1) the specific feature(s), showing(s), or teaching(s) that caused the document to be cited, with (2) a portion of the document where the specific, e.g., feature, may be found, and B. A correlation of, e.g., the feature, to corresponding specific claim language, or to a specific portion(s) of the supporting specification, where the document is cited for that purpose.

43. Proposed Changes In IDS NPRAddressing Some Very Large IDS Submissions Problem: Applicants sometimes receive very large numbers of references from a third party, e.g., from litigation in a patent related to the application under examination, and they feel they must submit them whether or not they believe they are relevant. Such large submissions impose significant burdens on applicants, and the Office, provide little if any useful information to the examiner, while wasting his/her limited amount of examining time. Proposal: Indicate in protest rule, § 1.291, that applicants need not submit such information, as they can, instead, provide a consent to a protest by such third party, and thereby shift the burden back to the 3rd party to submit the information directly to the Office by complying with the protest rule requirements.

44. Proposed Changes In IDS NPRReexamination Proceedings • Proposed IDS rules would be applicable to reexamination proceedings. • Compliant IDSs are needed to meet statutory requirement of "special dispatch" in reexamination • Patent owner submissions of prior art in both ex parte and inter partes reexamination proceedings would have to comply with §§ 1.97 and 1.98. • Third party submissions of prior art in inter partes reexamination proceedings would have to comply with § 1.98. • IDS rules would not apply to requests for reexamination as §§ 1.510 and 1.915 requirements are, at least, as comprehensive.

45. Proposed Changes In IDS NPRThird Party Submissions after Pre-Grant Publication • The window of time for any 3rd party to file a submission under § 1.99 would be extended to 6 months after pre-grant publication of an application, or until the notice of allowance, whichever occurs first. • It would be clarified that only a 3rd party (not an applicant) could file a submission under § 1.99.

46. Proposed Changes In IDS NPREntry of Certain Amendments After Allowance • To decrease the need to file a RCE or a continuation, amendments affecting the following items would be entered after allowance and before (or with) issue fee payment: Bibliographic data; Reference to a joint research agreement; Change in the order of inventors; and Correction of inventorship • These formality amendments would be entered after payment of the issue fee, if submitted in sufficient time to permit the patent to be printed with the amended information.

47. Proposed Changes In IDS NPR Addressing Practitioner’s Concerns Regarding “Additional Disclosure” Requirements Objective: Address the bar’s concern that the “additional disclosure” requirements, when triggered, may expose practitioners to inequitable conduct charges. Proposal: Add a safe harbor to § 1.56 that applies to a party, when attempting to comply with the “additional disclosure” requirements of § 1.98, who has made reasonable inquiry of the relationship of the documents to the claims, has acted in good faith, and has a reasonable basis for the statements provided.

48. Duty to Review (§10.18)IDS NPR • An IDS, like any other paper filed in the Office, is subject to the provisions of § 10.18. • Section 10.18(b)(2) requires an “inquiry reasonable under the circumstances.” • Thus, each item of information being contemplated for inclusion in an IDS must be reviewed before submission of the IDS to the Office to assure that the submission will not: (1) Cause unnecessary delay or needlessly increase the cost of examination, or (2) Result in the obscuring of material information. • Failure to review an IDS can also implicate obligations of registered practitioners under §§ 10.23(b) and (c), and § 10.77(b) (handle a legal matter w/o preparation adequate in the circumstances).

49. More Information on IDS NPR • The below listed documents may be accessed via the “More Information” hyperlink associated with the Notice’s title at the following USPTO webpage: http://www.uspto.gov/web/offices/pac/dapp/ogsheet.html • Executive Summary – IDS NPR, • Detailed Summary – IDS NPR, • Charts of: “The Four Time Periods for Submitting an IDS and Their Corresponding Requirements,” and • Application Prosecution Timeline. • For more information, please contact the Office of Patent Legal Administration at (571) 272-7701 or e-mail to PatentPractice@uspto.gov, or contact one of the following: • Hiram Bernstein 571-272-7707 • Brian Hanlon 571-272-5407 • Robert J. Spar 571-272-7700

50. Public Commentson IDS NPR • Approximately 55 comments have been received • These comments will all be posted on our website. • All comments will be carefully reviewed and evaluated, along with all suggestions made.