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ADVANCEMENT OF EXAMINATION

by Jared Howenstine

The United States Patent and Trademark Office (USPTO) is currently experiencing a significant backlog in examination of new utility patent applications. Depending on the area of technology, receiving a first office action from the USPTO can take two to four years, as applications are examined or prosecuted in the order of their filing date. However, in the United States, there are two ways to move an application out of order and accelerate the examination process. The first is to file a request to participate in the Patent Prosecution Highway program. The second is to file a petition to make special under the “accelerated examination program.”

As noted, the first avenue to expedite examination is to seek entry into the Patent Prosecution Highway program (PPH). The purpose of the PPH program is to establish a more quality-focused, highly productive, and responsive framework for intellectual property offices in participating nations. The program allows for sharing of search and examination results between agencies and expedites the examination process of corresponding patent applications.

From July, 2006 to January, 2008, the USPTO partnered with the Japan Patent Office (JPO) to establish the first PPH pilot program. The USPTO has since commenced separate PPH pilot programs with the United Kingdom Intellectual Property Office (UK IPO), the Canadian Intellectual Property Office (CIPO), the Korean Intellectual Property Office (KIPO), the Intellectual Property Office of Australia (IPAU), the European Patent Office (EPO), the Danish Patent and Trademark Office (DKPTO), the National Board of Patents and Registration of Finland (NBPR), the Intellectual Property Office of Singapore (IPOS), and the German Patent and Trade Mark Office (DPMA) based on the same or similar framework as the PPH between the USPTO and the JPO. The USPTO and the JPO began full implementation of the PPH program beginning January 4, 2008. A year later, on January 29, 2009, the USPTO and the KIPO began full implementation of the PPH program. As of present, the other countries listed above are continuing pilot programs while periodically evaluating the results to determine whether and how the PPH program should be fully implemented between each office.

Pursuant to the program, an applicant whose claims are determined to be allowable or patentable in a first participating patent office may have a corresponding foreign application advanced out of turn for examination in a second participating patent office. Accordingly, if the claims of the corresponding application are allowed in one participating country, the application is eligible for the PPH Program. Acceleration of prosecution of a patent is achieved through the sharing of search results with other intellectual property offices, thereby making the examination of patent applications faster and more efficient. The PPH leverages accelerated examination procedures already available in participating offices to allow applicants in those offices to obtain corresponding patents faster and more efficiently. The PPH also permits each office to benefit from the work previously done by the other office, in turn, helping to reduce workload and improve patent quality.

To obtain benefits from the PPH program in the United States, the applicant must petition to make the U.S. application special under the PPH program. Note that the procedures and requirements for a petition to make special under the “accelerated examination program” set forth in 37 C.F.R. § 1.102, explained below, do not apply to a petition to make special under the PPH program.

As an example, under the pilot program between the USPTO and the DPMA, only particular applications may qualify, primarily relating to Patent Cooperation Treaty (PCT) applications. Furthermore, each and every claim in an application entered for the program must sufficiently correspond to or be amended to correspond to the claims indicated as allowable or patentable in the DPMA examination. Additionally, the Applicant must submit a claim correspondence table to the USPTO, which details how the claims before the USPTO are the same or of similar scope as the allowed or patentable claims. Finally, examination of the U.S. application, which entry of the PPH is requested, must not have begun at the time of request. Therefore, it is not possible to expedite an examination that has already begun, as the program is designed to expedite the application’s entry into prosecution, and not the actual actions of the USPTO in examining the application.

As noted, prosecution of a PPH application is expedited. This means that the application will be taken up for examination by the U.S. Examiner before all other categories of applications except those clearly in condition for allowance, those with set time limits, such as examiner’s answers, and those that have been granted special status for “accelerated examination,” as detailed below. For applications that qualify, use of the PPH program is highly recommended.

The second avenue to advance an application out of turn in the UPSTO is to file a “petition to make special” pursuant to 37 C.F.R. §1.102, the “accelerated examination program.” Application for this form of advancement may only be made if certain requirements are satisfied, and specific steps are taken by the applicant. First, only applications filed after August 25, 2006 are eligible for the accelerated process. Second, there are specific eligibility requirements or circumstances that must be shown, as follows: 1) the condition of an applicant’s health; 2) the applicant’s age (at least one inventor is over the age of 65); 3) the manufacture of the invention (present or prospective manufacturing of the invention that will not be increased or started unless the patent will be granted); 4) the actual infringement of the invention (not for prospective infringement); or 5) the invention of something relating to the discovery of energy, recombination of DNA, enhancement of environmental quality, superconductivity, HIV/AIDS and cancer, or countering terrorism. See, 37 C.F.R. §1.102 and MPEP §708.02. A petition must be submitted with the appropriate fee unless the petition is based on the applicant’s age or health or because the invention will materially enhance the quality of the environment, contribute to the development or conservation of energy resources, or contribute to countering terrorism. See, 37 C.F.R. §1.102(c). Petitions to make special are an option when one or more of these criteria are met, but there are certain drawbacks and specific procedural requirements before a petition will be granted.
When seeking a petition to make special, in circumstances other than due to applicant’s age or health, or entry into the PPH program, the following procedure must be followed. Keep in mind that the burden on the applicant is very high when seeking a petition to make special, the required work is costly, and the risk of introducing unwanted prosecution history is significant. Therefore, applicants must carefully weigh the benefits and disadvantages before choosing to submit this type of petition. The basic requirements are (i) presenting all claims directed to a single invention, (ii) performing a search and submitting a statement that a pre-examination search was made, listing the fields of search by class and subclass, publication, chemical abstracts, foreign patents, and others that must be directed to the invention as claimed in the application for which special status is requested, (iii) submitting one copy each of the references deemed most closely related to the subject matter of the claims, and (iv) submitting a detailed discussion of the references, pointing out how the claimed subject matter is patentable over the references. This final submission, the detailed discussion, is similar to a response to an Office Action as required by 37 C.F.R. §1.111 (b) and (c), as described below.

37 C.F.R. §1.111(b) states “[i]n order to be entitled to reconsideration or further examination [in response to an Office Action], the applicant or patent owner must reply to the Office action. The reply by the applicant or patent owner must be reduced to a writing which distinctly and specifically points out the supposed errors in the examiner's action and must reply to every ground of objection and rejection in the prior Office action. The reply must present arguments pointing out the specific distinctions believed to render the claims, including any newly presented claims, patentable over any applied references. …The applicant's or patent owner's reply must appear throughout to be a bona fide attempt to advance the application or the reexamination proceeding to final action. A general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references does not comply with the requirements of this section.”

37 C.F.R. §1.111(c) states “the applicant or patent owner must clearly point out the patentable novelty which he or she thinks the claims present in view of the state of the art disclosed by the references cited….” As a result of this requirement, the Applicant performs the work of a first Office Action, and presents it to the USPTO with a submission of an application seeking “accelerated examination,” which will assist in expediting prosecution of the application.

In view of the above, applicants have several options for expediting the examination and prosecution process, depending upon the current status of corresponding foreign applications and on various other circumstances. Each applicant should carefully consider the advantages and disadvantages of each option before deciding which one, if any, best suits their individual needs.
 

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