Normal Examination Speed (2/2)

Transcription

1 Expediting Examination of Patent Applications Through USPTO Programs Peter Trahms Neudorfer KCBA, IP Section February 2, Normal Examination Speed (1/2) First action pendency: 23.6 months Total pendency: 33.6 months Total pendency (including RCEs): 40.6 months Pendency from RCE filing to next action: 4.9 months As of December, Normal Examination Speed (2/2) Normal examination speed varies greatly by art unit: As of Electrical Connectors 8.8 months 3723 Tools and Metal Working 10.9 months 1752 Radiation Imagery 12.1 months 2123 Simulation and Modeling, Emulation of Computer Components 39.7 months 2617 Interactive Video Distribution 50.4 months 3628 Finance & Banking, Accounting 52.1 months 3 1

2 USPTO Programs for Expediting Examination Track I Accelerated Examination (AE) Make Special for various reasons Patent Prosecution Highway (PPH) 4 Track I: Benefits Final disposition issued within 12 months (all examination is expedited) Final disposition: Notice of allowance Final Office Action Notice of appeal Interference RCE Abandonment 5 Track I: Requirements Pay Fee: $4,800 Claim Limits: 4 independent, 30 total Time for Response: Filing any extension ends participation in the program Filing: Must e file Cap: 10,000 filings/year What: New application, or where an RCE has or is being filed Documents: Request for Track I; documents must be complete on day of request 6 2

3 Accelerated Examination: Benefits Final disposition issued within 12 months (all examination is expedited) Final disposition: Notice of allowance Final Office Action Notice of appeal Interference RCE Abandonment 7 Accelerated Examination: Requirements Pay Fee: $130 Claim Limits: 3 independent, 20 total, no multiple dependent, single invention Time for Response: One month (or abandoned) Interview: Must agree to have one Filing: Must e file What: New application Documents: support document, IDS Appeal: Dependent claims and their independent claim are decided together 8 Accelerated Examination: Requirements: Eligibility Eligible newly filed application continuation Not Eligible plant applications reissue applications re examination proceedings applications entering the national stage converted from provisional 9 3

4 Accelerated Examination: Requirements: Documents Pre examination search Accelerated Examination Support Document Support for claims in specification Identify how the prior art teaches the claims MPEP (a): () (1) 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. 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. Argue why the claims are patentable 10 Accelerated Examination: Requirements: Failure to Comply Dismissed: Substantive error: one chance to cure Pre examination search strategy was insufficient Failure to make required representations Denied: Procedural error: no chance to cure Filed with preliminary amendment Filed with more than 20 claims Paper filed 11 Accelerated Examination: Results: Two Case Studies Filed: 06/30/ /12/2010 Dismissed: 08/25/ /09/2010 Re Filed: 09/27/ /09/2010 Accepted: 10/06/ /17/2010 First OA: 12/20/2010 (NFOA) 12/07/2010 (NFOA) Interview: 02/03/ /08/2011 Second OA: 02/28/2011 (NOA) 03/29/2011 (FOA) Third OA: (N/A) 6/3/2011 (NOA) 12 4

5 Make Special for Various Reasons: Benefits All examination is expedited No 12 month promise to try like with Track I and AE: Here: Applications whichhave have been made special willbe advanced out of turn for examination and will continue to be treated as special throughout the entire prosecution in the Office. MPEP AE: 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. MPEP (a) 13 Make Special: Requirements Manufacture: Will manufacture in the U.S. if guaranteed patent Infringement: Assert that unquestionably infringed Age: One inventor is 65 years old Health: Poor Subject Matter: enhance environment, develop or conserve energy resources counter terrorism recombinant DNA HIV/AIDS, cancer superconductivity biotechnology for small entities 14 PPH: Benefits Examination within 2 3 months of the grant of the PPH request 15 5

6 PPH: Requirements (1/2) Depend on country, and expiration of various trial programs Ruling from office of first filing that at least one claim is patentable Claims in U.S. application must sufficiently correspond to allowable claims in other application Prosecution on merits hasn t begun Fee: none 16 PPH: Requirements (2/2) Revised Requirements Claims sufficiently correspond Office of First Filing v. Office of Earlier Filing Amending a new limitation into a claim ends participation 17 PPH: Partners Australia Austria Canada China Denmark Finland Germany Hungary Japan Korea Russia Singapore Spain United Kingdom 18 6

7 PPH: PPH PCT: What National and regional phase applications under the PCT are eligible Basis: positive results in the PCT international phase 19 PPH: PPH PCT: Who Trilateral Offices: USPTO Japan Patent Office European Patent Office (EPO); Korea Austria Russia Spain 20 Summary Be aware of your art unit s pendency What s the client s goal? Use PPH, or age/health/subject matter if eligible Use Track I if available Generally use AE as last resort 21 7

8 Benefit Final disp. <12 mos. Summary Track I Accel. Exam. Make Special PPH Final disp. <12 mos. Final disp. <12 mos. Exam within 2 3 months Cost $4,800 Attorney time Eligibility New apps, continuations, New apps, continuations New apps, continuations App w/claim to earlier filed RCE foreign app Claims 4/30 3/20 3/20 Other Perform search, characterize art, 1 month response Standard for applicant/ subject matter/patent Claims sufficiently correspond with allowed foreign claim 22 Peter Trahms Neudorfer ptrahms neudorfer@woodcock.com Woodcock Washburn rd Ave, Suite 3600 Seattle, WA Accelerated Examination: Results (1/3) Source: USPTO 24 8

9 Accelerated Examination: Results (2/3) Source: USPTO 25 9