Fast Track Strategies at the USPTO Hillsborough County Bar Association January 5, 2012 Anton Hopen Smith & Hopen, PA
Accelerating Trademark Applications
Post-Registration Timeline* Mark Registers 8 declaration 5-6 years 6m grace period w/ $100 fee Combined 8 declaration and 9 renewal Every 10 years 6m grace period w/ $200 fee * Minimum requirements
Post-Registration Timeline What if the deadline for 8 or 9 is missed (including grace period)?
Late Declaration or Renewal? Only remedy.file a new application Seek acceleration under TMEP 702.02 No Fee.BUT. Identical mark; and Good/services the same or narrower
Petition to Make Special TMEP 1710 $100 fee Show cause Why special action is needed Statement of Facts (affidavit or declaration) File first.get your serial number then petition. Good reasons: (1) threatened infringement; (2) pending litigation; (3) basis for securing foreign registration. Poor Reasons: (1) Forthcoming advertising campaign; (2) substantial investment; and/or (3) situations that apply to a substantial number of applicants.
Accelerating Patent Applications
Age 65+ years old Since Dec. 1959 No Fee EFS.automatically granted
Health May not be avail. to assist in prosecution due to health issues. Since Dec. 1959 Doctor s certificate No Fee
Three (3) Track Examination Track I fast w/ fee Track II current procedure Track III delay examination (up to 30 months)* * Not yet enacted
Track I Available on/after September 26, 2011 RCEs on/after December 19, 2011 Fee-Based ($4,800 / $2,400) 1 st OA within 4 months Final disposal (allow/final rej.) within 12 months Normal reply time periods 10,000 annual cap
Limitations of Track I Request only at original filing (or RCE) Four (4) independent claims Thirty (30) total claims Only special up to allowance or final action Only once per application
Termination of Track I Extensions of time for reply Amendment that: Presents > 4 independent claims Present > 30 total claims Presents a multiple dependent claim No refunds
Track I: Allowance or Final Track I terminated anyway Rewrite allowed dependent claims into independent form Add > 4 independent claims Add > 30 total claims
Track I - Jan. 3, 2012 Update 1,694 petitions 98.9% approved 41 days from filing petition to complete preexam processing (normally 70) 1,218 granted petitions 648 already received 1 st action Avg. 1 st action in 31 days from approval of petition 23 allowances (avg. 39 days) 3 rejections (avg. 34 days) David Kappos' Public Blog 2.5 m
Accelerated Examination Requirements MPEP 708.02(a) Application filed on/after Aug. 25, 2006 Fee required ($130) except for: Environmental quality Energy resources Countering terrorism No reissues Utility or Design Application Must use EFS
Accelerated Examination Requirements (continued) Filed with all fees paid and oath/dec Three (3) or less independent claims Twenty (20) or fewer total claims No multiple dependent claims Waive arguing patentability of dependent claims on appeal Must elect w/o traverse over the phone Must agree to examiner interview
Accelerated Examination Requirements (continued) Pre-examination Search US Class & Subclass Date of Search Search queries against databases Must include: U.S. Patents U.S. Patent Application Publications Foreign Patent Documents Non-Patent Literature
Accelerated Examination Requirements (continued) Pre-examination Search (continued) Search directed to all claimed features Cannot add feature in amendment without updated examination support document unless added feature already searched
Accelerated Examination Requirements (continued) Accelerated Examination Support Document IDS Each reference in IDS linked to claim limitations Detailed explanation of patentability of claims over references Concise statement of utility for each indep. claim Show where each claim limitation is supported in specification Identify references subject to 35 USC 103(c)
Accelerated Examination Dismissed, 289 Denied (merits), 332 Pending, 228 Abandoned, 58 Denied (formalities), 812 Granted, 2745 USPTO Status as of Jan. 5, 2011 Total filed: 4,464
First Action Interview Program After April 1, 2011 and before May 16, 2012 No fee All technology areas Filed at least one (1) day before first OA on the merits appears in PAIR Must use EFS Three (3) or less independent claims Twenty (20) or less total claims No multiple dependent claims Elect without traverse
Pre-Interview Communication One (1) month or thirty (30) days to: 1. File letter requesting no interview 2. Waive interview -> pre-interview communication becomes 1 st office action 3. File interview request form: 1. Include proposed amendment or arguments 2. Schedule interview within 2 months from filing
Enhanced FAI Pilot Statistics 643 Participants 430 Pre-Interview Communications 332 Interviews conducted 232 Allowances 41.4 First Office Action Allowance Rate USPTO as of April 26, 2011
Phased out Programs Green Technology Program extended to March 30, 2012* As of Dec. 19, 2011 3,034 petitions granted Patent Application Backlog Reduction Stimulus Plan Abandon co-pending unexamined application Peaked in late 2010 Terminated December 31, 2011 * Or when 3,500 applications have been accorded special status
Patent Prosecution Highway Avoid duplication of examination efforts No fee for petition (after May 25, 2010) Examination 2-3 months from grant of PPH Alleged higher allowance rate Fewer actions on average
Typical Scenarios Foreign-originated application receives ruling that at least one claim is allowable PCT ISR finds claims free of prior art
ISR from KIPO indicates application is free of prior art
Design Patents Typically 1 year $900 Expedite fee 2-4 months
Stay of Litigation Reexam ~6 weeks examiner should issue action Response times reduced to 1 month
Comparisons - Timeline No Timeline Age Health First Action Interview Timeline Track I 12m Accelerated 12m PPH 2-3m to 1 st action
Comparisons No. of Claims No Claim Limits Age Health PPH Claim Limits Track I 4/30 Accelerated 3/20 FAI 3/20
Comparisons Reply Periods Shortened Accelerated 1m FAI 1m for amend/response + interview w/i 2m No Change Age Health PPH Track I* * Extensions will terminate fast track.
Conclusion: Accelerating Trademarks Filing for missed renewal or declaration Threats, litigation or foreign rights Patents Track I Age/Health Accelerated Examination First Interview Pilot Patent Prosecution Highway