Paths to Quicker Patent Allowance

September 2015

By: Sandra Szela Congdon

The United States Patent & Trademark Office (USPTO) currently has several programs in play to provide opportunities for Applicants to move their applications more quickly to allowance. With a present backlog of over a half million unexamined patent applications, and a time lag of almost a year and a half to get a filed application into the hands of an Examiner, these programs may be of interest to Applicants motivated to obtain patents in a timely manner.

The First Action Interview Pilot Program

The First Action Interview Pilot Program allows participants to conduct an interview with an Examiner after reviewing a Pre-Interview Communication providing the results of a prior art search conducted by the Examiner. The First Action Interview Pilot Program is available in all utility art areas. If agreement is reached during the interview, a Notice of Allowance will be issued. If agreement with regard to patentability is not reached on all claims at the end of the interview, the Applicant will receive a first action interview program Office Action that includes an interview summary that constitutes a first Office Action on the merits.

Participants have experienced many benefits from this program, including the ability to advance prosecution of the application, enhanced interaction between the Applicant and the Examiner, the opportunity to resolve patentability issues one-on-one with the Examiner at the beginning of the prosecution process, and the opportunity to facilitate possible early allowance. While the First Action Interview Pilot Program may provide more expedient prosecution, applications are still taken up in the order in which filed, as for any other application undergoing examination by the USPTO without special status.

The requirements for the First Action Interview Pilot Program include:

  • The application must be a non-reissue, non-provisional utility application under 35 U.S.C. § 111(a) or national stage application under 35 U.S.C. § 371;
  • The application must contain three or fewer independent claims and twenty or fewer total claims;
  • The claims must not contain any claims with multiple dependencies;
  • The claims must be directed to a single invention; and
  • The request must be filed electronically at least one day before a first Office Action on the merits appears in PAIR.

Accelerated Examination (AE)

The USPTO has established procedures under which the examination of a patent application may be accelerated. The USPTO will advance an application out of turn for examination if the Applicant files a grantable petition to make special under the accelerated examination (AE) program. It is expected that a final disposition will be reached within twelve months of filing the accelerated application.

A request must be submitted with the filing of the application. The fee for the request is $140 ($70 for small entities). Along with the request, it is required that the Applicant provide an AE pre-examination search document and an examination support document. The pre-examination search document shows the search logic used to conduct the required pre-examination search. The support document provides analysis comparing the pending claims to the most applicable prior art identified by the Applicant. These prerequisites are often considered burdensome and potentially undesirable, particularly the inherent requirement to characterize the prior art on the record while highlighting relevant distinctions with respect to the claimed subject matter. Claim amendments during prosecution necessitate updates to the Applicant’s support document as well.

An application is eligible for AE if it contains no more than three independent claims and 20 total claims. AE only affords Applicants a shortened one month time period in which to reply to an issued Office Action. Failure to meet this deadline results in the application becoming abandoned.

Prioritized Patent Examination Program (Track One)

Prioritized examination may be requested for newly filed applications (Track One) and with requests for continued examination (PE-RCE). The Track One program is intended to allow Applicants to obtain a final disposition within about twelve months from filing. Track One is available for utility and plant patent applications. A fee of $4000 ($2000 for small entity) is required at the time of requesting prioritized examination.

The most recent revisions to this program include that the filing of an inventor’s oath or declaration may be postponed if an Application Data Sheet is present at the time of filing. Additionally, if the application as filed contains more than four independent claims, more than thirty total claims, or any claims with multiple dependencies, the Applicant will be given a non-extendable one month period in which to file an amendment bringing the claims into conformity.

Patent Prosecution Highway (PPH) – Fast Track Examination

The PPH enables an Applicant who receives a positive ruling on patent claims from one participating office to request accelerated prosecution of corresponding claims in another participating office. This allows the Applicant to obtain a patentability decision in the second office more quickly. The Global PPH and IP5 PPH pilot programs are running concurrently and are substantially identical, differing only with regard to their respective participating offices. The USPTO is participating in both the Global PPH pilot program and the IP5 PPH pilot program.[1] 

Eligibility to participate in the Global / IP5 PPH pilot programs requires that the U.S. application for which participation in the program is requested must have the same earliest date, whether this is the priority date or the filing date, as that of a corresponding national or regional application filed with another Global / IP5 PPH participating office, or a corresponding PCT International application for which one of the Global / IP5 PPH participating offices was the International Searching Authority (ISA) or the International Preliminary Examining Authority (IPEA). The corresponding application must have at least one claim indicated by the Office of Earlier Examination (OEE) in its capacity as a national or regional Office ISA or IPEA to be allowable/patentable. All claims in the U.S. application for which participation in the Global / IP5 PPH pilot program is requested must sufficiently correspond to the allowable/patentable claims in the corresponding OEE application (i.e., having the same claim scope or narrower claim scope). Substantive examination of the U.S. application for which participation in the Global/IP5 PPH pilot program is requested also must not have commenced at the time of submission of the request.

The complete list of PPH participating countries is available at:  http://www.uspto.gov/patents/init_events/pph/index.jsp

After-Final Consideration Pilot Program (AFCP 2.0)

This program affords Examiners additional time to evaluate an after-final submission. To be eligible for participation, an application must be a non-provisional application, and the Applicant must have received a final rejection from the USPTO. A goal of the AFCP 2.0 is to reduce application pendency by reducing the number of Requests for Continued Examination (RCEs) filed.

The AFCP 2.0 requires submission of a request that must include:

  • Transmittal form PTO/SB/434 identifying the submission as an AFCP submission, and requesting consideration under the AFCP;
  • A response under 37 C.F.R. § 1.116 which includes an amendment to at least one independent claim that does not broaden the scope of the independent claim in any aspect; and
  • A statement that the Applicant is willing and available to participate in any interview initiated by the Examiner.

There are no fees associated with filing the AFCP request; however, any non-pilot program fees, such as an extension of time fee, would still be required. The AFCP 2.0 program may be requested even after a Notice of Appeal is filed, provided that the Applicant has not yet filed an Appeal Brief or a Pre-Appeal Brief Conference Request. Additionally, an RCE (or the fee associated with filing an RCE) is not required when filing an AFCP 2.0 request.

The AFCP 2.0 is presently extended through September 30, 2016.

Pre-Appeal Brief Request for Review Pilot Program

As is known by practitioners, every Applicant whose claims have been twice rejected may appeal the Examiner’s decision to the Patent Trial and Appeal Board (PTAB). Any Applicant may request participation in the Pre-Appeal program when filing a Notice of Appeal. A panel of experienced Examiners will perform a detailed review of appealable issues within a set period of time. During the pre-appeal review, a panel of Examiners (including the Examiner of record) will consider the merits of each ground of rejection for which appeal has been requested and will issue a written decision as to the status of the application so that the Applicant can decide how to best proceed. Prosecution may be reopened based upon reversal of the Examiner in whole or in part, or the panel may instead recommend that the matter proceed to full PTAB appeal.

The requirements for this program include:

  • Concurrently filing a Notice of Appeal; and
  • Filing a participation request before the filing of an appeal brief. The request includes an accompanying argument, in a separate paper that must be less than 5 total pages, which provides a succinct, concise, and focused set of remarks regarding Applicant’s position.

The program is often successful in resolving questions of law, rather than questions of fact, in an efficient manner without the need to pursue a lengthy and involved PTAB appeal proceeding.

Quick Path Information Disclosure Statements (QPIDS)

The QPIDS pilot program is intended to eliminate the requirement for processing a Request for Continued Examination (RCE) with an Information Disclosure Statement (IDS) filed after payment of the issue fee and before the date the patent issues in order for the IDS to be considered by the Examiner.

Where the Examiner determines that no item of information in the IDS necessitates reopening prosecution, the USPTO will issue a corrected Notice of Allowability.

The QPIDS submission must include:

  • A transmittal form that designates the submission as a QPIDS submission;
  • An IDS, including a timeliness statement as set forth in 37 C.F.R. § 1.97(e) and the IDS fee;
  • A web-based ePetition to withdraw the application from issue under 37 C.F.R. § 1.313(c)(2), including the petition fee set forth in 37 C.F.R. § 1.17(h); and
  • An RCE, including the RCE fee under 37 C.F.R. § 1.17(e).

The RCE included as part of a QPIDS submission is considered a conditional RCE which will be processed only if the Examiner determines that any item of information contained in the IDS necessitates the reopening of prosecution in the application. If the Examiner determines that no item of information in the IDS necessitates reopening prosecution, the RCE will not be processed and the RCE fee will be automatically returned. When applicable, Applicants are encouraged to include a statement under 37 C.F.R. § 1.704(d) to avoid reduction in patent term adjustment (PTA) pursuant to 37 C.F.R. § 1.704(c)(10).

The QPIDS program is presently extended through September 30, 2016.

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This and additional information regarding each of the highlighted programs is available on the USPTO website.

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[1] The European Patent Office, Japanese Patent Office, Korean Intellectual Property Office, and State Intellectual Property Office of the People’s Republic of China are also participating in the IP5 PPH pilot program.