708.02(a) Accelerated Examination
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All petitions to make special, except those based on applicant’s health or age or participation in the Patent Prosecution Highway (PPH) pilot program must meet the requirements set forth in this section.
I. REQUIREMENTS FOR PETITIONS TO MAKE SPECIAL UNDER ACCELERATED EXAMINATION
A new application may be granted accelerated examination status under the following conditions:
- The application must be filed with a petition to make special under the accelerated examination program accompanied by either the proper fee or a statement that the claimed subject matter is directed to environmental quality, the development or conservation of energy resources, or countering terrorism.
- The application must be a non-reissue utility or design application.
- The application, petition, and required fees must be filed electronically using the USPTO’s electronic filing system (EFS), or EFS-Web.
- At the time of filing, the application must be complete and in condition for examination.
- The application must contain three or fewer independent claims and twenty or fewer total claims. The application must also not contain any multiple dependent claims. The applicant is agreeing that the dependent claims will be grouped together with and not argued separately from the independent claim from which they depend in any appeal brief filed in the application. The petition must include a statement that applicant will agree not to separately argue the patentability of any dependent claim during any appeal in the application.
- The claims must be directed to a single invention. If the USPTO determines that all the claims presented are not directed to a single invention, applicant must make an election without traverse in a telephonic interview. The petition must include a statement that applicant will agree to make an election without traverse in a telephonic interview.
- The applicant must be willing to have an interview (including an interview before a first Office action) to discuss the prior art and any potential rejections or objections with the intention of clarifying and possibly resolving all issues with respect to patentability at that time. The petition must include a statement that applicant will agree to have such an interview when requested by the examiner.
- At the time of filing, applicant must provide a statement that a preexamination search was conducted:
- (1) This preexamination search must involve U.S. patents and patent application publications, foreign patent documents, and non-patent literature, unless the applicant can justify with reasonable certainty that no references more pertinent than those already identified are likely to be found in the eliminated source and includes such a justification with this statement.
- (2) This preexamination search must be directed to the claimed invention and encompass all of the features of the claims, giving the claims the broadest reasonable interpretation.
- (3) The preexamination search must also encompass the disclosed features that may be claimed. An amendment to the claims (including any new claim) that is not encompassed by the preexamination search or an updated accelerated examination support document (see item I) will be treated as not fully responsive and will not be entered.
- (4) A search report from a foreign patent office will not satisfy this preexamination search requirement unless the search report satisfies the requirements for a preexamination search.
- (5) Any statement in support of a petition to make special must be based on a good faith belief that the preexamination search was conducted in compliance with these requirements.
- At the time of filing, applicant must provide in support of the petition an accelerated examination support document.
- (1) An accelerated examination support document must include an information disclosure statement (IDS) citing each reference deemed most closely related to the subject matter of each of the claims.
- (2) 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.
- (3) The accelerated examination support document must include a detailed explanation of how each of the claims are patentable over the references cited.
- (4) The accelerated examination support document must include a concise statement of the utility of the invention as defined in each of the independent claims (unless the application is a design application).
- (5) The accelerated examination support document must include a showing of where each limitation of the claims finds support under 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112 in the written description of the specification. If applicable, the showing must also identify:
- (i) each means- (or step-) plus-function claim element that invokes consideration; and
- (ii) the structure, material, or acts in the specification that correspond to each means- (or step-) plus-function claim element that invokes consideration.
- (6) The accelerated examination support document must identify any cited references that may be disqualified as prior art under 35 U.S.C. 102(b)(2)(C) or pre-AIA 35 U.S.C. 103(c).
II. DECISION ON PETITION TO MAKE SPECIAL
Applicant will be notified of the decision by the deciding official.
- If the application and/or petition does not meet all the requirements set forth in subsection I above for the application to be granted special status (including a determination that the search is deemed to be insufficient), the applicant will be notified of the defects and the application will remain in the status of a new application awaiting action in its regular turn.
In those instances in which the petition or accelerated examination support document is defective in one or more requirements, applicant will be given a single opportunity to perfect the petition or accelerated examination support document within a time period of one month (no extensions under 37 CFR 1.136(a)).
IV. REPLY BY APPLICANT
A reply to an Office action must be limited to the rejections, objections, and requirements made.
Any amendment that attempts to:
- add claims which would result in more than three independent claims, or more than twenty total claims, pending in the application;
- present claims not encompassed by the preexamination search (see subsection I, item (H) above) or an updated accelerated examination support document (see next paragraph); or
- present claims that are directed to a nonelected invention or an invention other than previously claimed in the application, will be treated as not fully responsive and will not be entered.
V. POST-ALLOWANCE PROCESSING
The mailing of a notice of allowance is the final disposition for purposes of the twelve-month goal for the accelerated examination program.
- In response to a notice of allowance, applicant must pay the issue fee within three months from the date of mailing of the Notice of Allowance and Fee(s) Due to avoid abandonment of the application.
VI. AFTER-FINAL AND APPEAL PROCEDURES
The mailing of a final Office action or the filing of a notice of appeal, whichever is earlier, is the final disposition for purposes of the twelve-month goal for the accelerated examination program.
VII. PROCEEDINGS OUTSIDE THE NORMAL EXAMINATION PROCESS
If an application becomes involved in proceedings outside the normal examination process (e.g., a secrecy order, national security review, interference, or petitions under 37 CFR1.181, 1.182, or 1.183), the USPTO will treat the application special under the accelerated examination program before and after such proceedings.
- During those proceedings, however, the application will not be accelerated.
For example, during an interference proceeding, the application will be treated in accordance with the normal interference procedures and will not be treated under the accelerated examination program. Once any one of these proceedings is completed, the USPTO will process the application expeditiously under the accelerated examination program until it reaches final disposition, but that may occur later than twelve months from the filing of the application.
VIII. MORE INFORMATION
A. Eligibility
Any non-reissue utility or design application filed under 35 U.S.C. 111(a) on or after August 25, 2006 is eligible for the accelerated examination program. The following types of filings are not eligible for the accelerated examination program:
- plant applications;
- reissue applications;
- applications entering the national stage from an international application;
- reexamination proceedings;
- RCEs (unless the application was previously granted special status under the program);
- petitions to make special based on applicant’s health or age; and
- petitions to make special based on participation in the PPH pilot program.
Rather than participating in the accelerated examination program, applicants for a design patent may participate in the expedited examination program.
C. Conditions for Examination
The application must be in condition for examination at the time of filing. This means the application must include the following:
- Basic filing fee, search fee, and examination fee;
- Application size fee (if the specification and drawings exceed 100 sheets of paper);
- An executed inventor's oath or declaration for each inventor;
- A specification containing a description and claims;
- A title and an abstract;
- Drawings;
- Electronic submissions of sequence listings, large tables, or computer listings, submitted via the USPTO’s electronic filing system (EFS) in ASCII text as part of an associated file (if applicable);
- Foreign priority claim under 35 U.S.C. 119(a)-(d) identified in the executed oath or declaration or an application data sheet (if applicable);
- Domestic benefit claims under 35 U.S.C. 119(e), 120, 121, or 365(c) in compliance with 37 CFR 1.78 (e.g., for applications filed on or after September 16, 2012, the specific reference to the prior application must be in an application data sheet and for applications filed prior to September 16, 2012, the specific reference to the prior application must be submitted in the first sentence(s) of the specification or in an application data sheet, and for any benefit claim to a non-English language provisional application, the application must include a statement that (a) an English language translation, and (b) a statement that the translation is accurate, have been filed in the provisional application) (if applicable);
- English language translation, a statement that the translation is accurate, and the processing fee (if the specification is in a non-English language);
- No preliminary amendments present on the filing date of the application; and
- For an application filed prior to September 16, 2012, no petition under 37 CFR 1.47 for a non-signing inventor.
The petition to make special will be dismissed if the application omits an item or includes a paper that causes the Office of Patent Application Processing (OPAP) to mail a notice during the formality review (e.g., a notice of incomplete application, notice to file missing parts, notice to file corrected application papers, notice of omitted items, or notice of informal application).
- The opportunity to perfect a petition (subsection II above) does not apply to applications that are not in condition for examination on filing.
D. Reply Not Fully Responsive
If a reply to a non-final Office action is not fully responsive, but a bona fide attempt to advance the application to final action, the examiner may provide one month or thirty days, whichever is longer, for applicant to supply the omission or a fully responsive reply.
- No extensions of this time period under 37 CFR 1.136(a) will be permitted.
- Failure to timely file the omission or a fully responsive reply will result in abandonment of the application.
- If the reply is not a bona fide attempt or it is a reply to a final Office action, no additional time period will be given.
- The time period set forth in the previous Office action will continue to run.
E. Withdrawal From Accelerated Examination
There is no provision for “withdrawal” from special status under the accelerated examination program.
F. The Twelve-Month Goal
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.
The twelve-month goal is successfully achieved when one of the following final dispositions occurs:
- the mailing of a notice of allowance;
- the mailing of a final Office action;
- the filing of an RCE; or
- the abandonment of the application.
708.02(b) Prioritized Examination
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The Leahy-Smith America Invents Act provides for prioritized examination whereby applicants may request prioritized examination at the time of filing of an application upon payment of appropriate fees and compliance with certain requirements.
Under prioritized examination, an application will be accorded special status until a final disposition is reached in the application.
- The goal for handling applications under prioritized examination is to on average provide a final disposition within twelve months of prioritized status being granted.
Prioritized examination is available at the time of filing an original utility or plant application.
This is referred to as "Track I" prioritized examination.
- An "original" application includes a continuing application (i.e., a continuation, continuation-in-part, or divisional application) but does not include reissue applications.
In addition, a single request for prioritized examination may be granted for a request for continued examination (RCE) in a plant or utility application, including an application that has entered the national stage.
- This type of prioritized examination is referred to as "prioritized examination for requests for continued examination" (PE-RCE).
Any item submitted on the same day the request for prioritized examination is filed will be considered to have been filed with the request under 37 CFR 1.102(e).
I. REQUIREMENTS FOR REQUESTING PRIORITIZED EXAMINATION
The requirements for requesting prioritized examination are set forth below.
A request must meet the general requirements specified in subsection I.A. below, and also meet the specific requirements for either subsection I.B. (for a newly filed application) or subsection I.C. (for a request for continued examination).
A. General Requirements
- (A) The application must be a utility or plant nonprovisional application, including a continuing application (i.e., a continuation, continuation-in-part, or divisional application). The procedure for prioritized examination does not apply to design applications, reissue applications, provisional applications, or reexamination proceedings. The procedure for prioritized examination does not apply to international applications that have entered the national stage, except that such an application may undergo prioritized examination if an RCE is filed (see I.C. below). A continuing application will not automatically be given prioritized examination status based on a request filed in the parent application; each application (including each continuing application) must, on its own, meet all requirements for prioritized examination. A utility or plant nonprovisional application may claim priority to a foreign application and remain eligible for prioritized examination.
- (B) Upon filing the request for prioritized examination, the following fees must be paid for the application:
- (1) the prioritized examination fee set forth in 37 CFR 1.17(c),
- (2) the processing fee set forth in 37 CFR 1.17(i)(1),
- (3) the publication fee set forth in 37 CFR 1.18(d),
- (4) the basic filing fee set forth in 37 CFR 1.16(a), or for a plant application, 37 CFR 1.16(c),
- (5) the search fee set forth in 37 CFR 1.16(k), or for a plant application, 37 CFR 1.16(m),
- (6) the examination fee set forth in 37 CFR 1.16(o),
- (7) if applicable, any excess claims fees due because the number of independent claims exceeds three, as set forth in 37 CFR 1.16(h), and any excess claim fee due because the number of claims exceeds twenty, as set forth in 37 CFR 1.16(i), and
- (8) if applicable, any application size fee due because the specification and drawings exceed 100 sheets of paper, as set forth in 37 CFR 1.16(s).
Small entity and micro entity fee reductions are available for many of the above fees.
- (C) The application must contain, or be amended to contain, no more than four independent claims and no more than thirty total claims. In addition, the application must not contain any multiple dependent claims.
- (D) The request for prioritized examination must be filed with the application, accompanied by the prioritized examination fee, the processing fee, and the publication fee.
- (E) The request for prioritized examination may be accepted if the requirements under 37 CFR 1.102(e) are satisfied and the limit for the number of requests for the year has not been reached.
- (F) Additional requirements must be met depending on whether prioritized examination is requested upon filing of a new application (Track I), see subsection I.B. or incident to filing a request for continued examination (PE-RCE), see subsection I.C.
B. Prioritized Examination for Application Filings under 35 U.S.C. 111(a) (Track I)
A newly filed patent application may be granted Track I prioritized examination status if it meets the general conditions in subsection I.A. above, and the additional following conditions:
- (A) The application must be a utility or plant nonprovisional application, including a continuing application (i.e., a continuation, continuation-in-part, or divisional application), filed under 35 U.S.C. 111(a) on or after September 26, 2011. The application must be filed via the Office’s electronic filing system (EFS-Web) if it is a utility application. Plant applications must be filed in paper. An applicant who has filed an international application may participate in the prioritized examination program by filing a by-pass continuation; i.e., a new application filed in the United States under 35 U.S.C. 111(a) that claims the benefit of the earlier international application under 35 U.S.C. 365(c), rather than entering the national stage under 35 U.S.C. 371. In such a case, it is not necessary that the earlier international application have been filed in English in order to request prioritized examination of the 111(a) application; however, a translation is required.
- (B) The application must be complete with any excess claims fees paid on filing.
- (C) The application must contain no more than four independent claims and no more than thirty total claims. In addition, the application must not contain any multiple dependent claims.
- (D) The request for prioritized examination and any required fees must be submitted upon filing.
A nonpublication request may be submitted together with a request for prioritized examination.
- However, the publication fee still must be paid upon request for prioritized examination.
- If the application is not published, a refund of the publication fee may be requested.
Color drawings may be filed with new nonprovisional utility patent applications and in U.S. national stage applications through EFS-Web.
Any request for an extension of time, including an extension of time for the purpose of responding to a pre-examination notice (e.g., Notice to File Missing Parts), will cause the application to be ineligible for further treatment under the prioritized examination program.
- A request for an extension of time prior to the grant of prioritized examination status will prevent such status from being granted.
- If the request for prioritized examination is dismissed, applicant can file a petition under 37 CFR 1.181 if applicant believes that a decision dismissing the request for prioritized examination is not proper.
C. Prioritized Examination of an Application for a Request for Continued Examination (PE-RCE)
A pending patent application in which a request for continued examination has been filed may be granted PE-RCE prioritized examination status under the following conditions:
- (A) The application must be a non-reissue utility or plant nonprovisional application, or that has entered the national stage
- (B) The publication fee must be paid for the application, either previously or with the request for prioritized examination.
- (C) The PE-RCE request may be filed concurrently with, or subsequently to, the filing of a request for continued examination (RCE). However, the PE-RCE request must be filed before the mailing of the first Office action after the filing of the RCE.
- (D) Only a single such request for prioritized examination for a request for continued examination may be granted in an application.
A fee may be set by the USPTO to $0, and in such a case, that fee is considered to be paid and no additional payment is necessary for that fee.
II. PROSECUTION OF AN APPLICATION UNDER PRIORITIZED EXAMINATION
The time periods set for reply in Office actions for applications undergoing prioritized examination will be the same as set forth in MPEP § 710.02(b).
Where, however, an applicant files a petition for an extension of time to file a reply or files a request for suspension of action, the petition or request will be acted upon, but the prioritized examination of the application will be terminated.
- In addition, filing an amendment to the application which results in more than four independent claims, more than thirty total claims, or a multiple dependent claim will terminate the prioritized examination.
An application under prioritized examination would not be accorded special status throughout its entire course of appeal or interference before the Patent Trial and Appeal Board (PTAB), or after the filing of a request for continued examination.
III. REFUND OF FEES
If a request for prioritized examination is dismissed, the prioritized examination fee will be refunded.
- The processing fee will be retained to cover the cost of processing the request.
- The application fees, including the basic filing fee, search fee, examination fee, and any required application size or excess claim fees cannot be refunded.
Applicant may, however, request a refund of the search fee and any excess claims fees by filing a petition for express abandonment of the application.
Furthermore, applicant may request a refund of the publication if the application is not published under 35 U.S.C. 122(b).
As the termination of prioritized examination does not cause the prioritized examination fee to have been paid by mistake or in an amount in excess of that required, the termination of prioritized examination will not entitle the applicant to a refund of the prioritized examination fee.
708.02(c) Patent Prosecution Highway Program
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Under PPH, participating patent offices have agreed that when an applicant receives a final ruling from a first patent office that at least one claim is allowed, the applicant may request fast track examination of corresponding claim(s) in a corresponding patent application that is pending in a second patent office.
