Editing MPEP 708

<noinclude>{{MPEP Section|707|700|709}}</noinclude>

==[[MPEP 708|708 Order of Examination]]==

<noinclude><div class="noautonum">__TOC__</div></noinclude>

Nonprovisional applications filed in the U.S. Patent 
and Trademark Office and accepted as complete 
applications are assigned for examination to the 
respective examining Technology Centers (TCs) having 
the classes of inventions to which the applications 
relate. Nonprovisional applications shall be taken up 
for examination by the examiner to whom they have 
been assigned in the order in which they have been 
filed except for those applications in which examination 
has been advanced pursuant to 37 CFR 1.102. 
See 37 CFR 1.496 and MPEP §
 
1893.03 for the order 
of examination of international applications in the 
national stage, including taking up out of order certain 
national stage applications which have been indicated 
as satisfying the criteria of PCT Article 33(1)-(4) as to 
novelty, inventive step and industrial applicability.

Applications which have been acted upon by the 
examiner, and which have been placed by the applicant 
in condition for further action by the examiner 
(amended applications) shall be taken up for action in 
such order as shall be determined by the Director of 
the USPTO.

Each examiner will give priority to that application 
in his or her docket, whether amended or new, which 
has the oldest effective U.S. filing date. Except as 
rare 
circumstances may justify Technology Center 




 

Directors in granting individual exceptions, this basic 
policy applies to all applications.

The actual filing date of a continuation-in-part 
application is used for docketing purposes. However, 
the examiner may act on a continuation-in-part application 
by using the effective filing date, if desired.

If at any time an examiner determines that the 
“effective filing date” status of any application differs 
from what the records show, the technical support 
staff should be informed, who should promptly amend 
the records to show the correct status, with the date of 
correction.

The order of examination for each examiner is to 
give priority to reissue applications and to reexamination 
proceedings, with top priority to reissue applications 
in which litigation has been stayed (MPEP 
§
 
1442.03), to ex parte reexamination proceedings 
involved in litigation (MPEP §
 
2261), and to 
inter partes reexamination proceedings involved in 
litigation (MPEP § 2661), then to those special cases 
having a fixed 30-day due date, such as examiner’s 
answers and decisions on motions. Most other cases 
in the “special” category (for example, interference 
cases, cases made special by petition, cases ready for 
final conclusion, etc.) will continue in this category, 
with the first effective U.S. filing date among them 
normally controlling priority.

All amendments before final rejection should be 
responded to within two months of receipt.

708.01List of Special Cases [R-2]

37 CFR 1.102. Advancement of examination.



(a)Applications will not be advanced out of turn for examination 
or for further action except as provided by this part, or 
upon order of the Director to expedite the business of the Office, 
or upon filing of a request under paragraph (b) of this section or 
upon filing a petition under paragraphs (c) or (d) of this section 
with a showing which, in the opinion of the Director, will justify 
so advancing it.

(b)Applications wherein the inventions are deemed of peculiar 
importance to some branch of the public service and the head 
of some department of the Government requests immediate action 
for that reason, may be advanced for examination.

(c)A petition to make an application special may be filed 
without a fee if the basis for the petition is the applicant’s age or 
health or that the invention will materially enhance the quality of 
the environment or materially contribute to the development or 
conservation of energy resources.

(d)A petition to make an application special on grounds 
other than those referred to in paragraph (c) of this section must be 
accompanied by the fee set forth in § 1.17(h).

Certain procedures by the examiners take precedence 
over actions even on special cases.

For example, all papers typed and ready for signature 
should be completed and mailed.

All issue cases returned with a “Printer Waiting” 
slip must be processed and returned within the period 
indicated.

Reissue applications, particularly those involved in 
stayed litigation, should be given priority.

Applications in which practice requires that the 
examiner act within a set period, such as 2 months 
after appellants brief to furnish the examiner’s 
answers (MPEP §
 
1208), necessarily take priority 
over special cases without specific time limits.

If an examiner has an application in which he or she 
is satisfied that it is in condition for allowance, or in 
which he or she is satisfied will have to be finally 
rejected, he or she should give such action forthwith 
instead of making the application await its turn.

The following is a list of special cases (those which 
are advanced out of turn for examination):

(A)Applications wherein the inventions are 
deemed of peculiar importance to some branch of the 
public service and when for that reason the head of 
some department of the Government requests immediate 
action and the Director of the USPTO so 
orders (37 CFR 1.102).

(B)Applications made special as a result of a 
petition. (See MPEP § 708.02.)

Subject alone to diligent prosecution by the applicant, 
an application for patent that has once been 
made special and advanced out of turn for examination 
by reason of a ruling made in that particular case 
(by the Director of the USPTO or a Commissioner) 
will continue to be special throughout its 
entire course of prosecution in the U.S. Patent and 
Trademark Office, including appeal, if any, to the 
Board of Patent Appeals and Interferences.

(C)Applications for reissues, particularly those 
involved in stayed litigation (37 CFR 1.176).

(D)Applications remanded by an appellate tribunal 
for further action.

(E)An application, once taken up for action by 
an 
examiner according to its effective filing date, 
should be treated as special by an examiner, art unit or 




 

Technology Center to which it may subsequently be 
transferred; exemplary situations include new cases 
transferred as the result of a telephone election and 
cases transferred as the result of a timely reply to any 
official action.

(F)Applications which appear to interfere with 
other applications previously considered and found to 
be allowable, or which will be placed in interference 
with an unexpired patent or patents.

(G)Applications ready for allowance, or ready 
for allowance except as to formal matters.

(H)Applications which are in condition for final 
rejection.

(I)Applications pending more than 5 years, 
including those which, by relation to a prior United 
States application, have an effective pendency of 
more than 5 years. See MPEP § 707.02.

(J)Reexamination proceedings, MPEP § 2261 
and § 2661.

See also MPEP § 714.13, § 1207 and § 1309.

708.02Petition To Make Special [R-5]

37 CFR 1.102. Advancement of examination.

(a)Applications will not be advanced out of turn for examination 
or for further action except as provided by this part, or 
upon order of the Director to expedite the business of the Office, 
or upon filing of a request under paragraph (b) of this section or 
upon filing a petition under paragraphs (c) or (d) of this section 
with a showing which, in the opinion of the Director, will justify 
so advancing it.

(b)Applications wherein the inventions are deemed of peculiar 
importance to some branch of the public service and the head 
of some department of the Government requests immediate action 
for that reason, may be advanced for examination.

(c)A petition to make an application special may be filed 
without a fee if the basis for the petition is:

(1)The applicant’s age or health; or

(2)That the invention will materially:

(i)Enhance the quality of the environment;

(ii)Contribute to the development or conservation of 
energy resources; or

(iii)Contribute to countering terrorism.

(d)A petition to make an application special on grounds 
other than those referred to in paragraph (c) of this section must be 
accompanied by the fee set forth in § 1.17(h).

New applications ordinarily are taken up for examination 
in the order of their effective United States filing 
dates. Certain exceptions are made by way of 
petitions to make special, which may be granted under 
the conditions set forth below. Any statement in support 
of a petition to make special must be based on a 
good faith belief that the invention in fact qualifies for 
special status. See 37 CFR 1.56 and 10.18.

Any petition to make special, other than those 
based on applicant’s health or age or the Patent Prosecution 
Highway (PPH) pilot program, filed on or after 
August 25, 2006 must meet the requirements for the 
revised accelerated examination program set forth in 
MPEP § 708.02(a). See subsections III and IV below 
for the requirements for filing a petition to make special 
based on applicant’s health or age.

Applications filed prior to August 25, 2006 are not 
eligible for the revised accelerated examination program 
set forth in MPEP § 708.02(a). Until August 25, 
2006, applicant may file a petition to make special in 
an application filed prior to August 25, 2006 by complying 
with the guidelines and requirements set forth 
in subsections I-II, and V-XII below.

A petition to make special filed on or after August 
25, 2006 will only be granted if it is based upon applicant’s 
health or age or is under the PPH pilot program, 
or if it complies with the requirements set forth in 
MPEP § 708.02(a).

I.MANUFACTURE

An application may be made special on the ground 
of prospective manufacture upon the filing of a petition 
accompanied by the fee under 37 CFR 1.17(h)
and a statement by the applicant, assignee or an attorney/
agent registered to practice before the Office 
alleging:

(A)The possession by the prospective manufacturer 
of sufficient presently available capital (stating 
approximately the amount) and facilities (stating 
briefly the nature thereof) to manufacture the invention 
in quantity or that sufficient capital and facilities 
will be made available if a patent is granted;

If the prospective manufacturer is an individual, 
there must be a corroborating statement from some 
responsible party, as for example, an officer of a bank, 
showing that said individual has the required available 
capital to manufacture;

(B)That the prospective manufacturer will not 
manufacture, or will not increase present manufacture, 
unless certain that the patent will be granted;

(C)That the prospective manufacturer obligates 
himself, herself or itself, to manufacture the invention, 
in the United States or its possessions, in quantity 
immediately upon the allowance of claims or 




 

issuance of a patent which will protect the investment 
of capital and facilities; and

(D)That the applicant or assignee has made or 
caused to be made a careful and thorough search of 
the prior art, or has a good knowledge of the pertinent 
prior art.

Applicant must provide one copy of each of the references 
deemed most closely related to the subject 
matter encompassed by the claims if said references 
are not already of record.

II.INFRINGEMENT

Subject to a requirement for a further showing as 
may be necessitated by the facts of a particular case, 
an application may be made special because of actual 
infringement (but not for prospective infringement) 
upon payment of the fee under 37 CFR 1.17(h) and 
the filing of a petition accompanied by a statement by 
the applicant, assignee, or an attorney/agent registered 
to practice before the Office alleging: 

(A)That there is an infringing device or product 
actually on the market or method in use; 

(B)That a rigid comparison of the alleged 
infringing device, product, or method with the claims 
of the application has been made, and that, in his or 
her opinion, some of the claims are unquestionably 
infringed; and

(C)That he or she has made or caused to be made 
a careful and thorough search of the prior art or has a 
good knowledge of the pertinent prior art.

Applicant must provide one copy of each of the references 
deemed most closely related to the subject 
matter encompassed by the claims if said references 
are not already of record.

Models or specimens of the infringing product or 
that of the application should not be submitted unless 
requested.

III.APPLICANT’S HEALTH

An application may be made special upon a petition 
by applicant accompanied by any evidence showing 
that the state of health of the applicant is such that he 
or she might not be available to assist in the prosecution 
of the application if it were to run its normal 
course, such as a doctor’s certificate or other medical 
certificate. No fee is required for such a petition. See 
37 CFR 1.102(c).

Personal/medical information submitted as evidence 
to support the petition will be available to the 
public if the application file and contents are available 
to the public pursuant to 37 CFR 1.11 or 1.14. If 
applicant does not wish to have this information 
become part of the application file record, the information 
must be submitted pursuant to MPEP § 
724.02.

IV.APPLICANT’S AGE

An application may be made special upon filing a 
petition including any evidence showing that the 
applicant is 
65 years of age, or more, such as a birth 
certificate or applicant’s statement. No fee is required 
with such a petition. See 37 CFR 1.102(c).

Personal/medical information submitted as evidence 
to support the petition will be available to the 
public if the application file and contents are available 
to the public pursuant to 37 CFR 1.11 or 1.14. If 
applicant does not wish to have this information 
become part of the application file record, the information 
must be submitted pursuant to MPEP § 
724.02.

V.ENVIRONMENTAL QUALITY

The U.S. Patent and Trademark Office will accord 
“special” status to all patent applications for inventions 
which materially enhance the quality of the 
environment of mankind by contributing to the restoration 
or maintenance of the basic life-sustaining natural 
elements, i.e., air, water, and soil.

All applicants desiring to participate in this program 
should petition that their applications be 
accorded “special” status. The petition under 37 CFR 
1.102 must state that special status is sought because 
the invention materially enhances the quality of the 
environment of mankind by contributing to the restoration 
or maintenance of the basic life-sustaining natural 
elements. No fee is required for such a petition. 
See 37 CFR 1.102(c). If the application disclosure is 
not clear on its face that the claimed invention materially 
enhances the quality of the environment by contributing 
to the restoration or maintenance of one of 
the basic life-sustaining natural elements, the petition 
must be accompanied by a statement under 37 CFR 
1.102 by the applicant, assignee, or an attorney/agent 




 

registered to practice before the Office explaining 
how the materiality standard is met. The materiality 
standard does not permit an applicant to speculate as 
to how a hypothetical end-user might specially apply 
the invention in a manner that could materially 
enhance the quality of the environment. Nor does 
such standard permit an applicant to enjoy the benefit 
of advanced examination merely because some minor 
aspect of the claimed invention may enhance the quality 
of the environment.

VI.ENERGY

The U.S. Patent and Trademark Office will, on petition, 
accord “special” status to all patent applications 
for inventions which materially contribute to (A) the 
discovery or development of energy resources, or (B) 
the more efficient utilization and conservation of 
energy resources. Examples of inventions in category 
(A) would be developments in fossil fuels (natural 
gas, coal, and petroleum), hydrogen fuel technologies, 
nuclear energy, solar energy, etc. Category (B) would 
include inventions relating to the reduction of energy 
consumption in combustion systems, industrial equipment, 
household appliances, etc.

All applicants desiring to participate in this program 
should petition that their applications be 
accorded “special” status. The petition under 37 CFR 
1.102 must state that special status is sought because 
the invention materially contributes to category (A) or 
(B) set forth above. No fee is required for such a petition, 
37 CFR 1.102(c). If the application disclosure is 
not clear on its face that the claimed invention materially 
contributes to category (A) or (B), the petition 
must be accompanied by a statement under 37 CFR 
1.102 by the applicant, assignee, or an attorney/agent 
registered to practice before the Office explaining 
how the materiality standard is met. The materiality 
standard does not permit an applicant to speculate as 
to how a hypothetical end-user might specially apply 
the invention in a manner that could materially contribute 
to category (A) or (B). Nor does such standard 
permit an applicant to enjoy the benefit of advanced 
examination merely because some minor aspect of the 
claimed invention may be directed to category (A) or 
(B).

VII.INVENTIONS RELATING TO RECOMBINANT 
DNA

In recent years revolutionary genetic research has 
been conducted involving recombinant deoxyribonu-
cleic acid (“recombinant DNA”). Recombinant DNA 
research appears to have extraordinary potential benefit 
for mankind. It has been suggested, for example, 
that research in this field might lead to ways of controlling 
or treating cancer and hereditary defects. The 
technology also has possible applications in agriculture 
and industry. It has been likened in importance to 
the discovery of nuclear fission and fusion. At the 
same time, concern has been expressed over the safety 
of this type of research. The National Institutes of 
Health (NIH) has released guidelines for the 
conduct 
of research concerning recombinant 
DNA.
 
These “Guidelines for Research Involving 
Recombination DNA Molecules,” were published in 
the Federal Register of July 7, 1976, 41 FR 27902-
27943. NIH is sponsoring experimental work to identify 
possible hazards and safety practices and procedures.


In view of the exceptional importance of recombinant 
DNA and the desirability of prompt disclosure of 
developments in the field, the U.S. Patent and Trademark 
Office will accord “special” status to patent 
applications relating to safety of research in the field 
of recombinant DNA. Upon appropriate petition and 
payment of the fee under 37 CFR 1.17(h), the Office 
will make special patent applications for inventions 
relating to safety of research in the field of recombinant 
DNA. Petitions for special status should be 
accompanied by statements under 37 CFR 1.102 by 
the applicant, assignee, or statements by an attorney/
agent registered to practice before the Office explaining 
the relationship of the invention to safety of 
research in the field of recombinant DNA research. 
The fee set forth under 37 
CFR 1.17(h) must also be 
paid.

VIII.SPECIAL EXAMINING PROCEDURE FOR 
CERTAIN NEW APPLICATIONS — ACCELERATED 
EXAMINATION

A new application (one which has not received any 
examination by the examiner) may be granted special 
status provided that applicant (and this term includes 
applicant’s attorney or agent) complies with each of 
the following items:

(A)Submits a petition to make special accompanied 
by the fee set forth in 37 CFR 1.17(h);

(B)Presents all claims directed to a single invention, 
or if the Office determines that all the claims presented 
are not obviously directed to a single 
invention, will make an election without traverse as a 
prerequisite to the grant of special status.

The election may be made by applicant at the time 
of filing the petition for special status. Should applicant 
fail to include an election with the original papers 
or petition and the Office determines that a requirement 
should be made, the established telephone 
restriction practice will be followed.

If otherwise proper, examination on the merits 
will proceed on claims drawn to the elected invention.

If applicant refuses to make an election without 
traverse, the application will not be further examined 
at that time. The petition will be denied on the ground 
that the claims are not directed to a single invention, 
and the application will await action in its regular 
turn.

Divisional applications directed to the nonelected 
inventions will not automatically be given special status 
based on papers filed with the petition in the parent 
application. Each such application must meet on 
its own all requirements for the new special status;

(C)Submits a statement(s) that a pre-examination 
search was made, listing the field of search by class 
and subclass, publication, Chemical Abstracts, foreign 
patents, etc. The pre-examination search must be 
directed to the invention as claimed in the application 
for which special status is requested. A search made 
by a foreign patent office satisfies this requirement if 
the claims in the corresponding foreign application 
are of the same or similar scope to the claims in the 
U.S. application for which special status is requested;

(D)Submits one copy each of the references 
deemed most closely related to the subject matter 
encompassed by the claims if said references are not 
already of record; and

(E)Submits a detailed discussion of the references, 
which discussion points out, with the particularity 
required by 37 CFR 1.111 (b) and (c), how the 
claimed subject matter is patentable over the references. 


In those instances where the request for this special 
status does not meet all the prerequisites set forth 
above, applicant will be notified and the defects in the 
request will be stated. The application will remain in 
the status of a new application awaiting action in its 
regular turn. In those instances where a request is 
defective in one or more respects, applicant will be 
given one opportunity to perfect the request in a 
renewed petition to make special. If perfected, the 
request will then be granted. If not perfected in the 
first renewed petition, any additional renewed petitions 
to make special may or may not be considered at 
the discretion of the Technology Center (TC) Special 
Program Examiner.

Once a request has been granted, prosecution will 
proceed according to the procedure set forth below; 
there is no provision for “withdrawal” from this special 
status.

The special examining procedure of VIII (accelerated 
examination) involves the following procedures:

(A)The new application, having been granted 
special status as a result of compliance with the 
requirements set out above will be taken up by the 
examiner before all other categories of applications 
except those clearly in condition for allowance and 
those with set time limits, such as examiner's answers, 
etc., and will be given a complete first action which 
will include all essential matters of merit as to all 
claims. The examiner’s search will be restricted to the 
subject matter encompassed by the claims. A first 
action rejection will set a 3-month shortened period 
for reply.

(B)During the 3-month period for reply, applicant 
is encouraged to arrange for an interview with 
the examiner in order to resolve, with finality, as 
many issues as possible. In order to afford the examiner 
time for reflective consideration before the interview, 
applicant or his or her representative should 
cause to be placed in the hands of the examiner at 
least one working day prior to the interview, a copy 
(clearly denoted as such) of the amendment that he or 
she proposes to file in response to the examiner’s 
action. Such a paper will not become a part of the file, 
but will form a basis for discussion at the interview.

(C)Subsequent to the interview, or responsive to 
the examiner’s first action if no interview was had, 
applicant will file the “record” reply. The reply at this 
stage, to be proper, must be restricted to the rejections, 
objections, and requirements made. Any amendment 
which would require broadening the search field will 
be treated as an improper reply.

(D)The examiner will, within 1 month from the 
date of receipt of applicant’s formal reply, take up the 
application for final disposition. This disposition will 
constitute either a final action which terminates with 
the setting of a 3-month period for reply, or a notice of 
allowance. The examiner’s reply to any amendment 
submitted after final rejection should be prompt and 
by way of form PTOL-303, by passing the application 
to issue, or by an examiner’s answer should applicant 
choose to file an appeal brief at this time. The use of 
these forms is not intended to open the door to further 
prosecution. Of course, where relatively minor issues 
or deficiencies might be easily resolved, the examiner 
may use the telephone to inform the applicant of such.

(E)A personal interview after a final Office 
action will not be permitted unless requested by the 
examiner. However, telephonic interviews will be permitted 
where appropriate for the purpose of correcting 
any minor outstanding matters.

After allowance, these applications are given top 
priority for printing. See MPEP § 1309.

IX.SPECIAL STATUS FOR PATENT APPLICATIONS 
RELATING TO SUPERCONDUCTIVITY


In accordance with the President’s mandate directing 
the U.S. Patent and Trademark Office to accelerate 
the processing of patent applications and 
adjudication of disputes involving superconductivity 
technologies when requested by the applicant to do 
so, the U.S. Patent and Trademark Office will, on 
request, accord “special” status to all patent applications 
for inventions involving superconductivity 
materials. Examples of such inventions would include 
those directed to superconductive materials themselves 
as well as to their manufacture and application. 
In order that the U.S. Patent and Trademark Office 
may implement this procedure, we invite all applicants 
desiring to participate in this program to request 
that their applications be accorded “special” status. 
Such requests should be accompanied by a statement 
under 37 CFR 1.102 that the invention involves superconductive 
materials. No fee is required.

X.INVENTIONS RELATING TO HIV/AIDS 
AND CANCER

In view of the importance of developing treatments 
and cures for HIV/AIDS and cancer and the desirability 
of prompt disclosure of advances made in these 
fields, the U.S. Patent and Trademark Office will 
accord “special” status to patent applications relating 
to HIV/AIDS and cancer. 

Applicants who desire that an application relating 
to HIV/AIDS or cancer be made special should file a 
petition and the fee under 37 CFR 1.17(h) requesting 
the U.S. Patent and Trademark Office to make the 
application special. The petition for special status 
should be accompanied by a statement explaining 
how the invention contributes to the diagnosis, treatment 
or prevention of HIV/AIDS or cancer.

XI.INVENTIONS FOR COUNTERING TERRORISM


In view of the importance of developing technologies 
for countering terrorism and the desirability of 
prompt disclosure of advances made in these fields, 
the U.S. Patent and Trademark Office will accord 
“special” status to patent applications for inventions 
which materially contribute to countering terrorism.

International terrorism as defined in 18 U.S.C. 
2331 includes “activities that - (A) involve violent 
acts or acts dangerous to human life that are a violation 
of the criminal laws of the United States or of any 
State, or that would be a criminal violation if committed 
within the jurisdiction of the United States or of 
any State; [and] (B) appear to be intended - (i) to 
intimidate or coerce a civilian population; (ii) to influence 
the policy of a government by intimidation or 
coercion; or (iii) to affect the conduct of a government 
by assassination or kidnapping...” The types of technology 
for countering terrorism could include, but are 
not limited to, systems for detecting/identifying 
explosives, aircraft sensors/security systems, and 
vehicular barricades/disabling systems. 

All applicants desiring to participate in this program 
should petition that their applications be 
accorded special status. The petition under 37 CFR 
1.102 must state that special status is sought because 
the invention materially contributes to countering terrorism. 
No fee is required for such a petition. See 37 
CFR 1.102(c). If the application disclosure is not clear 
on its face that the claimed invention is materially 




 

directed to countering terrorism, the petition must be 
accompanied by a statement under 37 CFR 1.102 by 
the applicant, assignee, or an attorney/agent registered 
to practice before the Office explaining how the 
invention materiality contributes to countering terrorism. 
The materiality standard does not permit an 
applicant to speculate as to how a hypothetical end-
user might specially apply the invention in a manner 
that could counter terrorism. Nor does such standard 
permit an applicant to enjoy the benefit of advanced 
examination merely because some minor aspect of the 
claimed invention may be directed to countering terrorism.


XII.SPECIAL STATUS FOR APPLICATIONS 
RELATING TO BIOTECHNOLOGY 
FILED BY APPLICANTS WHO ARE 
SMALL ENTITIES

Applicants who are small entities may request that 
their biotechnology applications be granted “special” 
status. Applicant must file a petition with the petition 
fee under 37 
CFR 1.17(h) requesting the special status 
and must: 

(A)state that small entity status has been established 
or include a statement establishing small entity 
status; 

(B)state that the subject of the patent application 
is a major asset of the small entity; and 

(C)state that the development of the technology 
will be significantly impaired if examination of the 
patent application is delayed, including an explanation 
of the basis for making the statement.

FORMAL REQUIREMENTS OF PETITION TO 
MAKE SPECIAL

Any petition to make special should:

(A)be in writing; and 

(B)identify the application by application number 
and filing date.

HANDLING OF PETITIONS TO MAKE SPECIAL


Applications which have been made special will be 
advanced out of turn for examination and will continue 
to be treated as special throughout the entire 
prosecution in the Office.

Each petition to make special, regardless of the 
ground upon which the petition is based and the 
nature of the decision, is made of record in the application 
file, together with the decision thereon. The 
part of the Office that rules on a petition is responsible 
for properly entering that petition and the resulting 
decision in the file record. The petition, with any 
attached papers and supporting affidavits, will be 
given a single paper number and so entered in the 
“Contents” of the file. The decision will be accorded a 
separate paper number and similarly entered. To 
ensure entries in the “Contents” in proper order, the 
technical support staff in the TC will make certain that 
all papers prior to a petition have been entered and/or 
listed in the application file before forwarding it for 
consideration of the petition. Note MPEP § 1002.02 
(s). For Image File Wrapper (IFW) processing, see 
IFW Manual.

Petitions to make special are decided by the Special 
Program Examiner of the TC to which the application 
is assigned.



708.02(a)Accelerated Examination [R-5]

All petitions to make special, except those based on 
applicant’s health or age or the Patent Prosecution 
Highway (PPH) pilot program, filed on or after 
August 25, 2006 must meet the requirements set forth 
in subsection I below. See MPEP § 708.02 subsection 
III or IV (where appropriate) for the requirements for 
filing a petition to make special based on applicant’s 
health or age.

Applications filed prior to August 25, 2006 are noteligible for the accelerated examination program set 
forth below. A petition to make special filed on or 
after August 25, 2006 will only be granted if it is 
based upon applicant’s health or age or is under the 
PPH pilot program, or if it complies with the requirements 
set forth below.

I.REQUIREMENTS FOR PETITIONS TO 
MAKE SPECIAL UNDER ACCELERATED 
EXAMINATION

A new application may be granted accelerated 
examination status under the following conditions:

(A)The application must be filed with a petition 
to make special under the accelerated examination 
program accompanied by either the fee set forth in 




 

37 
CFR 1.17(h) or a statement that the claimed subject 
matter is directed to environmental quality, the 
development or conservation of energy resources, 
or countering terrorism. See 37 
CFR 1.102(c)(2). 
Applicant should use form PTO/SB/28 for filing the 
petition. 

(B)The application must be a non-reissue utility 
or design application filed under 35 
U.S.C. 111(a).

(C)The application, petition, and required fees 
must be filed electronically using the USPTO’s electronic 
filing system (EFS), or EFS-Web. If the 
USPTO’s EFS and EFS-Web are not available to the 
public during the normal business hours for these systems 
at the time of filing the application, applicant 
may file the application, other papers and fees by mail 
accompanied by a statement that EFS and EFS-Web 
were not available during the normal business hours, 
but the final disposition of the application may occur 
later than twelve months from the filing of the application. 
See subsection VIII.F. below for more information.


(D)At the time of filing, the application must be 
complete under 37 
CFR 1.51 and in condition for 
examination. For example, the application must be 
filed together with the basic filing fee, search fee, 
examination fee, and application size fee (if applicable), 
and an executed oath or declaration under 
37 
CFR 1.63. See subsection VIII.C. below for more 
information.

(E)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. By filing a petition to make special 
under the accelerated examination program the applicant 
is agreeing not to separately argue the patentability 
of any dependent claim during any appeal in the 
application. Specifically, 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 (37 
CFR 41.37(c)(1)(vii)). 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. See 
form PTO/SB/28.

(F)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. See form 
PTO/SB/28.

(G)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. See form 
PTO/SB/28.

(H)At the time of filing, applicant must provide a 
statement that a preexamination search was conducted, 
including an identification of the field of 
search by United States class and subclass and the 
date of the search, where applicable, and for database 
searches, the search logic or chemical structure or 
sequence used as a query, the name of the file or files 
searched and the database service, and the date of the 
search. 

(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. See subsection 
IV below for more information.

(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. See 37 
CFR 1.56 and 
10.18.

(I)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) in compliance with 37 
CFR 1.98 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 
with the particularity required by 37 
CFR 1.111(b) 
and (c). 

(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 the first paragraph 
of 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 under 
35 
U.S.C. 112, paragraph 
6; and 

(ii)the structure, material, or acts in the 
specification that correspond to each means- (or step-) 
plus-function claim element that invokes consideration 
under 35 
U.S.C. 112, paragraph 
6. If the application 
claims the benefit of one or more applications 
under title 35, United States Code, the showing must 
also include where each limitation of the claims finds 
support under the first paragraph of 35 
U.S.C. 112 in 
each such application in which such support exists.

(6)The accelerated examination support document 
must identify any cited references that may be 
disqualified as prior art under 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)). This opportunity to perfect a petition 
does not apply to applications that are not in condition 
for examination on filing. See subsection 
VIII.C. below. If the document is satisfactorily corrected 
in a timely manner, the petition will then be 
granted, but the final disposition of the application 
may occur later than twelve months from the filing 
date of the application. Once a petition has been 
granted, prosecution will proceed according to the 
procedure set forth below.

III.THE INITIAL ACTION ON THE APPLICATION 
BY THE EXAMINER

Once the application is granted special status, the 
application will be docketed and taken up for action 
expeditiously (e.g., within two weeks of the granting 
of special status). If it is determined that all the claims 
presented are not directed to a single invention, the 
telephone restriction practice set forth in MPEP § 
812.01 will be followed. Applicant must make an 
election without traverse during the telephonic interview. 
If applicant refuses to make an election without 
traverse, or the examiner cannot reach the applicant 
after a reasonable effort, the examiner will treat the 
first claimed invention (the invention of claim 1) as 
constructively elected without traverse for examination. 
Continuing applications (e.g., a divisional application 
directed to the non-elected inventions) will not 
automatically be given special status based on papers 
filed with the petition in the parent application. Each 
continuing application must on its own meet all 
requirements for special status.




 

If the USPTO determines that a possible rejection 
or other issue must be addressed, the examiner will 
telephone the applicant to discuss the issue and any 
possible amendment or submission to resolve such 
issue. The USPTO will not issue an Office action 
(other than a notice of allowance) unless either: 
(A)
 
an interview was conducted but did not result in 
the application being placed in condition for allowance; 
or (B)
 
there is a determination that an interview 
is unlikely to result in the application being placed in 
condition for allowance. Furthermore, prior to the 
mailing of any Office action rejecting the claims, the 
USPTO will conduct a conference to review the rejections 
set forth in the Office action.

If an Office action other than a notice of allowance 
or a final Office action is mailed, the Office action 
will set a shortened statutory period of one month or 
thirty days, whichever is longer. No extensions of this 
shortened statutory period under 37 
CFR 1.136(a) will 
be permitted. Failure to timely file a reply will result 
in abandonment of the application. See subsections V 
and VI for more information on post-allowance and 
after-final procedures.

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: (A) add claims which 
would result in more than three independent claims, 
or more than twenty total claims, pending in the application; 
(B) 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 (C)
 
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. See subsection VIII.D. below for more 
information. 

For any amendment to the claims (including any 
new claim) that is not encompassed by the accelerated 
examination support document in subsection I, item 
(I) above, applicant is required to provide an updated 
accelerated examination support document that 
encompasses the amended or new claims at the time 
of filing the amendment. Failure to provide such 
updated accelerated examination support document at 
the time of filing the amendment will cause the 
amendment to be treated as not fully responsive and 
not to be entered. See subsection VIII.D. below for 
more information. Any IDS filed with an updated 
accelerated examination support document must also 
comply with the requirements of 37 
CFR 1.97 and 
1.98.

Any reply or other papers must be filed electronically 
via EFS-Web so that the papers will be expeditiously 
processed and considered. If the papers are not 
filed electronically via EFS-Web, or the reply is not 
fully responsive, the final disposition of the application 
may occur later than twelve months from the filing 
of the application.

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 (form PTOL-85) 
to avoid abandonment of the application. In order for 
the application to be expeditiously issued as a patent, 
the applicant must also: (A)
 
pay the issue fee (and any 
outstanding fees due) within one month from the 
mailing date of the form PTOL-85; and (B)
 
not file 
any post-allowance papers that are not required by the 
USPTO (e.g., an amendment under 37 
CFR 1.312 that 
was not requested by the USPTO).

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. Prior to the 
mailing of a final Office action, the USPTO will conduct 
a conference to review the rejections set forth in 
the final Office action (i.e., the type of conference 
conducted in an application on appeal when the applicant 
requests a pre-appeal brief conference). In order 
for the application to be expeditiously forwarded to 
the Board of Patent Appeals and Interferences (BPAI) 
for a decision, applicant must: (A)
 
promptly file the 
notice of appeal, appeal brief, and appeal fees; and 
(B) not request a pre-appeal brief conference. A pre-
appeal brief conference would not be of value in an 
application under a final Office action because the 

examiner will have already conducted such a conference 
prior to mailing the final Office action. During 
the appeal process, the application will be treated in 
accordance with the normal appeal procedures (see 
MPEP Chapter 1200). The USPTO will continue to 
treat the application as special under the accelerated 
examination program after the decision by the BPAI.

Any after-final amendment, affidavit, or other evidence 
filed under 37 CFR 1.116 or 41.33 must also 
meet the requirements set forth in subsection IV 
above. If applicant files a request for continued examination 
(RCE) under 37 
CFR 1.114 with a submission 
and fee, the submission must meet the reply requirements 
under 37 
CFR 1.111 (see 37 
CFR 1.114(c)) and 
the requirements set forth in subsection IV above. The 
filing of the RCE is a final disposition for purposes of 
the twelve-month goal for the accelerated examination 
program. The application will retain its special 
status and remain in the accelerated examination program. 
Thus, the examiner will continue to examine 
the application in accordance with the procedures set 
forth in subsection III above and any subsequent 
replies filed by applicant must meet the requirements 
of subsection IV above. The goal of the accelerated 
examination program will then be to reach a final disposition 
of the application within twelve months from 
the filing of the RCE.

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 CFR 1.181, 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:

(1)plant applications; 

(2)reissue applications; 

(3)applications entering the national stage from 
an international application after compliance with 
35 
U.S.C. 371; 

(4)reexamination proceedings; 

(5)RCEs under 37 
CFR 1.114 (unless the application 
was previously granted special status under the 
program); and 

(6)petitions to make special based on applicant’s 
health or age or under the PPH pilot program. 

Rather than participating in the accelerated examination 
program, applicants for a design patent may 
participate in the expedited examination program by 
filing a request in compliance with the guidelines set 
forth in MPEP § 1504.30. See 37 CFR 1.155.

B.Form

Applicant should use form PTO/SB/28 for filing a 
petition to make special, other than those based on 
applicant’s health or age or the PPH pilot program. 
The form is available on EFS-Web and on the 
USPTO’s Internet Web site at http://www.uspto.gov/
web/forms/index.html.

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:

(1)Basic filing fee, search fee, and examination 
fee, under 37 
CFR 1.16 (see MPEP § 607 subsection 
I);

(2)Application size fee under 37 
CFR 1.16(s) (if 
the specification and drawings exceed 100 sheets of 
paper) (see MPEP § 607 subsection II);

(3)An executed oath or declaration in compliance 
with 37 
CFR 1.63;

(4)A specification (in compliance with 37 
CFR 
1.52) containing a description (37 
CFR 1.71) and 
claims in compliance with 37 
CFR 1.75;

(5)A title and an abstract in compliance with 
37 
CFR 1.72; 

(6)Drawings in compliance with 37 
CFR 1.84;

(7)Electronic submissions of sequence listings in 
compliance with 37 
CFR 1.821(c) or (e), large tables, 
or computer listings in compliance with 37 
CFR 1.96, 
submitted via the USPTO’s electronic filing system 
(EFS) in ASCII text as part of an associated file (if 
applicable);

(8)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); 

(9)Domestic benefit claims under 35 
U.S.C. 
119(e), 120, 121, or 365(c) in compliance with 
37 
CFR 1.78 (e.g., 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);


(10)English language translation under 37 
CFR 
1.52(d), a statement that the translation is accurate, 
and the processing fee under 37 
CFR 1.17(i) (if the 
specification is in a non-English language);

(11)No preliminary amendments present on the 
filing date of the application; and

(12)No petition under 37 
CFR 1.47 for a non-
signing inventor.

Furthermore, if the application is a design application, 
the application must also comply with the 
requirements set forth in 37 
CFR 1.151, 1.152, 1.153, 
and 1.154.

Applicant should also provide a suggested classification, 
by class and subclass, for the application on 
the transmittal letter, petition, or an application data 
sheet as set forth in 37 
CFR 1.76(b)(3) so that the 
application can be expeditiously processed. 

The petition to make special will be dismissed if the 
application omits an item or includes a paper that 
causes the Office of Initial Patent Examination 
(OIPE) 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 abona 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. An 
applicant may abandon the application that has been 
granted special status under the accelerated examination 
program in favor of a continuing application, and 
the continuing application will not be given special 
status under the accelerated examination program 
unless the continuing application is filed with a petition 
to make special under the accelerated examination 
program. The filing of an RCE under 37 CFR 
1.114, however, will not result in an application being 
withdrawn 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: 

(1)the mailing of a notice of allowance; 

(2)the mailing of a final Office action; 

(3)the filing of an RCE; or 

(4)the abandonment of the application. 

The final disposition of an application, however, 
may occur later than the twelve-month time frame in 
certain situations (e.g., an IDS citing new prior art 
after the mailing of a first Office action). See subsection 
VII above for more information on other events 
that may cause examination to extend beyond this 
twelve-month time frame. In any event, however, this 
twelve-month time frame is simply a goal. Any failure 
to meet the twelve-month goal or other issues relating 
to this twelve-month goal are neither petitionable nor 
appealable matters.

IX.FORM PARAGRAPHS

The following form paragraphs may be used for the 
accelerated examination program:

¶ 7.126.AE Conclusion of Requirement Mailed Without 
Any Other Office Action – Application Under Accelerated 
Examination

 This requirement is subject to the provisions of 37 CFR 1.134, 
1.135 and 1.136 and has a shortened statutory period of ONE (1) 
MONTH or THIRTY (30) DAYS, whichever is longer. Since 
this application has been granted special status under the accelerated 
examination program, NO extensions of time under 37 CFR 
1.136(a) will be permitted.

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. Any reply must be filed 
electronically via EFS-Web so that the papers will be expeditiously 
processed and considered. If the reply is not filed electronically 
via EFS-Web, the final disposition of the application may 
occur later than twelve months from the filing of the application.

Examiner Note:

1.This form paragraph must be preceded by form paragraph 
7.105, and should appear at the conclusion of any requirement for 
information mailed without any other Office action. If the requirement 
for information is mailed with an Office action, use form 
paragraph 7.125 instead.

2.This form paragraph may only be used in an application filed 
on or after August 25, 2006, that has been granted special status 
under the accelerated examination program or other provisions 
under 37 CFR 1.102(c)(2) or (d).

3.This form paragraph should not be used for an application 
that has been granted special status under 37 CFR 1.102(c)(1) on 
the basis of applicant’s health or age, or the Patent Prosecution 
Highway pilot program.

¶ 7.42.08.AE Request for Continued Examination With 
Submission Filed Under 37 CFR 1.114 Which Is Not Fully 
Responsive - Application Under Accelerated Examination

 Receipt is acknowledged of a request for continued examination 
under 37 CFR 1.114, including the fee set forth in 37 CFR 
1.17(e) and a submission, filed on [1]. The submission, however, 
is not fully responsive to the prior Office action because [2]. Since 
the submission appears to be a bona fide attempt to provide a 
complete reply to the prior Office action, applicant is given a 
shortened statutory period of ONE (1) MONTH or THIRTY (30) 
DAYS from the mailing date of this letter, whichever is longer, to 
submit a complete reply. This shortened statutory period for reply 
supersedes the time period set in the prior Office action. Since this 
application has been granted special status under the accelerated 
examination program, NO extensions of time under 37 CFR 
1.136(a) will be permitted.

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. Any reply must be filed 
electronically via EFS-Web so that the papers will be expeditiously 
processed and considered. If the reply is not filed electronically 
via EFS-Web, the final disposition of the application may 
occur later than twelve months from the filing of the application.

Examiner Note:

1.Use this form paragraph to acknowledge an RCE filed with 
the fee and a submission where the submission is not fully responsive 
to the prior Office action. This form paragraph may be used 
for any RCE filed with a submission which is not fully responsive, 
i.e., an RCE filed after final rejection, after allowance, after an 
Office action under Ex parte Quayle, 25 USPQ 74, 453 O.G. 213 
(Comm’r Pat. 1935), or after appeal.

2.In bracket 2, identify the reasons why the examiner considers 
the submission not to be fully responsive.

3.To be eligible for continued examination under 37 CFR 
1.114, the application must be a utility or plant application filed 
under 35 U.S.C. 111(a) on or after June 8, 1995, or an international 
application filed under 35 U.S.C. 363 on or after June 8, 
1995. The RCE must be filed on or after May 29, 2000.

4.This form paragraph may only be used in an application filed 
on or after August 25, 2006, that has been granted special status 
under the accelerated examination program or other provisions 
under 37 CFR 1.102(c)(2) or (d). 

5.This form paragraph should not be used for an application 
that has been granted special status under 37 CFR 1.102(c)(1) on 
the basis of applicant’s health or age, or the Patent Prosecution 
Highway pilot program.

¶ 7.51.AE Quayle Action - Application Under Accelerated 
Examination

 This application is in condition for allowance except for the 
following formal matters: [1].

Prosecution on the merits is closed in accordance with the 
practice under Ex parte Quayle, 25 USPQ 74, 453 O.G. 213 
(Comm’r Pat. 1935).

Since this application has been granted special status under the 
accelerated examination program, a shortened statutory period for 
reply to this action is set to expire ONE (1) MONTH or 
THIRTY (30) DAYS, whichever is longer, from the mailing date 
of this letter. NO extensions of time under 37 CFR 1.136(a) will 
be permitted.

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. Any reply must be filed 
electronically via EFS-Web so that the papers will be expedi
tiously processed and considered. If the reply is not filed electronically 
via EFS-Web, the final disposition of the application may 
occur later than twelve months from the filing of the application.

Examiner Note:

1.Explain the formal matters which must be corrected in 
bracket 1.

2. This form paragraph may only be used in an application 
filed on or after August 25, 2006, that has been granted special 
status under the accelerated examination program or other provisions 
under 37 CFR 1.102(c)(2) or (d). 

3.This form paragraph should not be used for an application 
that has been granted special status under 37 CFR 1.102(c)(1) on 
the basis of applicant’s health or age, or the Patent Prosecution 
Highway pilot program.

¶ 7.84.AE Amendment Is Non-Responsive to Interview – 
Application Under Accelerated Examination

The reply filed on [1] is not fully responsive to the prior Office 
action because it fails to include a complete or accurate record of 
the substance of the [2] interview. [3] Since the above-mentioned 
reply appears to be bona fide, applicant is given a TIME PERIOD 
of ONE (1) MONTH or THIRTY (30) DAYS from the mailing 
date of this notice, whichever is longer, within which to supply the 
omission or correction in order to avoid abandonment. Since this 
application has been granted special status under the accelerated 
examination program, NO extensions of this time period under 37 
CFR 1.136(a) will be permitted.

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. Any reply must be filed 
electronically via EFS-Web so that the papers will be expeditiously 
processed and considered. If the reply is not filed electronically 
via EFS-Web, the final disposition of the application may 
occur later than twelve months from the filing of the application.

Examiner Note:

1.In bracket 2, insert the date of the interview.

2.In bracket 3, explain the deficiencies.

3.This form paragraph may only be used in an application filed 
on or after August 25, 2006, that has been granted special status 
under the accelerated examination program or other provisions 
under 37 CFR 1.102(c)(2) or (d).

4.This form paragraph should not be used for an application 
that has been granted special status under 37 CFR 1.102(c)(1) on 
the basis of applicant’s health or age, or the Patent Prosecution 
Highway pilot program.

¶ 7.84.01.AE Paper Is Unsigned – Application Under 
Accelerated Examination

The proposed reply filed on [1] has not been entered because it 
is unsigned. Since the above-mentioned reply appears to be bona 
fide, applicant is given a TIME PERIOD of ONE (1) MONTH or 
THIRTY (30) DAYS from the mailing date of this notice, whichever 
is longer, within which to supply the omission or correction 
in order to avoid abandonment. Since this application has been 
granted special status under the accelerated examination program, 
NO extensions of this time period under 37 CFR 1.136(a) will be 
permitted.

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. Any reply must be filed 
electronically via EFS-Web so that the papers will be expeditiously 
processed and considered. If the reply is not filed electronically 
via EFS-Web, the final disposition of the application may 
occur later than twelve months from the filing of the application.

Examiner Note:

1.Examiner should first try to contact applicant by telephone 
and ask for a properly signed reply or ratification of the reply. If 
attempts to contact applicant are unsuccessful, examiner may use 
this form paragraph in a letter requiring a properly signed reply or 
ratification if the reply is to a non-final Office action.

2.This form paragraph may only be used in an application filed 
on or after August 25, 2006, that has been granted special status 
under the accelerated examination program or other provisions 
under 37 CFR 1.102(c)(2) or (d). 

3.This form paragraph should not be used for an application 
that has been granted special status under 37 CFR 1.102(c)(1) on 
the basis of applicant’s health or age, or the Patent Prosecution 
Highway pilot program.

¶ 7.95.AE Bona Fide, Non-Responsive Amendments – 
Application Under Accelerated Examination

The reply filed on [1] is not fully responsive to the prior Office 
action because of the following omission(s) or matter(s): [2]. See 
37 CFR 1.111. Since the above-mentioned reply appears to be 
bona fide, applicant is given a TIME PERIOD of ONE (1) 
MONTH or THIRTY (30) DAYS from the mailing date of this 
notice, whichever is longer, within which to supply the omission 
or correction in order to avoid abandonment. Since this application 
has been granted special status under the accelerated examination 
program, NO extensions of time under 37 CF1.136(a) will 
be permitted.

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. Any reply must be filed 
electronically via EFS-Web so that the papers will be expeditiously 
processed and considered. If the reply is not filed electronically 
via EFS-Web, the final disposition of the application may 
occur later than twelve months from the filing of the application.

Examiner Note:

1.This practice does not apply where there has been a deliberate 
omission of some necessary part of a complete reply, or where 
the application is subject to a final Office action. Under such 
cases, the examiner has no authority to grant an extension if the 
period for reply has expired. See form paragraph 7.91.

2.This form paragraph may only be used in an application filed 
on or after August 25, 2006, that has been granted special status 
under the accelerated examination program or other provisions 
under 37 CFR 1.102(c)(2) or (d). 

3.This form paragraph should not be used for an application 
that has been granted special status under 37 CFR 1.102(c)(1) on 
the basis of applicant’s health or age, or the Patent Prosecution 
Highway pilot program.

¶ 8.26.AE Canceled Elected Claims, Non-Responsive – 
Application Under Accelerated Examination

The amendment filed on [1] canceling all claims drawn to the 
elected invention and presenting only claims drawn to a non-
elected invention is non-responsive (MPEP § 821.03). The 
remaining claims are not readable on the elected invention 
because [2].

Since the above-mentioned amendment appears to be a bona 
fide attempt to reply, applicant is given a TIME PERIOD of ONE 
(1) MONTH or THIRTY (30) DAYS, whichever is longer, from 
the mailing date of this notice within which to supply the omission 
or correction in order to avoid abandonment. Since this application 
has been granted special status under the accelerated examination 
program, NO extensions of time under 37 CFR 1.136(a) 
will be permitted.

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. Any reply must be filed 
electronically via EFS-Web so that the papers will be expeditiously 
processed and considered. If the reply is not filed electronically 
via EFS-Web, the final disposition of the application may 
occur later than twelve months from the filing of the application.

Examiner Note:

1.This form paragraph should only be used in an application 
filed on or after August 25, 2006, that has been granted special 
status under the accelerated examination program or other provisions 
under 37 CFR 1.102(c)(2) or (d). 

2. This form paragraph should not be used for an application 
that has been granted special status under 37 CFR 1.102(c)(1) on 
the basis of applicant’s health or age, or the Patent Prosecution 
Highway pilot program.

¶ 19.02.AE Requirement for Information – Application 
Under Accelerated Examination

The protest under 37 CFR 1.291 filed on [1] has been considered. 
In order to reach a full and proper consideration of the issues 
raised therein, it is necessary to obtain additional information 
from applicant regarding these issues. In particular [2]. The failure 
to reply to this requirement for information within ONE (1) 
MONTH or THIRTY (30) DAYS, whichever is longer, of the 
mailing date of this requirement will result in abandonment of the 
application. Since this application has been granted special status 
under the accelerated examination program, NO extensions of 
time under 37 CFR 1.136(a) will be permitted.

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. Any reply must be filed 
electronically via EFS-Web so that the papers will be expeditiously 
processed and considered. If the reply is not filed electronically 
via EFS-Web, the final disposition of the application may 
occur later than twelve months from the filing of the application.

Examiner Note:

1.While the examiner normally should not need further information 
from applicant, this form paragraph may be used to 
request specific additional information from the applicant. 

2.This form paragraph may only be used in an application filed 
on or after August 25, 2006, that has been granted special status 
under the accelerated examination program or other provisions 
under 37 CFR 1.102(c)(2) or (d). 

3.This form paragraph should not be used for an application 
that has been granted special status under 37 CFR 1.102(c)(1) on 
the basis of applicant’s health or age, or the Patent Prosecution 
Highway pilot program

¶ 24.01.AE Cover Letter for Use With Notice To Comply 
With Sequence Rules – Application Under Accelerated 
Examination

This application contains sequence disclosures that are encompassed 
by the definitions for nucleotide and/or amino acid 
sequences set forth in 37 CFR 1.821(a)(1) and (a)(2). However, 
this application fails to comply with the requirements of 37 CFR 
1.821 through 1.825 for the reason(s) set forth below or on the 
attached Notice To Comply With Requirements For Patent Applications 
Containing Nucleotide Sequence And/Or Amino Acid 
Sequence Disclosures. [1]

Applicant is given ONE (1) MONTH, or THIRTY (30) 
DAYS, whichever is longer, from the mailing date of this letter 
within which to comply with the sequence rules, 37 CFR 1.821 - 
1.825. Failure to comply with these requirements will result in 
ABANDONMENT of the application under 37 CFR 1.821(g). 
Since this application has been granted special status under the 
accelerated examination program, NO extensions of time under 
37 CFR 1.136(a) will be permitted.

Direct the reply to the undersigned. Applicant is requested to 
return a copy of the attached Notice To Comply with the reply.

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. Any reply must be filed 
electronically via EFS-Web so that the papers will be expeditiously 
processed and considered. If the reply is not filed electronically 
via EFS-Web, the final disposition of the application may 
occur later than twelve months from the filing of the application.

Examiner Note:

1. Use this form paragraph only for the initial communication 
to the applicant. Use either form paragraph 24.03 or 24.04 
for subsequent communications.

2.In bracket 1, insert how the application fails to comply with 
the requirements of 37 CFR 1.821 through 1.825.

3.Conclude action with appropriate form paragraph(s) 7.100-
7.102.

4.When mailing the Office action, attach a Notice To Comply 
With Requirements for Patent Applications Containing Nucleotide 
And/Or Amino Acid Sequence Disclosures, along with a 
marked-up copy of the Raw Sequence Listing, if any.

5.This form paragraph may only be used in an application filed 
on or after August 25, 2006, that has been granted special status 
under the accelerated examination program or other provisions 
under 37 CFR 1.102(c)(2) or (d). 

6.This form paragraph should not be used for an application 
that has been granted special status under 37 CFR 1.102(c)(1) on 
the basis of applicant’s health or age, or the Patent Prosecution 
Highway pilot program.

¶ 24.02.AE Cover Letter for Use with CRF Diskette 
Problem Report – Application Under Accelerated 
Examination

This application contains sequence disclosures that are encompassed 
by the definitions for nucleotide and/or amino acid 
sequences set forth in 37 CFR 1.821(a)(1) and (a)(2). A computer 
readable form (CRF) of the sequence listing was submitted. However, 
the CRF could not be processed by the Scientific and Technical 
Information Center (STIC) for the reason(s) set forth on the 
attached CRF Diskette Problem Report.

Applicant is given ONE (1) MONTH, or THIRTY (30) 
DAYS, whichever is longer, from the mailing date of this letter 
within which to comply with the sequence rules, 37 CFR 1.821 - 
1.825. Failure to comply with these requirements will result in 
ABANDONMENT of the application under 37 CFR 1.821(g). 
Since this application has been granted special status under the 
accelerated examination program, NO extensions of time under 
37 CFR 1.136(a) will be permitted.

Direct the reply to the undersigned. Applicant is requested to 
return a copy of the attached CRF Diskette Problem Report with 
the reply.

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. Any reply must be filed 
electronically via EFS-Web so that the papers will be expeditiously 
processed and considered. If the reply is not filed electronically 
via EFS-Web, the final disposition of the application may 
occur later than twelve months from the filing of the application.

Examiner Note:

1.Use this form paragraph only for the initial communication 
to the applicant. Use either form paragraph 24.03 or 24.04 for 
subsequent communications.

2.Conclude action with appropriate form paragraph(s) 7.100-
7.102.

3.When mailing the Office action, attach the CRF Diskette 
Problem Report.

4.This form paragraph may only be used in an application filed 
on or after August 25, 2006, that has been granted special status 
under the accelerated examination program or other provisions 
under 37 CFR 1.102(c)(2) or (d).

5.This form paragraph should not be used for an application 
that has been granted special status under 37 CFR 1.102(c)(1) on 
the basis of applicant’s health or age, or the Patent Prosecution 
Highway pilot program.

¶ 24.03.AE Compact Disc/CRF Submission Is Not Fully 
Responsive, Bona Fide Attempt – Application Under 
Accelerated Examination

The reply filed [1] is not fully responsive to the Office communication 
mailed [2] for the reason(s) set forth below or on the 
attached Notice To Comply With The Sequence Rules or CRF 
Diskette Problem Report.

Since the above-mentioned reply appears to be bona fide, 
applicant is given a TIME PERIOD of ONE (1) MONTH or 
THIRTY (30) DAYS from the mailing date of this notice, whichever 
is longer, within which to supply the omission or correction 
in order to avoid abandonment. Since this application has been 
granted special status under the accelerated examination program, 
NO extensions of time under 37 CFR 1.136(a) will be permitted. 

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. Any reply must be filed 
electronically via EFS-Web so that the papers will be expeditiously 
processed and considered. If the reply is not filed electronically 
via EFS-Web, the final disposition of the application may 
occur later than twelve months from the filing of the application.

Examiner Note:

1.This form paragraph may be used whether or not the six-
month period for reply has expired. It is intended for use whenever 
a bona fide reply has been submitted. This practice does not 
apply where there has been a deliberate omission of some necessary 
part of a complete reply or where the reason the reply is 
incomplete cannot be characterized as an apparent oversight or 
apparent inadvertence. Under such cases the examiner has no 
authority to grant an extension if the six-month period for reply 
has expired. Use form paragraph 24.04 under such circumstances.

2.In bracket 1, insert the date of the reply and in bracket 2, 
insert the mail date of the communication requiring compliance.

3.When mailing the Office action, attach a Notice To Comply 
With Requirements For Patent Applications Containing Nucleotide 
Sequence And/Or Amino Acid Sequence Disclosures, if any, 
along with a marked-up copy of the Raw Sequence Listing, or 
CRF Diskette Problem Report.

4.See 37 CFR 1.135(c), 1.821(g); MPEP §§ 710.02(c), 
711.02(a), 714.02 and 714.03.

5.This form paragraph may only be used in an application filed 
on or after August 25, 2006, that has been granted special status 
under the accelerated examination program or other provisions 
under 37 CFR 1.102(c)(2) or (d). 

6.This form paragraph should not be used for an application 
that has been granted special status under 37 CFR 1.102(c)(1) on 
the basis of applicant’s health or age, or the Patent Prosecution 
Highway pilot program.

===708.03 Examiner Tenders Resignation===

Whenever an examiner tenders his or her resignation, 
the supervisory patent examiner should see 
that 
the remaining time as far as possible is used in 
winding up the old complicated cases or those with 
involved records and getting as many of his or her 
amended cases as possible ready for final disposition.

If the examiner has considerable experience in his 
or her particular art, it is also advantageous to the 
Office if he or she indicates (in pencil) in the file 
wrappers of application in his or her docket, the 
field 
of search or other pertinent data that he or she 
considers appropriate. For Image File Wrapper 
(IFW) processing, see IFW Manual.