MPEP 708: Difference between revisions
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{{MPEP Section|707|700|709}} | <noinclude>{{MPEP Section|707|700|709}}</noinclude> | ||
==708 Order of Examination== | |||
__TOC__ | ==[[MPEP 708|708 Order of Examination]]== | ||
<noinclude><div class="noautonum">__TOC__</div></noinclude> | |||
Nonprovisional applications filed in the U.S. Patent | Nonprovisional applications filed in the U.S. Patent | ||
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been assigned in the order in which they have been | been assigned in the order in which they have been | ||
filed except for those applications in which examination | filed except for those applications in which examination | ||
has been advanced pursuant to 37 CFR 1.102. | has been advanced pursuant to a petition to make special under 37 CFR 1.102. | ||
See 37 CFR 1.496 and MPEP § | |||
See 37 CFR 1.496 and MPEP § 1893.03 for the order | |||
1893.03 for the order | |||
of examination of international applications in the | of examination of international applications in the | ||
national stage | national stage. | ||
Applications which have been acted upon by the | Applications which have been acted upon by the | ||
Line 31: | Line 29: | ||
Each examiner will give priority to that application | Each examiner will give priority to that application | ||
in his or her docket, whether amended or new, which | in his or her docket, whether amended or new, which | ||
has the oldest effective U.S. filing date | has the oldest effective U.S. filing date. | ||
The actual filing date of a continuation-in-part | The actual filing date of a continuation-in-part | ||
Line 47: | Line 35: | ||
the examiner may act on a continuation-in-part application | the examiner may act on a continuation-in-part application | ||
by using the effective filing date, if desired. | by using the effective filing date, if desired. | ||
The order of examination for each examiner is to | The order of examination for each examiner is to | ||
Line 59: | Line 40: | ||
proceedings, with top priority to reissue applications | proceedings, with top priority to reissue applications | ||
in which litigation has been stayed (MPEP | in which litigation has been stayed (MPEP | ||
§ | § 1442.03), to ex parte reexamination proceedings | ||
involved in litigation (MPEP § 2261), and to | |||
1442.03), to ex parte reexamination proceedings | |||
involved in litigation (MPEP § | |||
2261), and to | |||
inter partes reexamination proceedings involved in | inter partes reexamination proceedings involved in | ||
litigation (MPEP § 2661), then to those special cases | litigation (MPEP § 2661), then to those special cases | ||
Line 78: | Line 55: | ||
responded to within two months of receipt. | responded to within two months of receipt. | ||
708. | ===708.01 List of Special Cases=== | ||
The following is a list of special cases (those which | The following is a list of special cases (those which | ||
are advanced out of turn for examination): | are advanced out of turn for examination): | ||
(A)Applications wherein the inventions are | (A) Applications wherein the inventions are | ||
deemed of peculiar importance to some branch of the | deemed of '''peculiar importance to some branch of the | ||
public service and when for that reason the head of | public service''' and when for that reason the head of | ||
some department of the Government requests immediate | some department of the Government requests immediate | ||
action and the Director of the USPTO so | action and the Director of the USPTO so | ||
Line 145: | Line 68: | ||
(B)Applications made special as a result of a | (B)Applications made special as a result of a | ||
petition. (See MPEP § 708.02.) | '''petition'''. (See MPEP § 708.02.) | ||
Subject alone to diligent prosecution by the applicant, | Subject alone to diligent prosecution by the applicant, | ||
Line 153: | Line 76: | ||
(by the Director of the USPTO or a Commissioner) | (by the Director of the USPTO or a Commissioner) | ||
will continue to be special throughout its | will continue to be special throughout its | ||
entire course of prosecution in the | entire course of prosecution in the USPTO, including appeal, if any, to the | ||
Board of Patent Appeals and Interferences. | Board of Patent Appeals and Interferences. | ||
(C)Applications for reissues, particularly those | (C) Applications for '''reissues''', particularly those | ||
involved in stayed litigation (37 CFR 1.176). | involved in stayed litigation (37 CFR 1.176). | ||
(D)Applications remanded by an appellate tribunal | (D) Applications remanded by an '''appellate tribunal''' | ||
for further action. | for further action. | ||
(E)An application, once taken up for action by | (E) An application, once taken up for action by | ||
an | an examiner according to its effective filing date, | ||
examiner according to its effective filing date, | |||
should be treated as special by an examiner, art unit or | should be treated as special by an examiner, art unit or | ||
Technology Center to which it may subsequently be | Technology Center to which it may subsequently be | ||
transferred; exemplary situations include new cases | transferred; exemplary situations include new cases | ||
Line 179: | Line 94: | ||
official action. | official action. | ||
(F)Applications which appear to interfere with | (F) Applications which '''appear to interfere''' with | ||
other applications previously considered and found to | other applications previously considered and found to | ||
be allowable, or which will be placed in interference | be allowable, or which will be placed in interference | ||
with an unexpired patent or patents. | with an unexpired patent or patents. | ||
(G)Applications ready for allowance, or ready | (G) Applications '''ready for allowance''', or ready | ||
for allowance except as to formal matters. | for allowance except as to formal matters. | ||
(H)Applications which are in condition for final | (H) Applications which are in condition for '''final | ||
rejection. | rejection'''. | ||
(I)Applications pending more than 5 years, | (I) Applications '''pending more than 5 years''', | ||
including those which, by relation to a prior United | including those which, by relation to a prior United | ||
States application, have an effective pendency of | States application, have an effective pendency of | ||
more than 5 years. See MPEP § 707.02. | more than 5 years. See MPEP § 707.02. | ||
(J)Reexamination proceedings, MPEP § 2261 | (J) '''Reexamination proceedings''', MPEP § 2261 | ||
and § 2661. | and § 2661. | ||
See also MPEP § 714.13, § 1207 and § 1309. | See also MPEP § 714.13, § 1207 and § 1309. | ||
708. | ===708.02 Petition To Make Special=== | ||
(a)Applications will not be advanced out of turn for examination | {{Statute|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 | or for further action except as provided by this part, or | ||
upon order of the Director to expedite the business of the Office, | upon order of the Director to expedite the business of the Office, | ||
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so advancing it. | so advancing it. | ||
(b)Applications wherein the inventions are deemed of peculiar | (b) Applications wherein the inventions are deemed of peculiar | ||
importance to some branch of the public service and the head | importance to some branch of the public service and the head | ||
of some department of the Government requests immediate action | of some department of the Government requests immediate action | ||
for that reason, may be advanced for examination. | for that reason, may be advanced for examination. | ||
(c)A petition to make an application special may be filed | (c) A petition to make an application special may be filed | ||
without a fee if the basis for the petition is: | without a fee if the basis for the petition is: | ||
(1)The applicant’s age or health; or | <p style="padding-left: +20px;">(1) The applicant’s age or health; or</p> | ||
(2)That the invention will materially: | <p style="padding-left: +20px;">(2) That the invention will materially:</p> | ||
(i)Enhance the quality of the environment; | <p style="padding-left: +40px;">(i) Enhance the quality of the environment;</p> | ||
(ii)Contribute to the development or conservation of | <p style="padding-left: +40px;">(ii) Contribute to the development or conservation of | ||
energy resources; or | energy resources; or</p> | ||
(iii)Contribute to countering terrorism. | <p style="padding-left: +40px;">(iii) Contribute to countering terrorism.</p> | ||
(d)A petition to make an application special on grounds | (d) A petition to make an application special on grounds | ||
other than those referred to in paragraph (c) of this section must be | other than those referred to in paragraph (c) of this section must be | ||
accompanied by the fee set forth in § 1.17(h). | accompanied by the fee set forth in § 1.17(h). | ||
|} | |||
New applications ordinarily are taken up for examination | New applications ordinarily are taken up for examination | ||
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MPEP § 708.02(a). | MPEP § 708.02(a). | ||
I.MANUFACTURE | '''I. MANUFACTURE''' | ||
An application may be made special on the ground | An application may be made special on the ground | ||
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in the United States or its possessions, in quantity | in the United States or its possessions, in quantity | ||
immediately upon the allowance of claims or | immediately upon the allowance of claims or | ||
issuance of a patent which will protect the investment | issuance of a patent which will protect the investment | ||
of capital and facilities; and | of capital and facilities; and | ||
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are not already of record. | are not already of record. | ||
II.INFRINGEMENT | '''II. INFRINGEMENT''' | ||
Subject to a requirement for a further showing as | Subject to a requirement for a further showing as | ||
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requested. | requested. | ||
III. | '''III. APPLICANT'S HEALTH''' | ||
An application may be made special upon a petition | An application may be made special upon a petition | ||
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724.02. | 724.02. | ||
IV. | '''IV. APPLICANT'S AGE''' | ||
An application may be made special upon filing a | An application may be made special upon filing a | ||
Line 387: | Line 296: | ||
724.02. | 724.02. | ||
V.ENVIRONMENTAL QUALITY | '''V. ENVIRONMENTAL QUALITY''' | ||
The U.S. Patent and Trademark Office will accord | The U.S. Patent and Trademark Office will accord | ||
"special" status to all patent applications for inventions | |||
which materially enhance the quality of the | which materially enhance the quality of the | ||
environment of mankind by contributing to the restoration | environment of mankind by contributing to the restoration | ||
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must be accompanied by a statement under 37 CFR | must be accompanied by a statement under 37 CFR | ||
1.102 by the applicant, assignee, or an attorney/agent | 1.102 by the applicant, assignee, or an attorney/agent | ||
registered to practice before the Office explaining | registered to practice before the Office explaining | ||
how the materiality standard is met. The materiality | how the materiality standard is met. The materiality | ||
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of the environment. | of the environment. | ||
VI.ENERGY | '''VI. ENERGY''' | ||
The U.S. Patent and Trademark Office will, on petition, | The U.S. Patent and Trademark Office will, on petition, | ||
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(B). | (B). | ||
VII.INVENTIONS RELATING TO RECOMBINANT | '''VII. INVENTIONS RELATING TO RECOMBINANT DNA''' | ||
DNA | |||
In recent years revolutionary genetic research has | In recent years revolutionary genetic research has | ||
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27943. NIH is sponsoring experimental work to identify | 27943. NIH is sponsoring experimental work to identify | ||
possible hazards and safety practices and procedures. | possible hazards and safety practices and procedures. | ||
In view of the exceptional importance of recombinant | In view of the exceptional importance of recombinant | ||
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paid. | paid. | ||
VIII.SPECIAL EXAMINING PROCEDURE FOR | '''VIII. SPECIAL EXAMINING PROCEDURE FOR CERTAIN NEW APPLICATIONS — ACCELERATED EXAMINATION''' | ||
CERTAIN NEW APPLICATIONS — ACCELERATED | |||
EXAMINATION | |||
A new application (one which has not received any | A new application (one which has not received any | ||
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required by 37 CFR 1.111 (b) and (c), how the | required by 37 CFR 1.111 (b) and (c), how the | ||
claimed subject matter is patentable over the references. | claimed subject matter is patentable over the references. | ||
In those instances where the request for this special | In those instances where the request for this special | ||
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priority for printing. See MPEP § 1309. | priority for printing. See MPEP § 1309. | ||
IX.SPECIAL STATUS FOR PATENT APPLICATIONS | '''IX. SPECIAL STATUS FOR PATENT APPLICATIONS RELATING TO SUPERCONDUCTIVITY''' | ||
RELATING TO SUPERCONDUCTIVITY | |||
In accordance with the President’s mandate directing | In accordance with the President’s mandate directing | ||
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materials. No fee is required. | materials. No fee is required. | ||
X.INVENTIONS RELATING TO HIV/AIDS | '''X. INVENTIONS RELATING TO HIV/AIDS AND CANCER''' | ||
AND CANCER | |||
In view of the importance of developing treatments | In view of the importance of developing treatments | ||
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or prevention of HIV/AIDS or cancer. | or prevention of HIV/AIDS or cancer. | ||
XI.INVENTIONS FOR COUNTERING TERRORISM | '''XI. INVENTIONS FOR COUNTERING TERRORISM''' | ||
In view of the importance of developing technologies | In view of the importance of developing technologies | ||
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CFR 1.102(c). If the application disclosure is not clear | CFR 1.102(c). If the application disclosure is not clear | ||
on its face that the claimed invention is materially | on its face that the claimed invention is materially | ||
directed to countering terrorism, the petition must be | directed to countering terrorism, the petition must be | ||
accompanied by a statement under 37 CFR 1.102 by | accompanied by a statement under 37 CFR 1.102 by | ||
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claimed invention may be directed to countering terrorism. | claimed invention may be directed to countering terrorism. | ||
'''XII.SPECIAL STATUS FOR APPLICATIONS RELATING TO BIOTECHNOLOGY FILED BY APPLICANTS WHO ARE SMALL ENTITIES''' | |||
XII.SPECIAL STATUS FOR APPLICATIONS | |||
RELATING TO BIOTECHNOLOGY | |||
FILED BY APPLICANTS WHO ARE | |||
SMALL ENTITIES | |||
Applicants who are small entities may request that | Applicants who are small entities may request that | ||
their biotechnology applications be granted “special” | their biotechnology applications be granted “special” | ||
status. Applicant must file a petition with the petition | status. Applicant must file a petition with the petition | ||
fee under 37 | fee under 37 CFR 1.17(h) requesting the special status | ||
CFR 1.17(h) requesting the special status | |||
and must: | and must: | ||
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of the basis for making the statement. | of the basis for making the statement. | ||
FORMAL REQUIREMENTS OF PETITION TO | '''FORMAL REQUIREMENTS OF PETITION TO MAKE SPECIAL''' | ||
MAKE SPECIAL | |||
Any petition to make special should: | Any petition to make special should: | ||
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and filing date. | and filing date. | ||
HANDLING OF PETITIONS TO MAKE SPECIAL | '''HANDLING OF PETITIONS TO MAKE SPECIAL''' | ||
Petitions to make special are decided by the Special | Petitions to make special are decided by the Special | ||
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is assigned. | is assigned. | ||
====708.02(a) Accelerated Examination==== | |||
708.02(a)Accelerated Examination | |||
All petitions to make special, except those based on | All petitions to make special, except those based on | ||
Line 837: | Line 692: | ||
set forth below. | set forth below. | ||
I.REQUIREMENTS FOR PETITIONS TO | '''I. REQUIREMENTS FOR PETITIONS TO MAKE SPECIAL UNDER ACCELERATED EXAMINATION''' | ||
MAKE SPECIAL UNDER ACCELERATED | |||
EXAMINATION | |||
A new application may be granted accelerated | A new application may be granted accelerated | ||
examination status under the following conditions: | examination status under the following conditions: | ||
(A)The application must be filed with a petition | <p style="padding-left: +20px;">(A) The application must be filed with a petition | ||
to make special under the accelerated examination | to make special under the accelerated examination | ||
program accompanied by either the fee set forth in | program accompanied by either the fee set forth in | ||
37 CFR 1.17(h) or a statement that the claimed subject | |||
37 | |||
CFR 1.17(h) or a statement that the claimed subject | |||
matter is directed to environmental quality, the | matter is directed to environmental quality, the | ||
development or conservation of energy resources, | development or conservation of energy resources, | ||
or countering terrorism. See 37 | or countering terrorism. See 37 CFR 1.102(c)(2). | ||
CFR 1.102(c)(2). | |||
Applicant should use form PTO/SB/28 for filing the | Applicant should use form PTO/SB/28 for filing the | ||
petition. | petition.</p> | ||
(B)The application must be a non-reissue utility | <p style="padding-left: +20px;">(B) The application must be a non-reissue utility | ||
or design application filed under 35 | or design application filed under 35 | ||
U.S.C. 111(a). | U.S.C. 111(a).</p> | ||
(C)The application, petition, and required fees | <p style="padding-left: +20px;">(C) The application, petition, and required fees | ||
must be filed electronically using the USPTO’s electronic | must be filed electronically using the USPTO’s electronic | ||
filing system (EFS), or EFS-Web. If the | filing system (EFS), or EFS-Web. If the | ||
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but the final disposition of the application may occur | but the final disposition of the application may occur | ||
later than twelve months from the filing of the application. | later than twelve months from the filing of the application. | ||
See subsection VIII.F. below for more information. | See subsection VIII.F. below for more information.</p> | ||
<p style="padding-left: +20px;">(D) At the time of filing, the application must be | |||
(D)At the time of filing, the application must be | |||
complete under 37 | complete under 37 | ||
CFR 1.51 and in condition for | CFR 1.51 and in condition for | ||
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examination fee, and application size fee (if applicable), | examination fee, and application size fee (if applicable), | ||
and an executed oath or declaration under | and an executed oath or declaration under | ||
37 | 37 CFR 1.63. See subsection VIII.C. below for more | ||
CFR 1.63. See subsection VIII.C. below for more | information.</p> | ||
information. | |||
(E)The application must contain three or fewer | <p style="padding-left: +20px;">(E) The application must contain three or fewer | ||
independent claims and twenty or fewer total claims. | independent claims and twenty or fewer total claims. | ||
The application must also not contain any multiple | The application must also not contain any multiple | ||
Line 902: | Line 745: | ||
and not argued separately from the independent claim | and not argued separately from the independent claim | ||
from which they depend in any appeal brief filed in | from which they depend in any appeal brief filed in | ||
the application (37 | the application (37 CFR 41.37(c)(1)(vii)). The petition | ||
CFR 41.37(c)(1)(vii)). The petition | |||
must include a statement that applicant will agree | must include a statement that applicant will agree | ||
not to separately argue the patentability of any dependent | not to separately argue the patentability of any dependent | ||
claim during any appeal in the application. See | claim during any appeal in the application. See | ||
form PTO/SB/28. | form PTO/SB/28.</p> | ||
(F)The claims must be directed to a single invention. | <p style="padding-left: +20px;">(F) The claims must be directed to a single invention. | ||
If the USPTO determines that all the claims presented | If the USPTO determines that all the claims presented | ||
are not directed to a single invention, applicant | are not directed to a single invention, applicant | ||
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that applicant will agree to make an election | that applicant will agree to make an election | ||
without traverse in a telephonic interview. See form | without traverse in a telephonic interview. See form | ||
PTO/SB/28. | PTO/SB/28.</p> | ||
(G)The applicant must be willing to have an | <p style="padding-left: +20px;">(G) The applicant must be willing to have an | ||
interview (including an interview before a first Office | interview (including an interview before a first Office | ||
action) to discuss the prior art and any potential rejections | action) to discuss the prior art and any potential rejections | ||
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that applicant will agree to have such an | that applicant will agree to have such an | ||
interview when requested by the examiner. See form | interview when requested by the examiner. See form | ||
PTO/SB/28. | PTO/SB/28.</p> | ||
(H)At the time of filing, applicant must provide a | <p style="padding-left: +20px;">(H) At the time of filing, applicant must provide a | ||
statement that a preexamination search was conducted, | statement that a preexamination search was conducted, | ||
including an identification of the field of | including an identification of the field of | ||
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sequence used as a query, the name of the file or files | sequence used as a query, the name of the file or files | ||
searched and the database service, and the date of the | searched and the database service, and the date of the | ||
search. | search. </p> | ||
(1)This preexamination search must involve | <p style="padding-left: +40px;">(1) This preexamination search must involve | ||
U.S. patents and patent application publications, foreign | U.S. patents and patent application publications, foreign | ||
patent documents, and non-patent literature, | patent documents, and non-patent literature, | ||
Line 945: | Line 787: | ||
already identified are likely to be found in the eliminated | already identified are likely to be found in the eliminated | ||
source and includes such a justification with | source and includes such a justification with | ||
this statement. | this statement.</p> | ||
(2)This preexamination search must be | <p style="padding-left: +40px;">(2) This preexamination search must be | ||
directed to the claimed invention and encompass all | directed to the claimed invention and encompass all | ||
of the features of the claims, giving the claims the | of the features of the claims, giving the claims the | ||
broadest reasonable interpretation. | broadest reasonable interpretation.</p> | ||
(3)The preexamination search must also | <p style="padding-left: +40px;">(3) The preexamination search must also | ||
encompass the disclosed features that may be | encompass the disclosed features that may be | ||
claimed. An amendment to the claims (including any | claimed. An amendment to the claims (including any | ||
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support document (see item I) will be treated as not | support document (see item I) will be treated as not | ||
fully responsive and will not be entered. See subsection | fully responsive and will not be entered. See subsection | ||
IV below for more information. | IV below for more information.</p> | ||
(4)A search report from a foreign patent office | <p style="padding-left: +40px;">(4) A search report from a foreign patent office | ||
will not satisfy this preexamination search requirement | will not satisfy this preexamination search requirement | ||
unless the search report satisfies the requirements | unless the search report satisfies the requirements | ||
for a preexamination search. | for a preexamination search.</p> | ||
<p style="padding-left: +40px;">(5) Any statement in support of a petition to | |||
(5)Any statement in support of a petition to | |||
make special must be based on a good faith belief that | make special must be based on a good faith belief that | ||
the preexamination search was conducted in compliance | the preexamination search was conducted in compliance | ||
with these requirements. See 37 | with these requirements. See 37 CFR 1.56 and 10.18.</p> | ||
CFR 1.56 and | |||
10.18. | |||
(I)At the time of filing, applicant must provide | <p style="padding-left: +20px;">(I) At the time of filing, applicant must provide | ||
in support of the petition an accelerated examination | in support of the petition an accelerated examination | ||
support document. | support document.</p> | ||
(1)An accelerated examination support document | <p style="padding-left: +40px;">(1) An accelerated examination support document | ||
must include an information disclosure statement | must include an information disclosure statement | ||
(IDS) in compliance with 37 | (IDS) in compliance with 37 CFR 1.98 citing | ||
CFR 1.98 citing | |||
each reference deemed most closely related to the | each reference deemed most closely related to the | ||
subject matter of each of the claims. | subject matter of each of the claims.</p> | ||
(2)For each reference cited, the accelerated | <p style="padding-left: +40px;">(2) For each reference cited, the accelerated | ||
examination support document must include an identification | examination support document must include an identification | ||
of all the limitations in the claims that are | of all the limitations in the claims that are | ||
disclosed by the reference specifying where the limitation | disclosed by the reference specifying where the limitation | ||
is disclosed in the cited reference. | is disclosed in the cited reference.</p> | ||
(3)The accelerated examination support document | <p style="padding-left: +40px;">(3) The accelerated examination support document | ||
must include a detailed explanation of how each | must include a detailed explanation of how each | ||
of the claims are patentable over the references cited | of the claims are patentable over the references cited | ||
with the particularity required by 37 | with the particularity required by 37 CFR 1.111(b) and (c). </p> | ||
CFR 1.111(b) | |||
and (c). | |||
(4)The accelerated examination support document | <p style="padding-left: +40px;">(4) The accelerated examination support document | ||
must include a concise statement of the utility of | must include a concise statement of the utility of | ||
the invention as defined in each of the independent | the invention as defined in each of the independent | ||
claims (unless the application is a design application). | claims (unless the application is a design application). </p> | ||
(5)The accelerated examination support document | <p style="padding-left: +40px;">(5) The accelerated examination support document | ||
must include a showing of where each limitation | must include a showing of where each limitation | ||
of the claims finds support under the first paragraph | of the claims finds support under the first paragraph | ||
of 35 | of 35 U.S.C. 112 in the written description of the | ||
U.S.C. 112 in the written description of the | |||
specification. If applicable, the showing must also | specification. If applicable, the showing must also | ||
identify: | identify: </p> | ||
(i)each means- (or step-) plus-function | <p style="padding-left: +60px;">(i) each means- (or step-) plus-function | ||
claim element that invokes consideration under | claim element that invokes consideration under | ||
35 | 35 U.S.C. 112, paragraph 6; and </p> | ||
U.S.C. 112, paragraph | |||
6; and | |||
(ii)the structure, material, or acts in the | <p style="padding-left: +60px;">(ii) the structure, material, or acts in the | ||
specification that correspond to each means- (or step-) | specification that correspond to each means- (or step-) | ||
plus-function claim element that invokes consideration | plus-function claim element that invokes consideration | ||
under 35 | under 35 U.S.C. 112, paragraph 6. If the application | ||
U.S.C. 112, paragraph | |||
6. If the application | |||
claims the benefit of one or more applications | claims the benefit of one or more applications | ||
under title 35, United States Code, the showing must | under title 35, United States Code, the showing must | ||
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support under the first paragraph of 35 | support under the first paragraph of 35 | ||
U.S.C. 112 in | U.S.C. 112 in | ||
each such application in which such support exists. | each such application in which such support exists.</p> | ||
(6)The accelerated examination support document | <p style="padding-left: +40px;">(6) The accelerated examination support document | ||
must identify any cited references that may be | must identify any cited references that may be | ||
disqualified as prior art under 35 | disqualified as prior art under 35 | ||
U.S.C. 103(c). | U.S.C. 103(c).</p> | ||
II.DECISION ON PETITION TO MAKE | '''II. DECISION ON PETITION TO MAKE SPECIAL''' | ||
SPECIAL | |||
Applicant will be notified of the decision by the | Applicant will be notified of the decision by the | ||
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accelerated examination support document within a | accelerated examination support document within a | ||
time period of one month (no extensions under | time period of one month (no extensions under | ||
37 | 37 CFR 1.136(a)). This opportunity to perfect a petition | ||
CFR 1.136(a)). This opportunity to perfect a petition | |||
does not apply to applications that are not in condition | does not apply to applications that are not in condition | ||
for examination on filing. See subsection | for examination on filing. See subsection | ||
Line 1,068: | Line 893: | ||
procedure set forth below. | procedure set forth below. | ||
III.THE INITIAL ACTION ON THE APPLICATION | '''III. THE INITIAL ACTION ON THE APPLICATION BY THE EXAMINER''' | ||
BY THE EXAMINER | |||
Once the application is granted special status, the | Once the application is granted special status, the | ||
Line 1,090: | Line 914: | ||
continuing application must on its own meet all | continuing application must on its own meet all | ||
requirements for special status. | requirements for special status. | ||
If the USPTO determines that a possible rejection | If the USPTO determines that a possible rejection | ||
Line 1,102: | Line 921: | ||
issue. The USPTO will not issue an Office action | issue. The USPTO will not issue an Office action | ||
(other than a notice of allowance) unless either: | (other than a notice of allowance) unless either: | ||
(A) | (A) an interview was conducted but did not result in | ||
an interview was conducted but did not result in | |||
the application being placed in condition for allowance; | the application being placed in condition for allowance; | ||
or (B) | or (B) there is a determination that an interview | ||
there is a determination that an interview | |||
is unlikely to result in the application being placed in | is unlikely to result in the application being placed in | ||
condition for allowance. Furthermore, prior to the | condition for allowance. Furthermore, prior to the | ||
Line 1,126: | Line 941: | ||
after-final procedures. | after-final procedures. | ||
IV.REPLY BY APPLICANT | '''IV. REPLY BY APPLICANT''' | ||
A reply to an Office action must be limited to the | A reply to an Office action must be limited to the | ||
Line 1,136: | Line 951: | ||
preexamination search (see subsection I, item (H) | preexamination search (see subsection I, item (H) | ||
above) or an updated accelerated examination support | above) or an updated accelerated examination support | ||
document (see next paragraph); or (C) | document (see next paragraph); or (C) present claims | ||
present claims | |||
that are directed to a nonelected invention or an | that are directed to a nonelected invention or an | ||
invention other than previously claimed in the application, | invention other than previously claimed in the application, | ||
Line 1,159: | Line 972: | ||
accelerated examination support document must also | accelerated examination support document must also | ||
comply with the requirements of 37 | comply with the requirements of 37 | ||
CFR 1.97 and | CFR 1.97 and 1.98. | ||
1.98. | |||
Any reply or other papers must be filed electronically | Any reply or other papers must be filed electronically | ||
Line 1,170: | Line 982: | ||
of the application. | of the application. | ||
V.POST-ALLOWANCE PROCESSING | '''V. POST-ALLOWANCE PROCESSING''' | ||
The mailing of a notice of allowance is the final | The mailing of a notice of allowance is the final | ||
Line 1,180: | Line 992: | ||
to avoid abandonment of the application. In order for | to avoid abandonment of the application. In order for | ||
the application to be expeditiously issued as a patent, | the application to be expeditiously issued as a patent, | ||
the applicant must also: (A) | the applicant must also: (A) pay the issue fee (and any | ||
pay the issue fee (and any | |||
outstanding fees due) within one month from the | outstanding fees due) within one month from the | ||
mailing date of the form PTOL-85; and (B) | mailing date of the form PTOL-85; and (B) not file | ||
not file | |||
any post-allowance papers that are not required by the | any post-allowance papers that are not required by the | ||
USPTO (e.g., an amendment under 37 | USPTO (e.g., an amendment under 37 CFR 1.312 that | ||
CFR 1.312 that | |||
was not requested by the USPTO). | was not requested by the USPTO). | ||
VI.AFTER-FINAL AND APPEAL PROCEDURES | '''VI. AFTER-FINAL AND APPEAL PROCEDURES''' | ||
The mailing of a final Office action or the filing of | The mailing of a final Office action or the filing of | ||
Line 1,206: | Line 1,012: | ||
for the application to be expeditiously forwarded to | for the application to be expeditiously forwarded to | ||
the Board of Patent Appeals and Interferences (BPAI) | the Board of Patent Appeals and Interferences (BPAI) | ||
for a decision, applicant must: (A) | for a decision, applicant must: (A) promptly file the | ||
promptly file the | |||
notice of appeal, appeal brief, and appeal fees; and | notice of appeal, appeal brief, and appeal fees; and | ||
(B) not request a pre-appeal brief conference. A pre- | (B) not request a pre-appeal brief conference. A pre- | ||
appeal brief conference would not be of value in an | appeal brief conference would not be of value in an | ||
application under a final Office action because the | application under a final Office action because the | ||
examiner will have already conducted such a conference | examiner will have already conducted such a conference | ||
prior to mailing the final Office action. During | prior to mailing the final Office action. During | ||
Line 1,246: | Line 1,049: | ||
the filing of the RCE. | the filing of the RCE. | ||
VII.PROCEEDINGS OUTSIDE THE NORMAL | '''VII. PROCEEDINGS OUTSIDE THE NORMAL EXAMINATION PROCESS''' | ||
EXAMINATION PROCESS | |||
If an application becomes involved in proceedings | If an application becomes involved in proceedings | ||
Line 1,267: | Line 1,069: | ||
from the filing of the application. | from the filing of the application. | ||
VIII.MORE INFORMATION | '''VIII. MORE INFORMATION''' | ||
A.Eligibility | A.Eligibility | ||
Line 1,473: | Line 1,275: | ||
appealable matters. | appealable matters. | ||
<noinclude>{{MPEP Section|707|700|709}}</noinclude> | |||
Latest revision as of 22:48, May 31, 2020
← MPEP 707 | ↑ MPEP 700 | MPEP 709 → |
708 Order of Examination[edit | edit source]
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 a petition to make special under 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.
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.
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.
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.
708.01 List of Special Cases[edit | edit source]
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 USPTO, 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.
708.02 Petition To Make Special[edit | edit source]
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
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[edit | edit source]
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.
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