Prosecution Luncheon

Patent

August 2016

Calendar

• Indy Bar– At the Bar with the Bench- Tonight

5-7 PM Tomlinson Tap Room (City Market)

– Patents and Trademarks in Europe post BREXIT: What Now and What's Next for the European Unitary Patent and Unified Patent Court (UPC) after BREXIT? Sept 29, 2016, Noon- 1 PM

• ISBA– THE PATENTS OMBUDSMAN PROGRAM

August 23, 2016, 10:30-11:30 AM

Automated Interview Request (AIR)

Request Interview Online

Authorize Internet

Communication

USPTO Internet• Authorization for

Internet Communication (PTO/SB/439)– Allows

Transmission proposed claim amendments for interview via email.

– Consider filing with application when originally filed.

Changes to Accelerated ExaminationChanges Generally Made to Harmonize with AIA• Pre-Exam Search

– Need to list CPC instead of USPC• Accelerated Examination Support Document

(AESD)– Need to now identify prior art disqualified AIA

102(b)(2)(C) (common ownership)• Reply by Applicant

– Shortened time to reply extended from 30 days to 2 months

• Complete Application Upon Filing– Now precludes any petition under 37 CFR

1.46(b)(2) to designate a person with sufficient proprietary interest as the applicant.

Accelerated Examination• Goal: 12 months to disposition• Available for

– Utility applications– Design applications (MPEP 708.02(a)(VIII)(A)

• Not available for – Plant applications – Reissue applications – §371 national stage applications – Reexamination proceedings– RCEs (unless previously granted special status); and – Petitions to make special based on applicant’s health or

age or under the PPH pilot program

Accelerated Examination• Filing Application for Accelerated Examination

– Application must be "complete" and "in condition for examination" e.g., all required fees, oath/declaration of actual inventor, spec,

claims, drawing, title, abstract, priority claims– File electronically– Include suggested classification (CPC)– No preliminary amendments

• File Petition

• Pay Fee (if invention not exempted)

Accelerated Examination• Claims

– 3 or Less Independent – 20 or Less Total

• Claims Directed to Single Invention

• Cannot Argue Patentability of Dependent Claims Separate from Independent Claims During Appeal!

• Interviews– Agree to interview even

before 1st Office Action– Restriction- oral election

Accelerated ExaminationSearch Statement and Examination Support Document (ESD)• Need to conduct a search before

filing and describe search methods

• File IDS of references found

• Each Reference- identify all limitations from claims disclosed in the reference

• Detailed Explanation on Patentability

• Support Showing for Each Limitation

• Utility- Concise Explanation

• Identify Disqualified Prior Art Under Pre-AIA 35 USC 103(c) or AIA 35 USC102(b)(2)(C)

Accelerated ExaminationFee• $130• No Fee for Inventions

Directed to:– Environment– Energy– Anti-terrorism– Superconductivity

• Petition Dismissed– Omitted Items

Accelerated Examination- Prosecution• General

– Goal:12 months to allowance, final OA, RCE, or abandonment– Failure to meet goal is not petitionable nor appealable

– Examiner begins examination within two weeks

• Restriction Requirements– Examiner will telephone applicant with restriction requirement– Applicant must elect w/o traverse by telephone– Special status for continuing apps must be petitioned

individually

Accelerated Examination- Prosecution• Interviews

– Examiner telephones applicant to discuss any rejections– If interview does not result in allowance, OA is mailed

• Substantive Office Actions– Two months to reply to non-final OA, or abandonment

– No extensions of time permitted– USPTO has conference prior to mailing any OA (same as for pre-appeal

brief review)

• Appeal– Appeal not accelerated but post-appeal prosecution is accelerated– RCE will delay disposition, but the prosecution remains accelerated

Options for Responding to Final Office ActionsStandard• Abandon• Continuation or Divisional Application• Full Appeal• Request for Continued Examination (RCE)

Relatively New• Request for Pre-Appeal Brief Review• After Final Consideration Pilot Program 2.0• Post Prosecution Pilot (P3)

Pre-Appeal ReviewPaperwork• Notice of Appeal +

Fee ($800)

• Pre-Appeal Brief Request Review Form

• Remarks- 5 pages

Pre-Appeal ReviewGrounds• Clear errors in the

examiner's rejections; or

• Examiner's omissions of one or more essential elements needed for a prima facie rejection.

Pre-Appeal Brief ReviewPre-Appeal Conference Panel (at least include)• Supervisor (SPE)• Examiner of Record

• Assembled by administrative assistant in Technology Center

• No interview before panel’s decision

Pre-Appeal Brief ReviewOutcome (Findings)1. The application remains under appeal

because there is at least one actual issue for appeal.

2. Prosecution on the merits is reopened and an appropriate Office communication will follow in due course.

3. The application is allowed on the existing claims and prosecution remains closed.

4. The request fails to comply with the submission requirements and is dismissed.

After Final Consideration Program Pilot 2.0• Avoids the Expense of RCE’s

– See, http://www.uspto.gov/patent/initiatives/after-final-consideration-pilot-20

• Timing – Responses to Final Office Actions Filed From

May 19, 2013 to September 30, 2016

• Requirements (NO FEE)– Request for Consideration Under Pilot

(PTO/SB/434)– Amendment to at least one independent claim

that does not broaden it– Willing to participate in an interview

After Final Consideration Program Pilot 2.0

After Final Consideration Program Pilot 2.0• What does the Examiner Get?

– Up to 3 Hours non-production time– 10 day adjustment of docket management clock

• Outcome– Examiner can deny request (file RCE)– Allow the application– Request interview

• Need to conduct interview within 10 days– Otherwise back to filing RCE

New Post-Prosecution Pilot (P3)• Combines features

– Pre-Appeal Brief Review Conference Pilot (Pre-Appeal)

– After Final Consideration Pilot Program (AFCP)

• Post-Prosecution Pilot (P3)– Submit Proposed After Final Amendment for

Consideration by a Panel of Examiners– Opportunity to Present to Panel (in person/phone)– Panel Provide Brief Written Summary

Claim status Reasoning for maintaining rejection

See, http://www.uspto.gov/patent/initiatives/post-prosecution-pilot

New Post-Prosecution Pilot (P3)

• Requirements– Utility/371 patent application (not Reissue,

design and plant applications)– Final Office Action

• Runs until (earlier of)– January 12, 2017 or– 1,600 Requests.– Each technology center will shutdown P3

after 200 requests.

New Post-Prosecution Pilot (P3)• P3 Forms Needed

– A Request Form filed via EFS-Web (PTO/SB/444)

– A response with five (5) pages of arguments max

– Optional- a proposed non-broadening amendment to one or more claim(s).

• NO FEE REQUIRED.

• Timing- Before 2 Months

Requirements• A Request Form

filed via EFS-Web – Within two (2)

months of final OA – Prior to filing a

notice of appeal.

• A statement (in Request Form)- Applicant is willing and available to participate in a P3 conference

New Post-Prosecution Pilot (P3)

• P3 Requirements– For the same final OA,

cannot have filed Pre-Appeal Request AFCP Request

– Once a P3 Request has been accepted, no additional response(s) under 37 CFR 1.116 will be entered, unless requested by the examiner.

– Impermissible to request to participate in the Pre-Appeal program or request consideration under AFCP once a P3 request accepted.

New Post-Prosecution Pilot (P3)

New Post-Prosecution Pilot (P3)

• Non-Compliant/Untimely P3 Request– Request treated in the same manner it would treat

any after final response absent the P3 Request. No conference will be held.

– The next communication issued by the Office will indicate: the reason why the P3 request was found to be

untimely or otherwise non-compliant; the result of the treatment under 37 CFR 1.116 of the

response and any proposed amendment; and the time period for the applicant to take further action.

New Post-Prosecution Pilot (P3)• P3 Process Terminated Before Decision

– Notice of Appeal– Request for Continued Examination (RCE)– Express Abandonment– Request for the Declaration of Interference– Derivation Proceeding Request

• Note:– If the AFCP, Pre-Appeal request or any other

after final amendment is filed after the filing and acceptance of a P3 request, an Advisory Action will be mailed indicating that the AFCP, Pre-Appeal or any other after final amendment is not being considered since applicants have participated in the P3 pilot.

New Post-Prosecution Pilot• Process for Compliant P3 Request

1. Examiner Calls- schedule interview within 10 Days

2. Interview/conference- 20 minute presentation Petitionable arguments not considered No Asking Examiner(s) Questions (but they can)

3. Decision informed in writing.

• Examiner Conference Panel1. Examiner of Record

If examiner is a junior examiner, the signing primary examiner may optionally attend.

2. Supervisor (SPE) 3. Other Primary Examiner.

New Post-Prosecution Pilot (P3)

• Notice of Decision– Final Rejection Upheld

Status of claim amendments Time period to respond

– Allowable Application

– Reopen Prosecution

New Post-Prosecution Pilot (P3)

• Timing- Final Rejection Upheld– Must File RCE or Notice of Appeal (or CON)

AFCP and Pre-Appeal Request not allowed.

– Later of: Mailing Date of Decision Final Office Action

– Extensions of Time Allowed Can’t exceed 6-month statutory bar deadline

Comparison of After Final OptionsFees Who is

Reviewing?Interview? Can You

Amend?

AFCP None Examiner in Charge of Case

Yes, must be willing to participate

Yes, must have at least 1 non-broadening amendment to independent claim

Pre-Appeal Brief Review

$800 (large) Notice of Appeal Fee

Panel (3, typically)-SPE-Examiner-Another Primary

No No

P3 None Panel (3)-SPE-Examiner-Another Primary

Yes, but one way conversation with Panel asking questions

Yes, optional non-broadening amendment(s)

Comparison of After Final OptionsRemarks Length

Timing of Filing Impact on Statutory Deadline

Decision Maker

AFCP As long as you want (regular response)

Before 6-month statutory deadline

Still must do something before 6-month deadline

Examiner in Charge of Case

Pre-Appeal Brief Review

5 Pages, but can refer to prior arguments

Before 6-month statutory deadline

Now subject to appeals deadline

3 Members of Panel

P3 5 Pages, but can refer to prior arguments

Must be filed within 2 months of transmission date of Final Office Action

Still must do something before 6-month deadline

3 Members of Panel, but might have issue if the examiner in charge is a junior examiner

What to Do When You Have a Final Office Action Do Not Want to File an RCE

Examiner Close to Allowing Case?

File AFCP Request to sweeten deal without RCE

Examiner Not Willing to Allow Case?

Not Ready to Appeal (no prior RCE)• File P3 Request

Ready to Appeal (prior RCE)• File Pre-Appeal Brief Review Request

One Strategy to Avoid/Reduce RCE Usage

Prosecution Luncheon

Patent

August 2016