81 FR 54564 - Changes in Accelerated Examination Practice

DEPARTMENT OF COMMERCE
Patent and Trademark Office

Federal Register Volume 81, Issue 158 (August 16, 2016)

In 2006, the United States Patent and Trademark Office (USPTO or Office) introduced the accelerated examination program to permit an application to be advanced out of turn if the applicant files a grantable petition under the program. Since its institution, the patent landscape has witnessed numerous legal changes such as the America Invents Act (AIA), the Patent Law Treaties Implementation Act (PLTIA) implementing the provisions of the Patent Law Treaty (PLT), and the USPTO's adoption of the Cooperative Patent Classification system (CPC) along with changes to USPTO systems. Accordingly, the Office is updating the accelerated examination program to reflect these changes in the law and examination practice.

[Federal Register Volume 81, Number 158 (Tuesday, August 16, 2016)]
[Notices]
[Pages 54564-54567]
From the Federal Register Online  [www.thefederalregister.org]
[FR Doc No: 2016-19527]


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DEPARTMENT OF COMMERCE

 Patent and Trademark Office

[Docket No.: PTO-P-2016-0024]


Changes in Accelerated Examination Practice

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Notice.

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SUMMARY: In 2006, the United States Patent and Trademark Office (USPTO 
or Office) introduced the accelerated examination program to permit an 
application to be advanced out of turn if the applicant files a 
grantable petition under the program. Since its institution, the patent 
landscape has witnessed numerous legal changes such as the America 
Invents Act (AIA), the Patent Law Treaties Implementation Act (PLTIA) 
implementing the provisions of the Patent Law Treaty (PLT), and the 
USPTO's adoption of the Cooperative Patent Classification system (CPC) 
along with changes to USPTO systems. Accordingly, the Office is 
updating the accelerated examination program to reflect these changes 
in the law and examination practice.

DATES: Effective on August 16, 2016.

FOR FURTHER INFORMATION CONTACT: Pinchus M. Laufer, Senior Legal 
Advisor ((571) 272 7726) or Matthew Sked, Legal Advisor ((571) 272-
7627), Office of Patent Legal Administration, Office of

[[Page 54565]]

the Deputy Commissioner for Patent Examination Policy.

SUPPLEMENTARY INFORMATION:

I. Purpose of the Notice

    The USPTO published a notice in June 2006 (2006 AE Notice) to 
implement the accelerated examination program under which an 
application will be advanced out of turn for examination if the 
applicant files a petition to make special with the appropriate 
showing. See Changes in Practice for Petitions in Patent Applications 
To Make Special and for Accelerated Examination, 71 FR 36323 (June 26, 
2006). This showing requires the applicant to meet several conditions, 
including conducting a pre-examination search, providing an accelerated 
examination support document (AESD), and requiring the application be 
complete under 37 CFR 1.51 at the time of filing. In light of recent 
changes in the law such as the America Invents Act (AIA), Patent Law 
Treaties Implementation Act (PLTIA) to implement the provisions of the 
Patent Law Treaty (PLT) and the conversion to the Cooperative Patent 
Classification system (CPC), some of the requirements and practices of 
the program reflected in the 2006 AE Notice are no longer appropriate. 
Therefore, the program is being updated to account for these changes. 
The full updated accelerated examination guidelines may be found on the 
accelerated examination Web page (http://www.uspto.gov/patent/initiatives/accelerated-examination) and in a forthcoming update to the 
Manual of Patent Examining Procedure (MPEP). In particular, the changes 
are explained beginning at Section I.A of this notice. Subsequent to 
the implementation of the AE program in 2006, the Office implemented 
the prioritized examination program (referred to as ``Track I'') 
provided for in the AIA in a final rule published on September 23, 
2011. See Changes to Implement the Prioritized Examination Track (Track 
I) of the Enhanced Examination Timing Control Procedures under the 
Leahy-Smith America Invents Act, 76 FR 59050 (September 23, 2011). 
Since implementation of Track I in 2011, the USPTO has received fewer 
than 200 AE requests annually. In view of the relatively low usage of 
the AE program, the USPTO plans to publish a request for comments in 
the Federal Register to seek public input on whether there is value in 
retaining the AE program in view of the more popular Track I program.

A. Pre-Examination Search

    The 2006 AE Notice requires that the pre-examination search include 
a classification search of the United States Patent Classification 
system (USPC) by class and subclass. 71 FR at 36324. However, the USPTO 
has since harmonized its classification system for utility applications 
with Europe to create a common classification scheme known as the CPC. 
Therefore, a classified search of U.S. patents and published patent 
applications would need to include the relevant group(s)/subgroup(s) of 
the CPC rather than the class(es)/subclass(es) of the USPC. Applicants 
should consult with the USPTO's classification resources to determine 
the relevant group(s)/subgroup(s) of the CPC to consider. The 
classification resources may be found in Chapter 900 of the MPEP 
(http://www.uspto.gov/web/offices/pac/mpep/documents/0900.htm) and the 
Office of Patent Classification Home Page (http://www.uspto.gov/patents-application-process/patent-search/classification-standards-and-development). It is noted that a pre-examination search regarding a 
design application should continue to use the USPC because the CPC only 
applies to utility applications.

B. Accelerated Examination Support Document

    The accelerated examination support document (AESD) was previously 
required to contain an indication of whether any cited references may 
be disqualified as prior art under pre-AIA 35 U.S.C. 103(c) as amended 
by the Cooperative Research and Technology Enhancement (CREATE) Act 
(Pub. L. 108-453, 118 Stat. 3596 (2004)). 71 FR at 36325. In 2011, the 
AIA was enacted, which amended 35 U.S.C. 103 to remove subsection (c). 
Instead, applicants enjoy a common ownership and obligation of 
assignment exception to prior art under AIA 35 U.S.C. 102(b)(2)(C). 
Therefore, an application that is subject to examination under AIA 35 
U.S.C. 102 and 103 would need to, instead, include an indication in the 
AESD whether any of the cited prior art may be disqualified as prior 
art under 35 U.S.C. 102(b)(2)(C). Applications that are subject to 
examination under pre-AIA 35 U.S.C. 102 and 103 would need to continue 
to indicate whether any of the cited references are disqualified as 
prior art under pre-AIA 35 U.S.C. 103(c). Applicants should consult 
MPEP 2159 in ascertaining whether the application is subject to 
examination under pre-AIA or AIA 35 U.S.C. 102 and 103. Applicants are 
reminded, that if the application is filed on or after March 16, 2013, 
and claims the benefit of or priority to an application where the 
filing date of a foreign, U.S. provisional, U.S. nonprovisional, or 
international application is prior to March 16, 2013, it is necessary 
for the applicant to specify whether pre-AIA or AIA 35 U.S.C. 102 and 
103 applies.
    It is noted that further minor changes have been made to the 2006 
AE Notice to reflect changes made by the AIA such as the citation 
change of 35 U.S.C. 112(a) and (f) and the appeal board's designation 
as the Patent Trial and Appeal Board (PTAB).

C. Reply by Applicant

    The 2006 AE Notice provides shortened statutory periods of one 
month or thirty days, whichever is longer, without extensions under 37 
CFR 1.136(a). 71 FR at 36325, 36327. This provision of the 2006 AE 
Notice was updated in 2013, when the Office issued a final rule to 
implement the PLT stating: ``The Office is revising the Accelerated 
Examination program to provide that Office actions (other than a notice 
of allowance) will set a shortened statutory period for reply of at 
least two months. In addition, extensions of this shortened statutory 
period under 37 CFR 1.136(a) will be permitted, but filing a petition 
for an extension of time will result in the application being taken out 
of the Accelerated Examination program.'' Changes To Implement the 
Patent Law Treaty, 78 FR 62368, 62373 (Oct. 21, 2013).

D. Complete Application Upon Filing

    In listing the conditions that must be met at the time of filing, 
the 2006 AE Notice states that no petition under 37 CFR 1.47 for a non-
signing inventor may be present. 71 FR at 36327. However, in 
implementing the AIA, 37 CFR 1.47 was removed and 37 CFR 1.46 was 
amended to allow an assignee, an obligated assignee, or a person who 
otherwise shows sufficient proprietary interest in the matter to make 
an application for patent. Included among the amendments to 37 CFR 1.46 
is a provision in 37 CFR 1.46(b)(2) that requires a petition in order 
to designate a person with sufficient proprietary interest as the 
applicant. Thus, the conditions for participation in the AE are hereby 
revised to preclude any petition under 37 CFR 1.46(b)(2) to designate a 
person with sufficient proprietary interest as the applicant. In fact, 
applicant should refrain from filing any petition that would delay the 
processing of the application including a petition under 37 CFR 1.78 to 
accept a delayed benefit claim.

[[Page 54566]]

    Additionally, the 2006 AE Notice states that a foreign priority 
claim under 35 U.S.C. 119(a)-(d) should be identified in the executed 
oath or declaration or an application data sheet (if applicable). 71 FR 
at 36326. Further, the 2006 AE notice also states that any domestic 
benefit claim must be in the first sentence of the specification or in 
an application data sheet. 71 FR at 36326. However, after the AIA, 
current rules require all domestic benefit and foreign priority claims 
to be made in the application data sheet (except for foreign priority 
claim in a national stage application under 35 U.S.C. 371) (see 37 CFR 
1.55 and 1.78). Therefore, any priority claim would need to be made in 
an application data sheet under 37 CFR 1.76.
    Finally, the 2006 AE Notice requires the applicant to file using 
the USPTO's electronic filing system (EFS) or EFS-Web. The USPTO's 
original electronic filing system (EFS) was discontinued. Therefore, 
applicants will need to file their accelerated examination applications 
through EFS-Web.
    It is noted that an executed oath or declaration is no longer a 
condition for examination after the AIA. However, it is a requirement 
under 37 CFR 1.51 and will need to be present upon filing for entry in 
the program. A missing oath or declaration will not result in a notice 
to file missing parts when the application is reviewed by the Office of 
Patent Application Processing (OPAP). Nonetheless, the presence of the 
oath or declaration in compliance with 37 CFR 1.63 or substitute 
statement in compliance with 37 CFR 1.64 will subsequently be reviewed 
in the Technology Centers by the Quality Assurance Specialist (QAS) 
office. Failure to have a compliant oath, declaration, or substitute 
statement upon filing will prevent the application from being accorded 
special status.

II. Changes to the 2006 AE Notice

    As detailed above, the 2006 AE Notice has been modified to reflect 
changes in law and examination practice. The changes are set out below 
as paragraphs that replace paragraphs in the original notice.
    The changes in Part I are as follows:
    71 FR at 36324, col. 2, fifth paragraph (``(3) . . .'') is replaced 
with the following:
    (3) The application, petition, and required fees must be filed 
electronically using the USPTO's electronic filing system (EFS-Web). If 
the USPTO's EFS-Web is not available to the public during the normal 
business hours for the system at the time of filing the application, 
applicant may file the application, other papers, and fees by mail 
accompanied by a statement that EFS-Web was 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 
Part VIII (subsection The Twelve-Month Goal) for more information.
    71 FR at 36324, col. 3, fourth paragraph (``(8) . . .'') is 
replaced with the following:
    (8) At the time of filing, applicant must provide a statement that 
a preexamination search was conducted, including an identification of 
the field of search (i.e., group/subgroup of the CPC for utility 
applications and class/subclass of the USPC for design applications) 
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.
    71 FR at 36325, col. 1-2, ninth paragraph (``(E) . . .'') is 
replaced with the following:
    (E) The accelerated examination support document must include a 
showing of where each limitation of the claims finds support under 35 
U.S.C. 112(a) in the written description of the specification. If 
applicable, the showing must also identify: (1) Each means- (or step-) 
plus-function claim element that invokes consideration under 35 U.S.C. 
112(f); and (2) 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(f). 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 35 U.S.C. 112(a) in each such application in 
which such support exists.
    71 FR at 36325, col. 2, first paragraph (``(F) . . .'') is replaced 
with the following:
    (F)(1) For an application that is subject to examination under the 
pre-AIA 35 U.S.C. 102 and 103: The accelerated examination support 
document must identify any cited references that may be disqualified as 
prior art under pre-AIA 35 U.S.C. 103(c) as amended by the Cooperative 
Research and Technology Enhancement (CREATE) Act (Pub. L. 108-453, 118 
Stat. 3596 (2004)).
    (F)(2) For an application that is subject to examination under AIA 
35 U.S.C. 102 and 103: The accelerated examination support document 
must identify any cited references that may be disqualified as prior 
art under 35 U.S.C. 102(b)(2)(C).
    The changes in Part III are as follows:
    71 FR at 36325, col. 3, second paragraph (``If an . . .'') is 
replaced with the following:
    If an Office action other than a notice of allowance is mailed, the 
Office action will set a shortened statutory period of two (2) months. 
Extensions of time under the provisions of 37 CFR 1.136(a) will be 
permitted, but will result in the application being taken out of the 
program. Failure to timely file a reply will result in abandonment of 
the application. See Parts V and VI for more information on post-
allowance and after-final procedures.
    The changes in Part VI are as follows:
    71 FR at 36326, col. 1-2, third paragraph (``After-Final and Appeal 
Procedures'') is replaced with the following:
    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 
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 
Patent Trial and Appeal Board (PTAB) for a decision, applicant must: 
(1) Promptly file the notice of appeal, appeal brief, and appeal fees; 
and (2) 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. The USPTO will continue to treat the application 
special under the accelerated examination program after the decision by 
the PTAB.
    The changes in Part VIII are as follows:
    71 FR at 36326, col. 3, ninth paragraph (``(G) . . .'') is replaced 
with the following:
    (G) 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-Web) in ASCII text as part of an associated file (if 
applicable);

[[Page 54567]]

    71 FR at 36326, col. 3, tenth paragraph (``(H) . . .'') is replaced 
with the following:
    (H) Foreign priority claim under 35 U.S.C. 119(a)-(d) identified in 
the application data sheet (if applicable);
    71 FR at 36326-27, col. 3, eleventh paragraph (``(I) . . .'') is 
replaced with the following:
    (I) Domestic benefit claims under 35 U.S.C. 119(e), 120, 121, 
365(c), or 386(c) in compliance with 37 CFR 1.78 (e.g., the specific 
reference to the prior application must be submitted 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);
    71 FR at 36327, col. 1, third paragraph (``(L) . . .'') is replaced 
with the following:
    (L) No petition under 37 CFR 1.46(b)(2) to designate a person with 
sufficient proprietary interest as the applicant.
    71 FR at 36327, col. 1, fifth paragraph (``Applicant should . . 
.'') is replaced with the following:
    Applicant should also provide a suggested classification (i.e., 
group/subgroup of the Cooperative Patent Classification for utility 
applications or class/subclass of the U.S. Patent Classification for 
design applications) 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.
    71 FR at 36327, col. 1, sixth paragraph (``The petition . . .'') is 
replaced with the following:
    The petition to make special will be dismissed if the application 
omits an item or includes a paper that causes the Office of Patent 
Application Processing (OPAP) to mail a notice during the formality 
review (e.g., a notice of incomplete application, notice to file 
missing parts, notice to file corrected application papers, notice of 
omitted items, or notice of informal application). The opportunity to 
perfect a petition (Part II) does not apply to applications that are 
not in condition for examination on filing.
    71 FR at 36327, col. 1, seventh paragraph (``Reply Not . . .'') is 
replaced with following:
    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 two (2) months 
for applicant to supply the omission or a fully responsive reply. 
Extensions of time under the provisions of 37 CFR 1.136(a) are 
permitted, but will result in the application being taken out of the 
program. Failure to timely file the omission or a fully responsive 
reply will result in abandonment of the application.
    If the reply is not a bona fide attempt, no additional time period 
will be given. The time period set forth in the previous Office action 
will continue to run.

    Dated: August 10, 2016.
Michelle K. Lee,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 2016-19527 Filed 8-15-16; 8:45 am]
 BILLING CODE 3510-16-P