[Federal Register Volume 71, Number 122 (Monday, June 26, 2006)]
[Notices]
[Pages 36323-36327]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: E6-10022]


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DEPARTMENT OF COMMERCE

 Patent and Trademark Office

[Docket No.: PTO-P-2006-0014]


Changes to Practice for Petitions in Patent Applications To Make 
Special and for Accelerated Examination

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Notice.

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SUMMARY: The United States Patent and Trademark Office (USPTO) has 
established procedures under which the examination of a patent 
application may be accelerated. Under one of these procedures, the 
USPTO will advance an application out of turn for examination if the 
applicant files a grantable petition to make special under the 
accelerated examination program. The USPTO is revising its procedures 
for applications made special under the accelerated examination program 
with the goal of completing examination within twelve months of the 
filing date of the application. The USPTO is similarly revising the 
procedures for other petitions to make special, except those based on 
applicant's health or age or the recently announced Patent Prosecution 
Highway (PPH) pilot program between the USPTO and the Japan Patent 
Office.

DATES: Effective Date: The change in practice in this notice applies to

[[Page 36324]]

petitions to make special filed on or after August 25, 2006.

FOR FURTHER INFORMATION CONTACT: Pinchus Laufer, Detailee, Office of 
Patent Legal Administration, Office of the Deputy Commissioner for 
Patent Examination Policy, by telephone at (571) 272-7726, or by 
facsimile at (571) 273-7726. Comments concerning petition to make 
special practice may be sent by electronic mail message over the 
Internet addressed to [email protected], or submitted by mail 
addressed to: Mail Stop Comments--Patents, Commissioner for Patents, 
P.O. Box 1450, Alexandria, VA, 22313-1450.
    Any inquiries concerning electronic filing of the application 
should be directed to the Electronic Business Center (EBC) at (866) 
217-9197. Any inquiries concerning a specific petition to make special 
should be directed to the appropriate Technology Center Special Program 
Examiner.

SUPPLEMENTARY INFORMATION: New patent applications are normally taken 
up for examination in the order of their United States filing date. The 
USPTO has a procedure for requesting accelerated examination 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 37 CFR 1.102 and Manual of Patent Examining Procedure 
Sec.  708.02 (VIII) (8th ed. 2001) (Rev. 3, August 2005) (MPEP). The 
USPTO is revising its procedures for applications made special under 
the accelerated examination program with the goal of completing 
examination within twelve months of the filing date of the application. 
See Part VIII (subsection The Twelve-Month Goal) for more information.
    The USPTO is similarly revising the procedures for other petitions 
to make special, except those based on applicant's health or age or the 
PPH pilot program. Specifically, other petitions to make special (i.e., 
petitions based on: manufacture, infringement, environmental quality, 
energy, recombinant DNA, superconductivity materials, HIV/AIDS and 
cancer, countering terrorism, and biotechnology applications filed by 
small entities (see MPEP Sec.  708.02)) will be processed and examined 
using the revised procedure for accelerated examination. Thus, all 
petitions to make special, except those based on applicant's health or 
age or the PPH pilot program, will be required to comply with the 
requirements of petitions to make special under the accelerated 
examination program that are set forth in this notice.
    Any petition to make special, other than those based on applicant's 
health or age or the PPH pilot program, filed on or after the effective 
date must meet the requirements set forth in this notice. Applications 
filed before the effective date will not be eligible for the revised 
accelerated examination program. Until the effective date, applicant 
may file a petition to make special in an application filed before the 
effective date by complying with the previous guidelines and 
requirements in MPEP Sec.  708.02 (I-II, and V-XII). A petition to make 
special filed after the effective date 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 this notice. See 
Part VIII, for more information on eligibility.
    Part I. Requirements for Petitions to Make Special under 
Accelerated Examination: A new application may be granted accelerated 
examination status under the following conditions:
    (1) 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, energy, or countering 
terrorism. See 37 CFR 1.102(c)(2). Applicant should use form PTO/SB/28 
for filing the petition.
    (2) The application must be a non-reissue utility or design 
application filed under 35 U.S.C. 111(a).
    (3) 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 Part VIII (subsection The Twelve-
Month Goal) for more information.
    (4) 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 Part VIII 
(subsection Conditions for Examination) for more information.
    (5) 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.
    (6) 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.
    (7) 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.
    (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 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.
    (A) 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.
    (B) This preexamination search must be directed to the claimed 
invention and

[[Page 36325]]

encompass all of the features of the claims, giving the claims the 
broadest reasonable interpretation.
    (C) 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 9) will be 
treated as not fully responsive and will not be entered. See Part IV 
(Reply by Applicant) for more information.
    (D) A search report from a foreign patent office will not satisfy 
this preexamination search requirement unless the search report 
satisfies the requirements set forth in this notice for a 
preexamination search.
    (E) 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.
    (9) At the time of filing, applicant must provide in support of the 
petition an accelerated examination support document.
    (A) 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.
    (B) 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.
    (C) 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).
    (D) 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).
    (E) 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: (1) Each 
means- (or step-) plus-function claim element that invokes 
consideration under 35 U.S.C. 112, ] 6; 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, ] 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.
    (F) The accelerated examination support document must identify any 
cited references that may be disqualified as prior art under 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)).
    Part 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 prerequisites set forth in this 
notice 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 Part VIII (subsection 
Condition for Examination). 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.
    Part 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 Sec.  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: (1) An interview was conducted but did not 
result in the application being placed in condition for allowance; or 
(2) 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 Parts V and VI for more information 
on post-allowance and after-final procedures.
    Part 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: (1) Add claims which would result in more 
than three independent claims, or more than twenty total claims, 
pending in the application; (2) present claims not encompassed by the 
preexamination search (see item 8 of Part I) or an updated accelerated 
examination support document (see next paragraph); or (3) 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 Part VIII (subsection 
Reply Not Fully responsive) for more information.
    For any amendment to the claims (including any new claim) that is 
not encompassed by the accelerated examination support document in Part 
I, item 9, applicant is required to provide an updated accelerated 
examination

[[Page 36326]]

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 Part VIII (subsection Reply Not Fully Responsive) 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.
    Part V. Post-Allowance Processing: The mailing of a notice of 
allowance is the final disposition for purposes of the twelve-month 
goal for the 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: (1) Pay the 
issue fee (and any outstanding fees due) within one month from the 
mailing date of the form PTOL-85; and (2) 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).
    Part 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 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: (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 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 Part 
IV (Reply by Applicant). 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 Part IV (Reply by 
Applicant). The filing of the RCE is a final disposition for purposes 
of the twelve-month goal for the 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 Part III and any subsequent 
replies filed by applicant must meet the requirements of Part IV. The 
goal of the program will then be to reach a final disposition of the 
application within twelve months from the filing of the RCE.
    Part 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 1.181-1.183), 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.
    Part VIII. More Information: Eligibility: Any non-reissue utility 
or design application filed under 35 U.S.C. 111(a) on or after the 
effective date of this program is eligible for the revised accelerated 
examination program. The following types of filings are not eligible 
for this revised accelerated examination program: Plant applications, 
reissue applications, applications entering the national stage from an 
international application after compliance with 35 U.S.C. 371, 
reexamination proceedings, RCEs under 37 CFR 1.114 (unless the 
application was previously granted special status under the program), 
and petitions to make special based on applicant's health or age or 
under the PPH pilot program. Rather than participating in this revised 
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 Sec.  1504.30. See 37 
CFR 1.155.
    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.
    Conditions for Examination: The application must be in condition 
for examination at the time of filing. This means the application must 
include the following:
    (A) Basic filing fee, search fee, and examination fee, under 37 CFR 
1.16 (see MPEP section 607(I)),
    (B) Application size fee under 37 CFR 1.16(s) (if the specification 
and drawings exceed 100 sheets of paper) (see MPEP section 607(II));
    (C) An executed oath or declaration in compliance with 37 CFR 1.63;
    (D) 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;
    (E) A title and an abstract in compliance with 37 CFR 1.72;
    (F) Drawings in compliance with 37 CFR 1.84;
    (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) in ASCII text as part of an associated file (if 
applicable);
    (H) 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);
    (I) 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

[[Page 36327]]

accurate, have been filed in the provisional application) (if 
applicable);
    (J) 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);
    (K) No preliminary amendments present on the filing date of the 
application; and
    (L) 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 
1.151-1.154.
    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 (Part II) does not apply to applications that are not in 
condition for examination on filing.
    Reply Not Fully Responsive: If a reply to a non-final Office action 
is not fully responsive, but a bona fide attempt to advance the 
application to final action, the examiner may provide one month or 
thirty-days, whichever is longer, for applicant to supply the omission 
or a fully responsive reply. No extensions of this time period under 37 
CFR 1.136(a) will be permitted. Failure to timely file the omission or 
a fully responsive reply will result in abandonment of the application. 
If the reply is not a bona fide attempt or it is a reply to a final 
Office action, no additional time period will be given. The time period 
set forth in the previous Office action will continue to run.
    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.
    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 timeframe in certain situations 
(e.g., an IDS citing new prior art after the mailing of a first Office 
action). See Part VII 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 timeframe 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.
    Paperwork Reduction Act: This notice involves information 
collection requirements which are subject to review by the Office of 
Management and Budget (OMB) under the Paperwork Reduction Act of 1995 
(44 U.S.C. 3501 et seq.). The collection of information involved in 
this notice has been reviewed and previously approved by OMB under OMB 
control number 0651-0031. The Office has submitted a Change Worksheet 
to OMB for review of form PTO/SB/28 Petition to Make Special Under the 
Accelerated Examination.
    Notwithstanding any other provision of law, no person is required 
to respond to nor shall a person be subject to a penalty for failure to 
comply with a collection of information subject to the requirements of 
the Paperwork Reduction Act unless that collection of information 
displays a currently valid OMB control number.
    Section 708.02 of the Manual of Patent Examining Procedure will be 
revised in due course to reflect this change in practice.

    Dated: June 20, 2006.
Jon W. Dudas,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. E6-10022 Filed 6-23-06; 8:45 am]
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