[Federal Register Volume 77, Number 190 (Monday, October 1, 2012)]
[Notices]
[Pages 59911-59913]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2012-24113]


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DEPARTMENT OF COMMERCE

United States Patent and Trademark Office

[Docket No. PTO-C-2012-0037]


Request To Make Special Program for the Law School Clinic 
Certification Patent Pilot Program

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION:  Notice.

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SUMMARY: The United States Patent and Trademark Office (USPTO) is 
implementing a pilot program in which a law school clinic participating 
in the USPTO Law School Clinic Certification Pilot Program may file an 
application for a pro bono client of the law school clinic and that 
applicant's application may be advanced out of turn (accorded special 
status) for examination. Each school participating in the patent pilot 
program would be allotted up to two applications to be examined out of 
turn per semester. The total number of applications to be examined out 
of turn by law school clinics participating in the USPTO Law School 
Clinic Certification Pilot Program is limited to sixty-four per year.

DATES: Effective Date: October 1, 2012.
    Duration: The Request to Make Special for the Law School Clinic 
Certification Pilot Program will run for the duration of the Law School 
Certification Clinic Pilot Program or until otherwise announced.

FOR FURTHER INFORMATION CONTACT: William R. Covey, Deputy General 
Counsel for Enrollment and Discipline and Director of Enrollment and 
Discipline, by telephone at 571-272-4097; by facsimile transmission to 
571-273-0074, marked to the attention of William R. Covey; by mail 
addressed to: Mail Stop OED, USPTO, P.O. Box 1450, Alexandria, VA 
22313-1450.

SUPPLEMENTARY INFORMATION: New patent applications are normally taken 
up for examination in the order of their United States filing date. See 
section 708 of the Manual of Patent Examining Procedure (8th ed. 2001) 
(Rev. 8, July 2010) (MPEP). The USPTO has a procedure under which an 
application will be advanced out of turn (accorded special status) for 
examination if the applicant files a petition to make special with the 
appropriate showing. See 37 CFR 1.102 and MPEP 708.02. The USPTO 
revised its accelerated examination program in June of 2006, and 
required that all petitions to make special, except those based on 
applicant's health or age or the Patent Prosecution Highway (PPH) pilot 
program, comply with the requirements of the revised accelerated 
examination program. See Changes to Practice for Petitions in Patent 
Applications To Make Special and for Accelerated Examination, 71 FR 
36323 (June 26, 2006), 1308 Off. Gaz. Pat. Office 106 (July 18, 2006) 
(notice); Changes to Implement the Prioritized Examination Track (Track 
I) of the Enhanced Examination Timing Control Procedures

[[Page 59912]]

Under the Leahy-Smith America Invents Act, 76 FR 59050 (September 23, 
2011); see also MPEP 708.02(a) and (b). Applications that are accorded 
special status are generally placed on the examiner's special docket 
throughout its entire course of prosecution before the examiner, and 
have special status in any appeal to the Patent Trial and Appeal Board 
(PTAB) and also in the patent publication process. See MPEP 708.01 and 
1309.
    Currently, a participating law school clinic files the client's 
application and the application is placed on the regular docket of the 
examiner. Due to the the time for initial substantive examination, 
students are currently unable to receive the benefit of any action by 
the Office prior to completion of their clinic program. Allowing a 
limited number of applications per semester per school to be advanced 
out of turn will provide the law students with practical experience as 
they will be more likely to receive substantive examination of 
applications within the school year that the application is filed. When 
filing the Request to Make Special, a school must certify that it 
provides all patent clinic clients with patentability searches and 
opinions prior to qualifying to receive any application advanced out of 
turn. Further the school must file a Request to Make Special in order 
for a patent application to be granted special status.
    The USPTO is implementing a pilot program to permit up to two 
applications per academic term filed by a law school clinic program 
participating in the USPTO Law School Clinic Certification Pilot 
Program to be advanced out of turn without meeting all of the current 
requirements of the accelerated examination program or prioritized 
examination set forth in MPEP 708.02(a) and (b). Additional 
applications may be advanced out of turn based upon a request by the 
participating law school clinic program.
    Applications that are accorded special status under the Request to 
Make Special for the Law School Clinic Certification Pilot Program will 
be placed on an examiner's special docket prior to the first Office 
action, and will have special status in any appeal to the PTAB and also 
in the patent publication process. Applications accorded special status 
under the Request to Make Special for the Law School Clinic 
Certification Pilot Program, however, will be placed on the examiner's 
amended docket, rather than the examiner's special docket, after the 
first Office action (which may be an Office action containing only a 
restriction requirement).
    An eligible law school may participate in the Request to Make 
Special for the Law School Clinic Certification Pilot Program by filing 
a request to make special that meets all of the requirements set forth 
in this notice. No fee is required. The $130.00 fee for a petition 
under 37 CFR 1.102 (other than those enumerated in 37 CFR 1.102(c)) is 
hereby sua sponte waived for requests to make special based upon the 
procedure specified in this notice. In addition, continuing 
applications will not automatically be accorded special status based on 
papers filed with a request in a parent application. Each continuing 
application must on its own meet all requirements for special status.

I. Requirements

    A request to make special under the Request to Make Special for the 
Law School Clinic Certification Pilot may be granted in an application 
if the eligibility requirements set forth in section II or III and the 
following conditions are satisfied:
    (1) The application must be a non-reissue, non-provisional utility 
application filed under 35 U.S.C. 111(a), or an international 
application that has entered the national stage in compliance with 35 
U.S.C. 371. Reexamination proceedings are excluded from this pilot 
program.
    (2) The application must be submitted by a law school participating 
in the Law School Clinic Certification Pilot Program on behalf of a pro 
bono client.
    (3) The application must contain three or fewer independent claims 
and twenty or fewer total claims. The application must not contain any 
multiple dependent claims. For an application that contains more than 
three independent claims or twenty total claims, or multiple dependent 
claims, applicants must file a preliminary amendment in compliance with 
37 CFR 1.121 to cancel the excess claims and/or the multiple dependent 
claims at the time the request to make special is filed.
    (4) The claims must be directed to a single invention. The request 
must include a statement that, if the USPTO determines that the claims 
are directed to multiple inventions (e.g., in a restriction 
requirement), applicant will agree to make an election without traverse 
in a telephonic interview. See section III of this notice for more 
information.
    (5) The request to make special must be filed electronically using 
the USPTO electronic filing system, EFS-Web, and selecting the document 
description of ``Certification and Request to Make Special Under the 
Law School Pilot Program'' on the EFS-Web screen. Applicant should use 
form PTO/SB/419, which will be available as a Portable Document Format 
(PDF) fillable form in EFS-Web and on the USPTO Web site at http://www.uspto.gov/web/forms/index.jsp. Information regarding EFS-Web is 
available on the USPTO Web site at http://www.uspto.gov/ebc/index.html.
    (6) The request to make special must be filed at least one day 
prior to the date that a first Office action (which may be an Office 
action containing only a restriction requirement) appears in the Patent 
Application Information Retrieval (PAIR) system. Applicant may check 
the status of the application using PAIR.
    (7) The request to make special must be accompanied by a request 
for early publication in compliance with 37 CFR 1.219 and the 
publication fee set forth in 37 CFR 1.18(d).
    (8) The request to make special must be filed on behalf of a small 
entity.

II. Decision on the Request To Make Special for the Law School Clinic 
Certification Pilot Program

    If applicant files a request to make special through the Law School 
Clinic Certification Pilot Program, the USPTO will decide on the 
request once the application is in condition for examination. If the 
request is granted, the application will be accorded special status 
under the Request to Make Special for the Law School Clinic 
Certification Pilot Program. The application will be placed on the 
examiner's special docket prior to the first Office action, and will 
have special status in any appeal to the PTAB and also in the patent 
publication process. The application, however, will be placed on the 
examiner's amended docket, rather than the examiner's special docket, 
after the first Office action (which may be an Office action containing 
only a restriction requirement).
    If applicant files a request to make special under the Request to 
Make Special for the Law School Clinic Certification Pilot Program that 
does not comply with the requirements set forth in this notice, the 
USPTO will notify the applicant of the deficiency by issuing a notice, 
and applicant will be given only one opportunity to correct the 
deficiency. If applicant still wishes to participate in the Request to 
Make Special for the Law School Clinic Certification Pilot Program, 
applicant must file a proper request and make appropriate corrections 
within one month or thirty days, whichever is longer. The time period 
for reply is not extendable under 37 CFR 1.136(a). If applicant fails 
to correct the deficiency

[[Page 59913]]

indicated in the notice within the time period set forth therein, the 
application will not be eligible for the Request to Make Special for 
the Law School Clinic Certification Pilot Program and the application 
will be taken up for examination in accordance with standard 
examination procedures.

III. Requirement for Restriction

    If the claims in the application are directed to multiple 
inventions, the examiner may make a requirement for restriction in 
accordance with current restriction practice prior to conducting a 
search. The examiner will contact the applicant and follow the 
procedure for the telephone restriction practice set forth in MPEP 
812.01. Applicant must make an election without traverse in a 
telephonic interview. See item 4 of section I of this notice. If the 
examiner cannot reach the applicant after a reasonable effort or 
applicant refuses to make an election in compliance with item 4 of 
section I of this notice, the examiner will treat the first claimed 
invention as constructively elected without traverse for examination.

    Dated: September 25, 2012.
David J. Kappos,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 2012-24113 Filed 9-28-12; 8:45 am]
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