[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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