Strategic Uses of New USPTO Initiatives and Procedures: How to Improve Prosecution Expediency

As has been recognized by many in the Patent Bar as well as by the USPTO itself, the unexamined patent application backlog has been a continual hamstring on the USPTO’s ability to move applications through the Office efficiently.  As is evident from Figure 1 below provided by the USPTO, the number of applications filings at the USPTO continues to increase.

The red portions of the bars correspond to new non-provisional filings, and the blue portions of the bars correspond to RCEs.

As is evident from Figure 2, a significant problem affecting USPTO performance has been identified as the Request for Continued Examination (RCE) Backlog, which grow dramatically from 2009 into 2013.  The intricacies of RCE practice go beyond the scope of this article, but it is RCE practice that is a primary problem facing the USPTO. At the end of the USPTO’s 2013 End of Fiscal Year, approximately 78,272 RCE applications were awaiting examination at the USPTO.  These RCEs divert resources away from the examination of new applications.

The USPTO has recognized that the rapid growth in its new filings and RCE backlog and has

instituted many new initiatives aiming to reduce this backlog and increase application efficiency through the Office.  With respect to RCEs in particular, these new initiatives encourage examination of RCE’s on an examiner’s docket, emphasize the movement of RCEs particularly for employees having larger number of RCEs, and increase incentives for moving larger volumes of RCEs in a quarter.  Other initiatives similarly are aimed at increasing application efficiency.

In designing these initiatives, beginning in Dec. of 2012, the USPTO requested comments through the Federal Register and through Roundtables/focus group meetings.  During this outreach effort, over 1,100 comments and suggestions were received.  From these, several high-level themes emerged for addressing the RCE backlog, including: Educational Outreach, IDS Considerations, Training, and Prosecution Flexibility.  From these themes, the USPTO developed several initiatives to combat the application backlog, which are discussed below in more detail.

USPTO Initiatives to Address RCE Backlog and Increase Examination Efficiencies
The USPTO Patent Application Initiatives have been designed to advance and support the patent application examination process.  Initiatives are available for use and consideration at each stage of prosecution (i.e., before and during filing, before a first office action on the merits (FOAM), after final rejection, before appeal, during and after allowance, and after issue).  For the ease of prosecutors and inventors, the USPTO has provided a dashboard of these initiatives on its website.

This user-friendly timeline displays various programs and initiatives that are available to applicants during each phase of the application process.  Each program is designed to advance the progress of a patent application and to provide applicant assistance from the USPTO as needed.  Program titles in the timeline can be selected to access specific details on objectives and participation requirements of each of the initiatives.  Headings within each column can be selected to access a detailed matrix which provides a comparison of the programs and initiatives.

Initiatives for Consideration When Filing an Application

Expedited Examination

Expedited examination is a good strategy in many cases for patent applications.  Expedited examination results in a faster examination process for an application, which means that a patent issuing from any such application should issue much faster than a regularly filed application.  There are several procedures available for expediting the examination of an application.  These include “Track One” examination, Accelerated Examination (AE) , and Patent Prosecution Highway (PPH).  By way of example, in the Track One and the AE programs, applicants receive a FOAM in less than 5 months and a final decision from the examiner within 12 months from the grant of the request.  In the PPH program, applicants receive a FOAM within 2 to 3 months from the grant of the request.

Using expedited examination may enhance business objectives including:  IP and commercialization strategies, enforcement activities, capital attracting, and reducing perceived risk by investors or licensees.  Expedited examination may not always be the right answer in every case.  The benefits of deferring examination should be considered as well, for example, for patent applications in a developing technology area.

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Track One Prioritized Examination

Track One Prioritized Examination has been made available through the recent America Invents Act (AIA).  In the Track One process, applicants can submit no more than 4 independent claims and no more than 30 total claims. Applicants also must pay a $4000 fee, which is reduced to $2000 for small entities and to $1000 for micro entities, and the process is limited to 10,000 cases/year.  Applicants further must electronically file their applications, and the applications must be complete on filing.  Although relatively expensive, one of the benefits of the Track One program is that it does not require an expensive pre-examination search report (i.e., no potentially problematic prosecution history estoppel pitfalls).  Additionally, Track One allows applicants to quickly develop a patent family around core technologies by expediting initial patents on those technologies and then filing continuing applications to expand the family.   Another potential beneficial use of the Track One program is that Track One applications can be used to avoid potential third-party prior art submissions.

Accelerated Examination

Accelerated Examination is another program applicants can use to expedite prosecution of a patent application.  The Accelerated Examination program essentially corresponds to Petition to Make Special practice.  In the latter, an applicant can file a petition to request that an application be examine more quickly than other applications for various reasons (i.e., applicant’s age or health; or that the invention will materially enhance the quality of the environment, contribute to the development or conservation of energy resources or contribute to countering terrorism).

The Accelerated Examination program applies to all petitions to make special not based on age or health or the PPH.  These petitions include those based on manufacture, infringement, environmental quality, energy, recombinant DNA, superconductivity materials, HIV/AIDS and cancer, countering terrorism, and biotechnology applications filed by small entities.  MPEP § 708.02.

A petition to make special or a request for accelerated examination may be filed at any time during the pendency of a patent application.  If it is filed with a patent application, the application is examined sooner than a regular filed patent application.  The goal of the USPTO is to examine and reach a final disposition of a patent application made “special” within one-year of filing.

Whether a fee is required depends on the basis for the petition.   Those that do not require a fee include:  Age – Inventor is 65 yearsold or more; Health – Applicant has failing health; Environmental – The invention will materially enhance the quality of the environment; Energy Conservation – The invention will materially contribute to the development or conservation of energy resources; Superconductive Materials – The invention relates to superconductive materials; and Counter-Terrorism – The invention will contribute to countering terrorism.  Those that involve a fee are:  DNA Research – The invention relates to recombinant DNA research; HIV/AIDS/Cancer – The invention contributes to the diagnosis, treatment or prevention of HIV, AIDS or cancer; Prospective Manufacturer – The applicant has a prospective manufacturer that is prepared to begin manufacturing the invention but will not manufacture unless they are certain a patent will be granted; Infringer – There is an infringing device or product on the market; Biotechnology – The invention relates to biotechnology applications and the applicant qualifies for Small Entity Status; Accelerated Examination (AKA Petition to Make Special).

In the Accelerated Examination program, applicants can submit no more than 3 independent claims and no more than 20 total claims.  Accelerated Examination is cheaper than Track One Prioritized Examination at only $140 fee for large entities, which is reduced to $70 for small entities and to $35 for micro entities.  However, there is a potential downside in that applicants further must submit pre-examination search documents and an “examination support document.”  This examination support document must address each claim and the patentability of each claim over the closest known prior art.  Additionally, the applicant must identify where each claim in supported by the specification of the application.  Needless to say, this examination support document contains many traps for the unwary, and can result in prosecution history estoppel problems in later litigation.

Patent Prosecution Highways

Patent Prosecution Highways (PPHs) can be very useful tools to use to expedited prosecution of a U.S. patent application.  The Patent Prosecution Highway (PPH) speeds up the examination process for corresponding applications filed in participating intellectual property offices. Under PPH, participating patent offices have agreed that when an applicant receives a final ruling from a first patent office that at least one claim is allowed, the applicant may request fast track examination of corresponding claim(s) in a corresponding patent application that is pending in a second patent office.  PPH leverages fast-track examination procedures already in place among participating patent offices to allow applicants to reach final disposition of a patent application more quickly and efficiently than standard examination processing.

The statistics show that examination usually occurs within two to three months from the grant of the PPH request if application is in conformity.   Further, there are no petition fees or limits on the number of claims that can be subject to the PPH request.  Most PPH U.S. applications have an enhanced likelihood of allowance:  statistics show that more than 90 percent of PPH cases are allowed as compared to 50% of regularly filed applications.

In a nutshell, the PPH leverages the work done by a previous patent office to examine and allow claims in a subsequent patent office.  The PPH enables an application whose claims have been determined to be patentable in the Office of First Filing (OFF) to undergo an accelerated examination in the Office of Second Filing (OSF) with a simple procedure upon a request from an applicant on the basis of bilateral agreements.

The PPH programs were initially limited to national applications between cross filings under the Paris Convention. However, in 2012, a pilot program that is still in effect provided for the Patent Cooperation Treat (PCT) PPH to allow a Trilateral Office to draw upon the PCT work product from another Trilateral Office.

The USPTO has PCT-PPH agreements with:

• Austrian Patent Office
• Australian Patent Office
• Canadian Intellectual Property Office
• State Intellectual Property Office of the People’s Republic of China
• European Patent Office
• Spanish Patent and Trademark Office
• National Board of Patents and Registration of Finland
• Israel Patent Office
• Japan Patent Office
• Korean Intellectual Property Office
• Federal Service for Intellectual Property, Patents and Trademarks (Russian Federation)
• Swedish Patent and Registration Office
• Nordic Patent Institute

An applicant receiving a favorable Written Opinion or IPR on Patentability from one of these offices acting as an International Authority may request corresponding national phase entry of a national application filed at the USPTO receive fast-track examination under the PCT-PPH program.

In January 2014, brand new pilot PPH programs came on-line in an attempt to harmonize the PPH programs on a global basis and to harmonize the requirements for participating in the PPH programs.  These new pilot programs are known as the IP5 PPH and the Global PPH.  The participants in terms of countries somewhat overlap but not fully.  These changes signal the end of myriad existing bilateral PPH programs between the IP5 nations and the thirteen Global PPH nations and trump all preexisting bilateral agreements.  Fortunately, this means a common form and common expectations  (single set of requirements) from nearly all of the participating offices within this system.

The IP5 PPH consists of the world’s five largest IP offices – the USPTO, the European Patent Office (EPO), the Korean Intellectual Property Office, the Japan Patent Office, and the State Intellectual Property Office of the People’s Republic of China (collectively, the “IP5”).  It became available to applicants effective Jan. 6, 2014.  The IP5 program utilizes both PCT and national work products and will improve the accelerated treatment of patent applications. The PPH arrangements currently operational between the IP5 Offices have been or will be integrated in this all-inclusive scheme.

The second new PPH program is the Global PPH, which is an extension of the original PCT Patent Prosecution Highway (PPH) pilot to include sixteen additional countries.  This extension is part of a continued global focus on strengthening international cooperation between overseas patent offices and ensuring maximum work-sharing potential.  Simultaneously, and with the inclusion of three IP5 members, thirteen intellectual property offices launched a similar pilot program titled the “Global PPH” pilot program.  It also launched January 6, 2014.  The Global PPH participating offices:

• IP Australia (IP Australia),
• Canadian Intellectual Property Office (CIPO),
• Danish Patent and Trademark Office (DKPTO),
• National Board of Patents and Registration of Finland (NBPR),
• Hungarian Intellectual Property Office (HIPO),
• Icelandic Patent Office (IPO),
• Israel Patent Office (ILPO),
• Japan Patent Office (JPO),
• Korean Intellectual Property Office (KIPO),
• Nordic Patent Institute (NPI),
• Norwegian Industrial Property Office (NIPO),
• Portuguese Institute of Industrial Property (INPI),
• Russian Federal Service for Intellectual Property (ROSPATENT),
• Spanish Patent and Trademark Office (SPTO),
• Swedish Patent and Registration Office (PRV),
• United Kingdom Intellectual Property Office (IPO), and
• the USPTO.

Through the Global PPH, an applicant may request accelerated examination in one office based on the allowance of at least one claim in a corresponding application in another office.

The common requirements for the IP5 and the Global PPH programs are:  (1) at least one claim must be considered allowable by a first office during substantive examination (novelty and inventive step must have been considered), (2) all claims presented to the subsequent office for examination must sufficiently correspond with one or more of those found allowable by the office initially examining the application, and (3) substantive examination must have been requested at the subsequent office, or may be requested at the same time as the PPH request, but substantive examination must not have already commenced.  The following documentation is required for filing a Global PPH request:  a completed GPPH request form; a copy of the work product(s) which are relevant to the allowability of the claims of the corresponding first examined application, if not available via Dossier Access Systems; and a copy of the claims found to be allowable by the first examining office, if not available via Dossier Access Systems.  Notably, participating patent offices are required to use Dossier Access Systems and machine translations to access documentation, which should reduce the burden on the applicant.  Participating offices may require additional items such as cited references, searches, translations, and a claim correspondence table to the allowable claim(s).

For each expedited examination program discussed above, if the USTPO it finds that the applicant has made the relevant showing, it grants the petition for expedited or “special” status.  If the petition is defective, then USPTO will deny it, and the application is placed (or remains) on the regular examination track.  The USPTO may also dismiss AE and PPH petitions with curable defects, in which case the applicant has one month to cure the defect.

If not cured within the one-month response period, the application will be placed on the regular examination track.  The only way to appeal is to petition the director of the USPTO within two months of the denial.

Perhaps because each program requires a different showing, the petition grant rate for each program is different.  For example, former Director David Kappos stated that about 96 percent of Track 1 petitions have been granted through 2012.  In contrast, as of April 2012, the USPTO had granted only 61.2 percent of petitions for Accelerated Examination; it had denied or dismissed about 31.3 percent of petitions for Accelerated Examination (the remaining petitions were either pending or were withdrawn).  For PPH cases, only 9 percent of petitions were dismissed, with an ultimate denial rate of only 2 percent.

And “petitions to make special” based on age are granted automatically when filed properly via EFS-Web.  Thus, the risk of failing to expedite examination is highest with AE and very low for all of the other programs.

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About the Author

Carey C. Jordan is a partner in the law firm of McDermott Will & Emery LLP and is based in the Firm’s Houston office. Carey focuses her practice on patent prosecution, transactions and strategic portfolio management in the chemical, materials science, energy and alternative energy sectors. She can be reached via e-mail at [email protected].