Strategic Considerations Before Filing and During Early Stages of Patent Prosecution

By Carey Jordan
April 30, 2014

What follows is a continuation of the article titled Strategic Used of USPTO Iniatives and Procedures: How to Improve Prosecution Expediency.

Initiatives for Consideration When Filing an Application

First-Action Interview Pilot Program

The program allows an applicant to have an interview with the examiner before she/he issues a FOAM.  Notably, the First-Action Interview Pilot Program does not speed up the time that a case is picked up for examination, but it does facilitate a first action allowance because the applicant and the examiner can get on the same page quickly.  The First Action Interview pilot program has had 3,533 participants as of November 2013, a first action allowance rate of 29.4% percent, compared with an 11.5% for all original applications.

To participate, an application cannot have more than 20 claims, including a maximum of 3 independent claims.  No fee is associated with participating in this program.

To participate in the program, an applicant must file a request electronically.   Following this request, the examiner will conduct a prior art search and provide applicant a Pre-Interview Communication (similar to a search report) and an identification of any potential rejections and/or objections on the claims.   In response, within the longer of 1 month or 30 days, the applicant must either:  file a request to not have a first action interview with the examiner, or schedule the interview and file a proposed amendment or remarks (arguments).  If an interview is scheduled, the applicant must be prepared to discuss issues related to the patentability of the claims with the examiner. If the applicant and the examiner reach agreement on the scope of the claims, the examiner will issue a Notice of Allowability and Notice of Allowance and Fees Due.   If they cannot reach an agreement, then the examiner will issue a First Action Interview Office Action (before mailing), which will set forth any requirements, objections, and rejections.  The applicant has 30 days or 1 month to respond to this action.

The potential benefits of the First-Action Interview Program according to the USPTO, include:

  1. effectively advancing prosecution of an application before issuance of an Office action;
  2. enhanced interaction between the applicant and the examiner before issuance of an Office action;
  3. resolving patentability issues one-on-one with the examiner at the beginning of the prosecution process, rather than after a first Office action; and
  4. expedited allowance of an application, relative to standard examination, due to the program’s enhanced communication and shorter time periods for response.

Ombudsman Program

Another initiative identified as useful during prosecution is the Ombudsman Program.  This program is best used when there is a breakdown in the normal application communication process, including before and after prosecution.  The Ombudsman Program can assist in getting the application back on track, however, it is not intended to circumvent normal communication between applicants or their representatives and examiners or supervisory patent examiners (SPEs).

To use the Patents Ombudsman Program, an applicant must submit the electronic form associated with the program on the USPTO website on the Ombudsman page.  For inquiries related to the examination process, select one of the Technology Centers or the Central Reexamination Unit from the drop-down menu at the top of the form.  The USPTO touts many successful reengagements after an Ombudsman has intervened in a patent application.

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General Interview Practice

The USPTO encourages examiners to take a proactive approach to examination by reaching out and engaging stakeholders in an effort to resolve issues and shorten prosecution.   The USPTO emphasizes interviews as a tool that can create an open dialog with Applicants and enhance the quality and efficiency of examination.

The policies for determining whether it is appropriate to hold an interview are included in MPEP 713.  Interviews should to be held during normal business hours (i.e., Monday-Friday 8:30 AM to 5:00 PM) or at a mutually agreed upon time.  All in-person interviews must be held on a USPTO campus.  An applicant’s request for an interview, if appropriate, is normally granted.  Video conferencing is available with WebEx to Applicant’s or their representative’s location, but must be hosted at the USPTO.  Examiners will establish the WebEx session for an interview and send invitations to all other parties.  Before a video  conference interview can be scheduled, written authorization from the applicant for communications via the internet is required. [MPEP 502.03]  Examiners may request an agenda to facilitate a focused discussion.  The absence of an agenda alone usually is not a proper basis to deny a request.

 

PATENT OFFICE INITIATIVES FOR CONSIDERATION AFTER PROSECUTION HAS CLOSED AND AFTER PAYMENT OF THE ISSUE FEE

After Final Consideration Pilot Program

The After Final Consideration Pilot (“AFCP 2.0”) allows examiners to get credit for additional work they perform in “after final” situations to move applications toward allowance.  This program is specifically designed to prevent the RCE round-about that often happens once a final rejection issues.

If an applicant receives a Final Rejection and would like another bite at the apple without paying for an RCE and a whole new examination, the applicant can file a request for consideration under the AFCP 2.0, along with an amendment to at least one independent claim that narrows the scope of that claim.   Such amendments are limited to those that would require only limited further searching and/or consideration by the examiner.

If the examiner determines the amendment cannot be fully addressed in the additional time granted under the AFCP 2.0, the examiner is instructed to issue an Advisory Action indicating the amendment was not entered.

Notably there is no fee for filing the AFCP 2.0 request, and there is not limit as to the number of claims in the application.

 

Pre-Appeal Pilot Program Status

In July of 2005, the USPTO established a pilot pre-appeal brief conference program to request a review of the legal and factual bases of the rejections prior to the filing of an appeal brief.  In February of 2006, the USPTO extended the pre-appeal brief conference pilot program until further notice.  See Extension of the Pilot Pre-Appeal Brief Conference Program, 1303 OG 21 (February 7, 2006).   The USPTO continues to review the results of the program to determine the overall effectiveness of the program as well as the formal requirements of the program.

The purpose of the program is to spare applicant the added time and expense of preparing an appeal brief if a review panel determines an application is not in condition for appeal.  To be eligible for participation in the Pre-Appeal Program, the claims in the subject application must have been twice rejected to be timely.  Accordingly, if the claims have not been twice rejected, the notice of appeal would be premature and the Pre-Appeal Brief Conference Request would be dismissed.

The requirements of a compliant Pre-Appeal Brief Conference Request are:

  1. File the request and accompanying arguments in a separate paper titled “Pre-Appeal Brief Request for Review” (Form PTO/SB/33 or equivalent).
  2. Provide in five pages or less, concise, succinct and focused arguments for which the review is being requested.
  3. File the request with the notice of appeal.
  4. File the request without an amendment on same date
  5. Address the notice of appeal and the request to one of the following: Mail Stop AF, Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450.  It can also be filed electronically.

Notably, an applicant cannot include amendments in the request.  See Pre-Appeal Brief Conference Pilot Program, 1296 Off. Gaz. Pat. Office 67 (July 12, 2005).  In order to keep the issue(s) narrowly focused, the Office will dismiss any Pre-Appeal Brief Conference Request that is accompanied by an amendment under 37 CFR 1.116.

The request should specify:  clear errors in the examiner’s rejections; or the examiner’s omissions of one or more essential elements needed for a prima facie rejection.  For example, an applicant faced with an obviousness rejection should concisely point out (i.e., in no more than five pages) that a limitation is not met by a reference. Applicant can refer to arguments already of record rather than reasserting such arguments in the request.  For example, applicant may point to a prior submission by paper number and/or date of submission and the relevant portions thereof (e.g., see response filed xx/xx/xx at pages 4 to 6).

 

Quick Path IDS Program

To reduce patent pendency and the number of RCEs that are filed, the USPTO introduced  the Quick Path Information Disclosure Statement (QPIDS) program to allow the submission and consideration of an information disclosure statement submitted after payment of the issue fee.

For consideration under QPIDS, the applicant must file an IDS with a certification under 37 C.F.R. § 1.97(e), a petition to withdraw from issue, and an RCE.  Upon consideration of the IDS, if the examiner determines no cited item of information necessitates reopening prosecution, the USPTO will mail a corrected notice of allowability, the patent will issue and the RCE will not be entered.  However, if the examiner determines that prosecution needs to be reopened, the petition to withdraw from issue and RCE will entered and the applicant will be charged the pertinent fees.  The fees associated with the QPIDS program are:  petition fee is $130 for large entity + the RCE fee of $930.  These are reduced for small and microentitites.

 

NEW USPTO PROCEDURES UNDER THE AIA RELATING TO PATENT PROSECUTION

Strategic Submission of Prior Art – Preissuance Submissions

Any member of the public may file a third-party submission.  The only limitation is that the filer cannot have a duty of disclosure for the application in question.  A preissuance submission may be made in any non-provisional application, including those in reexamination or reissue proceedings.  Any preissuance submission must be submitted before the earlier of the date a notice of allowance is given or mailed in the application; or the later of six months after the date on which the application is first published, or the date of the first rejection of any claim by the examiner during the examination of the application.

The requirements of all Preissuance Submissions are:  Form PTO/SB/429 (or equivalent document list), identifying the publications, or portions of publications, being submitted must be filed out.  The filer must include a concise description of the asserted relevance of each item but no argument.  A legible copy of each item identified in the document list must be included, except for any cited patents.  If the references cited are not in English, then translations should be included.  Additionally, the filer must make the statement that:

the party is not an individual who has a duty to disclose information with respect to the application under § 1.56; and the submission complies with the requirements of 35 U.S.C. § 122(e) and § 1.290.  The necessary fee must be included as well, which is $180/10 items or statement for fee exemption.

The concise description of each reference must comply with USPTO requirements to be accepted.  If the description is not compliant, it will be discarded and not placed in the file of the subject application.  The main thing to remember is that arguments cannot be made in the concise description.

The real party in interest for the third party submission can remain anonymous by having someone else make the third-party submission for them, but the submitter (i.e., the patent practitioners making the filing) cannot remain anonymous. The third-party submissions must be signed by the submitter because of the required statements.   Thus, the identity of the submitter (i.e., the party signing the submission) will be known to the applicant.

Generally, preissuance submissions have many advantages.  First, they are an inexpensive way to participate in or affect the claims that may result from a third party’s patent application.  Second, they provide a means for a third party to actively participate in competitor’s prosecution to a degree not previously allowed by the USPTO, which makes it possible to limit the patent scope of a competitor’s pending patent application by introducing prior art.  Third, the filer or real party in interest can receive an early determination of risk, a lower burden of proof than if presented at trial, and even possible avoidance of patent litigation all together.

Notably compliant pre-issuance submissions will be listed on the face of the patent, if the patent later issues.  Any such submissions may be potentially helpful in claim construction in litigation. Another key fact is that no estoppel created for the submitter.

There are potential downsides to be aware of as well.  First, a broad patent might still issue over the cited art that is harder to attack in later litigation.  Second, the applicant may prosecute the patent application more vigorously with the awareness that a competitor may be interested.  For example, the applicant may amend the scope of claims to get an allowance and file related cases to develop a larger family on the technology.  Third, once submitted, the third party cannot continue to participate, for example, by making arguments to the examiner about the art.  The next opportunity to tackle the issue would be during a post-grant challenge, during which time attempting to invalidate the patent based on the same art used in the prosecution still may be difficult.

Supplemental Examination to Cure

Supplemental examination is an excellent new tool provided under the AIA to allow patent owners to shore up patents.  It may be especially useful before instigating infringement allegations against another party or before a merger/acquisition of the business owning the patents.

The supplemental examination procedure allows a patent owner to have the USPTO consider, reconsider, or correct information that the patent owner believes is relevant to the patent.  Supplemental examination is not limited to patents or printed publications – any ground of patentability may be reviewed.  Additionally, supplemental examination may be used to cure potential inequitable conduct by allowing the patent owner to submit art that was not submitted in the original prosecution, correct any necessary statements, or the like.  A request for supplemental examination may be filed at any time during the enforceability of a patent.

Notably, a court or agency (usually, some exceptions for FDA and ITC issues) cannot hold a patent unenforceable based on conduct relating to information considered by the USPTO during a supplemental examination proceeding.

A request for supplemental examination will be considered by the examiner, and a new examination will be ordered where the request raises a substantial new question (“SNQ”) of patentability.  If a SNQ is raised by the request, the examiner will order an ex parte reexamination on the application.  Unlike a regular ex parte reexamination proceeding, however, the patent owner does not have a right to file a statement about any of the SNQs of patentability raised by the request, and the proceeding is not limited to patents and printed publications. 35 U.S.C. § 257(b).  If the request does not raise a SNQ, a supplemental examination certificate is issued by the USPTO.  The USPTO will determine whether a request raises an SNQ of patentability within three months of the filing date of the request.

A supplemental examination request may include up to 12 “Items of Information.”   Items of information are not limited to printed publications and patents, the patent owner can submit wider range of issues for consideration, like 35 U.S.C. § 101 and 35 U.S.C. § 112.

Notably, a patent owner may submit more than one request in an application.  A patent owner may submit a declaration or affidavit as an item of information. In contrast to ex parte reexamination, items of information are not limited to patents and printed publications. 35 U.S.C. § 257(b).   Written discussions of issues raised by the patent laws contained in a request can properly constitute items of information. The request must identify each claim of the patent for which supplemental examination is requested and provide a separate, detailed explanation applying each item of information to each claim.

The request can argue patentability.

The fees for supplemental examination are $16,500 for a large entity ($8,250 for small entity or $4,125 for micro entity).  But, if there is no SNQ is found, the USPTO will refund 12,100 for a large entity ($6,050 for small entity or $3,025 for micro entity), which corresponds to the ex parte reexamination portion of the fee.

 

CONCLUSION

Under the AIA and through its own initiatives, the USPTO has developed many programs that facilitate the prosecution of applications through the Office.  Applicants should consider the usefulness of these programs in any on-going and newly filed U.S. patent applications.

 

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 ccjordan@mwe.com.

The Author

Carey Jordan

Carey Jordan

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

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