37 Offices in 18 Countries

Faster Patents –Strategies for ExpeditingIssuance of UnitedStates Patents

Django AndrewsJuly 25, 2012

37 Offices in 18 Countries

Overview

3

Overview

1. Case for expedited examination

a. USPTO Statistics

b. Examination overview

2. Available programs for expediting examination

a. Special application programs

i. Age/Health of Inventor

ii. Special Technology

b. Additional documentation or fee programs

i. Accelerated Examination

ii. Track 1 Examination

c. Prior examination programs

i. Patent Prosecution Highway Programs

3. Conclusions

37 Offices in 18 Countries

Introduction

The case for expedited examination

5

Motivation for Faster Patent Rights

• Known competitor infringing activity

• Product launch

• Anticipated litigation

• Increase valuation

Investment

Merger / Sale

• Participate in standard setting

6

USPTO Average Pendency Statistics

• Original application, 33.6 mo.

Varies by technology area

– Semiconductors, 30 mo.

– Computer Architecture / Communications, 40 mo.

• Original application with RCE, 62.3 mo.

• Continuation application, 76.5 mo.

• Divisional application, 79 mo.

• Appeal, > 85.5 mo.

7

Examination Procedure

Regular Docket

• 14 mo. to first Office Action

• 4 mo. to issue subsequent office actions

• 3 years to issue

• No time frame for “final” disposition

Final Office Action

Allowance

• No guarantee Office will meet these deadlines (often do not)

• Results in the pendency above

Special Docket

• Applications examined out of turn

• Can result in significantly expedited prosecution

37 Offices in 18 Countries

Available Mechanisms

Overview

9

Categories

SpecialApplications

AdditionalDocumentation

or Fees

PriorExamination

• Inventor Age

• Inventor Health

• Technology*

• Track 1Examination

• AcceleratedExamination

• Foreign PatentOffice

• InternationalPhase*None currently

37 Offices in 18 Countries

Special Applications

Overview

11

Special Applications

Age or Health of Inventor

• At least one inventor over 65 or health which indicates would notbe able to participate in entirety of prosecution

• Requires evidence of age or statement from physician

• No fees

• Can redact age evidence and medical statement

Technology-Based

• All existing programs now require submission under AcceleratedExamination Procedures

environmental quality, energy, or counter-terrorism

• Past pilot programs have not been renewed

Green technology program ended in FY 2010

• Possibility of more pilot programs in the future

Strategic Considerations:

Health information of inventor likely to be very sensitive

Accelerated Examination requirements are onerous

37 Offices in 18 Countries

Additional Documentation or FeeProgramsOverview

13

Additional Documentation or Fee Programs

Accelerated Examination

Significant petition documentation

Track 1 Examination

Pay a fee

37 Offices in 18 Countries

Accelerated Examination

Additional Documentation

15

Accelerated Examination

Requirements

• Original application (no PCT)

• File complete application electronically

Specification, claims, drawings, oath/declaration, all fees

• No more than 3 independent and 20 total claims

• Single invention (cannot argue against restriction requirement)

• Petition form and fee ($120.00)

• Examiner-requested interview

• Pre-examination search

Essentially same search as USPTO would conduct

Submit search documentation

• Accelerated Examination Support Document

Provide reasoning why claims are:

– Patent-eligible subject matter (101)

– Supported by specification and drawings (112)

– Novel and non-obvious over all search references

16

Accelerated Examination (Cont.)

Procedure

• Application goes to front of Examiner’s queue

• First action contains all issues relating to patentability

• Must reply to first action within one month

• Next action will be Final or Notice of Allowance

Strategic Considerations:

Significant attorney cost

Additional admissions and characterizations on the record

82% have been granted as of April 2012

37 Offices in 18 Countries

Prioritized (Track 1) Examination

Additional Fee

18

Prioritized (Track 1) Examination

Requirements

• Original, continuing, or RCE application

• Timing

Original and continuing applications: upon filing

RCE application: before first action

• File complete application electronically

Specification, claims, drawings, oath/declaration, all fees

• No more than 4 independent and 30 total claims

• No multiply dependent claims

• Additional examination fee ($4,800), processing fee ($130),and early publication fee ($300)

• Maximum 2 prioritized examination requests per application

1 on filing and 1 with RCE

• Limit to 10,000 petitions for prioritized examination per fiscalyear

3673 filed through June 18, 2012

19

Prioritized (Track 1) Examination (Cont.)

Examination

• Special docket throughout examination

• Provide “final” disposition 12 months after special status granted

on average

• Final disposition includes:

Final Office Action

Notice of Allowance

Notice of Appeal

RCE filing

Abandonment

• Normal response periods

• No extensions of time

Strategic Considerations:

Cost

85% grant rate as of June 2012

37 Offices in 18 Countries

Prior Examination by PCT or ForeignPatent Office

Patent Prosecution Highway Overview

21

Patent Prosecution Highway

Overview

• Leverage successful prosecution in International Phase or byforeign patent office to expedite prosecution in U.S.

• Series of agreements have created many permanent and pilotprograms

Permanent Bilateral Programs

Bilateral Pilot Programs

Bilateral PCT Pilot Programs

PPH 2.0 Program

• U.S. PPH applications have an 87% grant rate compared to49% grant rate for non-PPH applications

22

Patent Prosecution Highway (Cont.)

General Program Requirements

• Claims allowed in foreign patent office (or PCT) are substantiallythe same as claims pending in U.S.

• U.S. and foreign applications must share a priority document

• U.S. examination has not begun

• Submit claims correspondence table

• File request

• No Fees due

• Information Disclosure Statement and References

Unless previously submitted

• Electronic submission

• Provisional applications, plant applications, design applications,reissue applications and applications subject to a secrecy orderare not eligible

23

Patent Prosecution Highway (Cont.)

Additional Program Requirements

Requirement PPH 1.0 PCT-PPH PPH 2.0

Copy ofAllowableClaim(s)

Yes Yes No

Copy of OfficeActions

Yes Yes Yes

Translation* Yes Yes No

TranslationStatement

Yes Yes No

*Can be machine translation

24

Patent Prosecution Highway (Cont.)

PPH Program Examination Procedure

• Application granted special status

Lower priority than Accelerated Examination and Track 1 Examination

• U.S. claims must correspond to allowed foreign or PCT claims atall times

Any claim amendments during prosecution require correspondence

table and statement

• All subsequent foreign Office Actions (with translation) must besubmitted to USPTO

25

Patent Prosecution Highway (Cont.)

PPH Programs

Permanent Bilateral Programs

– Canada

– Hungary

– Israel

– Japan

– Korea

Bilateral Pilot Programs

– Austria (on-going)

– China (set to expire November 30, 2012)

– Denmark (on-going)

– European Patent Office (set to expire January 29, 2013)

– Finland (set to expire January 29, 2013)

– Germany (set to expire April 26, 2013)

– Iceland (set to expire November 30, 2012)

– Mexico (set to expire August 31, 2012)

– Norway (set to expire October 31, 2012)

– Singapore (on-going)

– Taiwan (set to expire August 31, 2012)

26

Patent Prosecution Highway (Cont.)

PPH Programs (Cont.)

PPH-PCT Programs

– Australia (on-going pilot)

– Austria (on-going pilot)

– China (set to expire November 30, 2012)

– European Patent Office (set to expire January 28, 2014)

– Finland (set to expire January 23, 2013)

– Japan (set to expire January 28, 2014)

– Korea (permanent)

– Russia (on-going pilot)

– Spain (set to expire September 30, 2013)

– Sweden (set to expire May 31, 2013)

PPH 2.0 Pilot Program

– Multilateral

– Australia, Canada, European Patent Office, Finland, Japan, Russia, Spain,U.K.

– Runs until January 29, 2013

27

Patent Prosecution Highway (Cont.)

Example 1: Corresponding Korean* Application Allowed

File PCTApplication

File KoreanNational stage

at 15 mo.

File USNational

Stage at 30mo.

RequestExamination

at 18 mo.

AllowedClaims at 40

mo.

PPH Requestat 41mo.

*Average pendency of Korean patent applications is 24.6 mo.

28

Patent Prosecution Highway (Cont.)

Example 2: Corresponding PCT Application Receives FavorableWritten Opinion from EPO Acting as ISA

File PCTApplication

FavorableWritten Opinion*from EPO as ISA

at 16mo.

File US NationalStage at 17 mo.

with PPH Request

*Could also be favorable IPRP

37 Offices in 18 Countries

Conclusions

30

Conclusions

1. Special Applications

a. Take advantage of age of inventor program

i. Consider health of inventor program

b. Watch/lobby for technology-based programs

2. Accelerated Examination

a. Use with caution

3. Track 1 Examination

a. Consider for high-priority inventions

4. Patent Prosecution Highway Programs

a. Require planning for best strategic use

b. Consider at portfolio level

c. Can accelerate foreign prosecution as well

37 Offices in 18 Countries

Thank you.