MPEP § 708
Nonprovisional applications filed in the U.S. Patent and Trademark Office and accepted as complete applications are assigned for examination to the respective examining Technology Centers (TCs) having the classes of inventions to which the applications relate. Nonprovisional applications are ordinarily taken up for examination by the examiner to whom they have been assigned in the order in which they have been filed except for those applications in which examination has been advanced pursuant to 37 CFR 1.102. See 37 CFR 1.496 and MPEP § 1893.03 for the order of examination of international applications in the national stage, including taking up out of order certain national stage applications which have been indicated as satisfying the criteria of PCT Article 33(1)-(4) as to novelty, inventive step and industrial applicability.
Applications which have been acted upon by the examiner, and which have been placed by the applicant in condition for further action by the examiner (amended applications) shall be taken up for action in such order as shall be determined by the Director of the USPTO.
Each examiner will give priority to those applications in their docket which have been identified as having the oldest claimed domestic benefit date. This basic policy applies to all applications; rare circumstances may justify TC Directors granting individual exceptions.
The actual filing date of a continuation-in-part application is used for docketing purposes. However, the examiner may act on a continuation-in-part application by using the oldest date for which domestic benefit is claimed, if desired.
If at any time an examiner determines that a domestic benefit claim to an earlier filing date of any application differs from what the records show, the technical support staff should be informed, who should promptly amend the records to show the correct status, with the date of correction.
The order of examination for each examiner is to give priority to reissue applications and to reexamination proceedings, with top priority to reissue applications in which litigation has been stayed (MPEP § 1442.03), to ex parte reexamination proceedings involved in litigation (MPEP § 2261), and to inter partes reexamination proceedings involved in litigation (MPEP § 2661), then to those special cases having a fixed 30-day due date, such as examiner’s answers and decisions on motions. Most other cases in the "special" category (for example, interference cases, cases made special by petition, cases ready for final conclusion, etc.) will continue in this category, with the earliest claimed domestic benefit date among them normally controlling priority.
All amendments before final rejection should be responded to within two months of receipt.
Certain procedures by the examiners take precedence over actions even on special cases.
For example, all papers typed and ready for signature should be completed and mailed.
All allowed cases returned to the examiner marked as a "Printer Rush" must be processed and returned within the period indicated.
Reissue applications, particularly those involved in stayed litigation, should be given priority.
Applications in which practice requires that the examiner act within a set period, such as 2 months after appellants brief to furnish the examiner’s answers (MPEP § 1208), necessarily take priority over special cases without specific time limits.
If an examiner is satisfied that an application is in condition for allowance or needs to be finally rejected, the examiner should give action forthwith instead of making the application await its turn.
Subject alone to diligent prosecution by the applicant, an application for patent that has once been made special and advanced out of turn for examination by reason of a ruling made in that particular case (by the Director of the USPTO or a Commissioner) will continue to be special throughout its entire course of prosecution in the U.S. Patent and Trademark Office, including appeal, if any, to the Patent Trial and Appeal Board.
The following is a list of special cases (those which are advanced out of turn for examination):
See also MPEP §§ 714.13, 1207, and 1309.
New applications ordinarily are taken up for examination in the order of their filing dates in view of any domestic benefit claimed. Certain exceptions are made by way of petitions to make special, which may be granted under the conditions set forth below. Any statement in support of a petition to make special must be based on a good faith belief that the invention in fact qualifies for special status. See 37 CFR 1.56 and 11.18. Advancement of examination under 37 CFR 1.102 may be sought via a petition to make special under 37 CFR 1.102(c) - (d), or via a request for prioritized examination under 37 CFR 1.102(e).
Any petition to make special, other than those based on applicant’s health or age or participation in the Patent Prosecution Highway (PPH) pilot program, filed on or after August 25, 2006 must meet the requirements for the revised accelerated examination program set forth in MPEP § 708.02(a). For prioritized examination under 37 CFR 1.102(e), see MPEP § 708.02(b). See subsections I and II below for the requirements for filing a petition to make special based on applicant’s health or age.
See the version of MPEP § 708.02 in force in August 2010 (Eighth Edition, Revision 9) for guidelines and the requirements for a petition to make special filed in an application before August 25, 2006. A petition to make special filed on or after August 25, 2006 will only be granted if it is based upon applicant’s health or age, is under the PPH pilot program (see MPEP § 708.02(c)), or complies with the requirements set forth in MPEP § 708.02(a). For a request for prioritized examination under 37 CFR 1.102(e) filed on or after September 26, 2011, see MPEP § 708.02(b).
An application may be made special upon a petition by applicant accompanied by any evidence showing that the state of health of the inventor or joint inventor is such that they might not be available to assist in the prosecution of the application if it were to run its normal course, such as a doctor’s certificate or other medical certificate. No fee is required for such a petition. See 37 CFR 1.102(c).
Personal/medical information submitted as evidence to support the petition will be available to the public if the application file and contents are available to the public pursuant to 37 CFR 1.11 or 1.14. If applicant does not wish to have this information become part of the application file record, the information must be submitted pursuant to MPEP § 724.02.
An application may be made special upon filing a petition including any evidence showing that the inventor or joint inventor is 65 years of age, or more, such as a statement by the inventor or joint inventor or a statement from a registered practitioner that they have evidence that the inventor or joint inventor is 65 years of age or older. No fee is required with such a petition. See 37 CFR 1.102(c).
The petition can be filed as a web-based ePetition. See the ePetition Resource Page (www.uspto.gov/Epetitions ).
Personal/medical information submitted as evidence to support the petition will be available to the public if the application file and contents are available to the public pursuant to 37 CFR 1.11 or 1.14. If applicant does not wish to have this information become part of the application file record, the information must be submitted pursuant to MPEP § 724.02.
The U.S. Patent and Trademark Office will accord "special" status to all patent applications for inventions which materially enhance the quality of the environment of mankind by contributing to the restoration or maintenance of the basic life-sustaining natural elements, i.e., air, water, and soil. Any petition to make special filed under this subsection must comply with the requirements set forth in MPEP § 708.02(a).
All applicants desiring to participate in this program should petition that their applications be accorded "special" status. The petition under 37 CFR 1.102 must state that special status is sought because the invention materially enhances the quality of the environment of mankind by contributing to the restoration or maintenance of the basic life-sustaining natural elements. No fee is required for such a petition. See 37 CFR 1.102(c). If it is not clear from the application's disclosure that the claimed invention materially enhances the quality of the environment by contributing to the restoration or maintenance of one of the basic life-sustaining natural elements, the petition must be accompanied by a statement under 37 CFR 1.102 by the applicant, assignee, or an attorney/agent registered to practice before the Office explaining how the materiality standard is met. The materiality standard does not permit an applicant to speculate as to how a hypothetical end-user might specially apply the invention in a manner that could materially enhance the quality of the environment. Nor does such standard permit an applicant to enjoy the benefit of advanced examination merely because some minor aspect of the claimed invention may enhance the quality of the environment.
The U.S. Patent and Trademark Office will, on petition, accord "special" status to all patent applications for inventions which materially contribute to (A) the discovery or development of energy resources, or (B) the more efficient utilization and conservation of energy resources. Examples of inventions in category (A) would be developments in fossil fuels (natural gas, coal, and petroleum), hydrogen fuel technologies, nuclear energy, solar energy, etc. Category (B) would include inventions relating to the reduction of energy consumption in combustion systems, industrial equipment, household appliances, etc. Any petition to make special filed under this subsection must comply with the requirements set forth in MPEP § 708.02(a).
All applicants desiring to participate in this program should petition that their applications be accorded "special" status. The petition under 37 CFR 1.102 must state that special status is sought because the invention materially contributes to category (A) or (B) set forth above. No fee is required for such a petition, 37 CFR 1.102(c). If the application disclosure is not clear on its face that the claimed invention materially contributes to category (A) or (B), the petition must be accompanied by a statement under 37 CFR 1.102 by the applicant, assignee, or an attorney/agent registered to practice before the Office explaining how the materiality standard is met. The materiality standard does not permit an applicant to speculate as to how a hypothetical end-user might specially apply the invention in a manner that could materially contribute to category (A) or (B). Nor does such standard permit an applicant to enjoy the benefit of advanced examination merely because some minor aspect of the claimed invention may be directed to category (A) or (B).
In view of the importance of developing technologies for countering terrorism and the desirability of prompt disclosure of advances made in these fields, the U.S. Patent and Trademark Office will accord "special" status to patent applications for inventions which materially contribute to countering terrorism. Any petition to make special filed under this subsection must comply with the requirements set forth in MPEP § 708.02(a).
International terrorism as defined in 18 U.S.C. 2331 includes "activities that - (A) involve violent acts or acts dangerous to human life that are a violation of the criminal laws of the United States or of any State, or that would be a criminal violation if committed within the jurisdiction of the United States or of any State; [and] (B) appear to be intended - (i) to intimidate or coerce a civilian population; (ii) to influence the policy of a government by intimidation or coercion; or (iii) to affect the conduct of a government by assassination or kidnapping..." The types of technology for countering terrorism could include, but are not limited to, systems for detecting/identifying explosives, aircraft sensors/security systems, and vehicular barricades/disabling systems.
All applicants desiring to participate in this program should petition that their applications be accorded special status. The petition under 37 CFR 1.102 must state that special status is sought because the invention materially contributes to countering terrorism. No fee is required for such a petition. See 37 CFR 1.102(c). If the application disclosure is not clear on its face that the claimed invention is materially directed to countering terrorism, the petition must be accompanied by a statement under 37 CFR 1.102 by the applicant, assignee, or an attorney/agent registered to practice before the Office explaining how the invention materiality contributes to countering terrorism. The materiality standard does not permit an applicant to speculate as to how a hypothetical end-user might specially apply the invention in a manner that could counter terrorism. Nor does such standard permit an applicant to enjoy the benefit of advanced examination merely because some minor aspect of the claimed invention may be directed to countering terrorism.
Applications which have been made special will be advanced out of turn for examination and will continue to be treated as special throughout the entire prosecution in the Office with the exception of applications having been granted prioritized examination which remain special until prioritized examination is terminated or until a final disposition of the application (see MPEP § 708.02(b), subsection II).
Each petition to make special or request to advance examination, regardless of the ground upon which the petition or request is based and the nature of the decision, is made of record in the application file, together with the decision thereon. The part of the Office that rules on a petition is responsible for properly entering that petition and the resulting decision in the file record. The petition, with any attached papers and supporting affidavits, will be provided as a single document in the application’s file wrapper. The decision will be provided as a separate document similarly entered. To ensure entries in the "Contents" in proper order, the technical support staff in the TC will make certain that all papers prior to a petition have been entered and/or listed in the application file before forwarding it for consideration of the petition. Note MPEP § 1002.02(s). Currently petitions to make special based on applicant’s health or age, participation in a PPH program, or under a pilot program, and requests for prioritized examination under 37 CFR 1.102(e) are decided by the Office of Petitions. All other petitions to make special are decided by the Quality Assurance Specialist of the TC to which the application is assigned.
All petitions to make special, except those based on applicant’s health or age or participation in the Patent Prosecution Highway (PPH) pilot program must meet the requirements set forth in subsection I below. See MPEP § 708.02 subsection I or II (where appropriate) for the requirements for filing a petition to make special based on applicant’s health or age. For prioritized examination under 37 CFR 1.102(e), see MPEP § 708.02(b). For participation in the Patent Prosecution Highway program, see MPEP § 708.02(c).
A new application may be granted accelerated examination status under the following conditions:
Applicant will be notified of the decision by the deciding official. If the application and/or petition does not meet all the requirements set forth in subsection I above for the application to be granted special status (including a determination that the search is deemed to be insufficient), the applicant will be notified of the defects and the application will remain in the status of a new application awaiting action in its regular turn. In those instances in which the petition or accelerated examination support document is defective in one or more requirements, applicant will be given a single opportunity to perfect the petition or accelerated examination support document within a time period of two months. Extensions of time under the provisions of 37 CFR 1.136(a) will be permitted, but filing a petition for an extension of time will result in the application being taken out of the accelerated examination program. This opportunity to perfect a petition does not apply to applications that are not in condition for examination on filing. See subsection VIII.C. below. If the document is satisfactorily corrected in a timely manner, the petition will then be granted, but the final disposition of the application may occur later than twelve months from the filing date of the application. Once a petition has been granted, prosecution will proceed according to the procedure set forth below.
Once the application is granted special status, the application will be docketed and taken up for action expeditiously (e.g., within two weeks of the granting of special status). If it is determined that all the claims presented are not directed to a single invention, the telephone restriction practice set forth in MPEP § 812.01 will be followed. Applicant must make an election without traverse during the telephonic interview. If applicant refuses to make an election without traverse or the examiner cannot reach the applicant after a reasonable effort, the examiner will treat the first claimed invention (the invention of claim 1) as constructively elected without traverse for examination. Continuing applications (e.g., a divisional application directed to the non-elected inventions) will not automatically be given special status based on papers filed with the petition in the parent application. Each continuing application must on its own meet all requirements for special status.
If the USPTO determines that a possible rejection or other issue must be addressed, the examiner will telephone the applicant to discuss the issue and any possible amendment or submission to resolve such issue. The USPTO will not issue an Office action (other than a notice of allowance) unless either: (A) an interview was conducted but did not result in the application being placed in condition for allowance; or (B) there is a determination that an interview is unlikely to result in the application being placed in condition for allowance. Furthermore, prior to the mailing of any Office action rejecting the claims, the USPTO will conduct a conference to review the rejections set forth in the Office action.
If an Office action other than a notice of allowance is mailed, the Office action will set a shortened statutory period of two (2) months. Extensions of this shortened statutory period under 37 CFR 1.136(a) will be permitted. However, filing a petition for extension of time will result in the application being taken out of the accelerated examination program. Failure to timely file a reply will result in abandonment of the application. See subsections V and VI for more information on post-allowance and after-final procedures.
A reply to an Office action must be limited to the rejections, objections, and requirements made. Any amendment that attempts to: (A) add claims which would result in more than three independent claims or more than twenty total claims pending in the application; (B) present claims not encompassed by the preexamination search (see subsection I, item (H) above) or an updated accelerated examination support document (see next paragraph); or (C) present claims that are directed to a nonelected invention or an invention other than previously claimed in the application, will be treated as not fully responsive and will not be entered. See subsection VIII.D. below for more information.
For any amendment to the claims (including any new claim) that is not encompassed by the accelerated examination support document in subsection I, item (I) above, applicant is required to provide an updated accelerated examination support document that encompasses the amended or new claims at the time of filing the amendment. Failure to provide such updated accelerated examination support document at the time of filing the amendment will cause the amendment to be treated as not fully responsive and to not be entered. See subsection VIII.D. below for more information. Any IDS filed with an updated accelerated examination support document must also comply with the requirements of 37 CFR 1.97 and 1.98.
Any reply or other papers must be filed electronically via the USPTO patent electronic filing system so that the papers will be expeditiously processed and considered. If the papers are not filed electronically via the USPTO patent electronic filing system, or the reply is not fully responsive, the final disposition of the application may occur later than twelve months from the filing of the application.
The mailing of a notice of allowance is the final disposition for purposes of the twelve-month goal for the accelerated examination program. In response to a notice of allowance, applicant must pay the issue fee within three months from the date of mailing of the Notice of Allowance and Fee(s) Due (form PTOL-85) to avoid abandonment of the application. In order for the application to be expeditiously issued as a patent, the applicant must also: (A) pay the issue fee (and any outstanding fees due) within one month from the mailing date of the form PTOL-85; and (B) not file any post-allowance papers that are not required by the USPTO (e.g., an amendment under 37 CFR 1.312 that was not requested by the USPTO).
The mailing of a final Office action or the filing of a notice of appeal, whichever is earlier, is the final disposition for purposes of the twelve-month goal for the accelerated examination program. Prior to the mailing of a final Office action, the USPTO will conduct a conference to review the rejections set forth in the final Office action (i.e., the type of conference conducted in an application on appeal when the applicant requests a pre-appeal brief conference). In order for the application to be expeditiously forwarded to the Patent Trial and Appeal Board (PTAB) for a decision, applicant must: (A) promptly file the notice of appeal, appeal brief, and appeal fees; and (B) not request a pre-appeal brief conference. A pre-appeal brief conference would not be of value in an application under a final Office action because the examiner will have already conducted such a conference prior to mailing the final Office action. During the appeal process, the application will be treated in accordance with the normal appeal procedures (see MPEP Chapter 1200). The USPTO will continue to treat the application as special under the accelerated examination program after the decision by the PTAB.
Any after-final amendment, affidavit, or other evidence filed under 37 CFR 1.116 or 41.33 must also meet the requirements set forth in subsection IV above. If applicant files a request for continued examination (RCE) under 37 CFR 1.114 with a submission and fee, the submission must meet the reply requirements under 37 CFR 1.111 (see 37 CFR 1.114(c) ) and the requirements set forth in subsection IV above. The filing of the RCE is a final disposition for purposes of the twelve-month goal for the accelerated examination program. The application will retain its special status and remain in the accelerated examination program. Thus, the examiner will continue to examine the application in accordance with the procedures set forth in subsection III above and any subsequent replies filed by applicant must meet the requirements of subsection IV above. The goal of the accelerated examination program will then be to reach a final disposition of the application within twelve months from the filing of the RCE.
If an application becomes involved in proceedings outside the normal examination process (e.g., a secrecy order, national security review, interference, or petitions under 37 CFR 1.181, 1.182, or 1.183 ), the USPTO will treat the application as special under the accelerated examination program before and after such proceedings. During those proceedings, however, the application will not be accelerated. For example, during an interference proceeding, the application will be treated in accordance with the normal interference procedures and will not be treated under the accelerated examination program. Once any one of these proceedings is completed, the USPTO will process the application expeditiously under the accelerated examination program until it reaches final disposition, but that may occur later than twelve months from the filing of the application.
Any non-reissue utility or design application filed under 35 U.S.C. 111(a) on or after August 25, 2006 is eligible for the accelerated examination program. The following types of filings are not eligible for the accelerated examination program:
Rather than participating in the accelerated examination program, applicants for a design patent may participate in the expedited examination program by filing a request in compliance with the guidelines set forth in MPEP § 1504.30. See 37 CFR 1.155.
Applicant should use form PTO/SB/28 for filing a petition to make special, other than those based on applicant’s health or age or the PPH pilot program. The form is available on the USPTO patent electronic filing system and on the USPTO’s website at www.uspto.gov/PatentForms.
The application must be in condition for examination at the time of filing. This means the application must include the following:
Furthermore, if the application is a design application, the application must also comply with the requirements set forth in 37 CFR 1.151, 1.152, 1.153, and 1.154.
The petition to make special will be dismissed if the application omits an item or includes a paper that causes the Office of Patent Application Processing (OPAP) to mail a notice during the formality review (e.g., a notice of incomplete application, notice to file missing parts, notice to file corrected application papers, notice of omitted items, or information notice to applicant). The opportunity to perfect a petition (subsection II above) does not apply to applications that are not in condition for examination on filing.
If a reply to a non-final Office action is not fully responsive, but is a bona fide attempt to advance the application to final action, the examiner may provide two months for applicant to supply the omission or a fully responsive reply. Extensions of this time period under 37 CFR 1.136(a) will be permitted. However, filing a petition for extension of time will result in the application being taken out of the accelerated examination program. Failure to timely file the omission or a fully responsive reply will result in abandonment of the application. If the reply is not a bona fide attempt or if it is a reply to a final Office action, no additional time period will be given. The time period set forth in the previous Office action will continue to run.
There is no provision for "withdrawal" from special status under the accelerated examination program. However, filing a petition for extension of time will result in the application being taken out of the accelerated examination program. An applicant may abandon the application that has been granted special status under the accelerated examination program in favor of a continuing application, and the continuing application will not be given special status under the accelerated examination program unless the continuing application is filed with a petition to make special under the accelerated examination program. The filing of an RCE under 37 CFR 1.114, however, will not result in an application being withdrawn from special status under the accelerated examination program.
The objective of the accelerated examination program is to complete the examination of an application within twelve months from the filing date of the application. The twelve-month goal is successfully achieved when one of the following final dispositions occurs:
The final disposition of an application, however, may occur later than the twelve-month time frame in certain situations (e.g., an IDS citing new prior art after the mailing of a first Office action). See subsection VII above for more information on other events that may cause examination to extend beyond this twelve-month time frame. In any event, however, this twelve-month time frame is simply a goal. Any failure to meet the twelve-month goal or other issues relating to this twelve-month goal are neither petitionable nor appealable matters.
The following form paragraphs may be used for the accelerated examination program:
This requirement is subject to the provisions of 37 CFR 1.134, 1.135 and 1.136 and has a shortened statutory period of TWO (2) MONTHS. This application has been granted special status under the accelerated examination program. Extensions of time period may be granted under 37 CFR 1.136(a). However, filing a petition for extension of time will result in the application being taken out of the accelerated examination program. In no case can any extension carry the date for reply to this letter beyond the maximum period of SIX MONTHS set by statute (35 U.S.C. 133 ).
The objective of the accelerated examination program is to complete the examination of an application within twelve months from the filing date of the application. Any reply must be filed electronically via the USPTO patent electronic filing system so that the papers will be expeditiously processed and considered. If the reply is not filed electronically via the USPTO patent electronic filing system, the final disposition of the application may occur later than twelve months from the filing of the application.
1. This form paragraph must be preceded by form paragraph 7.105, and should appear at the conclusion of any requirement for information mailed without any other Office action. If the requirement for information is mailed with an Office action, use form paragraph 7.125 instead.
2. This form paragraph may only be used in an application filed on or after August 25, 2006, that has been granted special status under the accelerated examination program or other provisions under 37 CFR 1.102(c)(2) or (d).
3. This form paragraph should not be used for an application that has been granted special status under 37 CFR 1.102(c)(1) on the basis of applicant’s health or age, or the Patent Prosecution Highway pilot program.
Receipt is acknowledged of a request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e) and a submission, filed on [1]. The submission, however, is not fully responsive to the prior Office action because [2]. Since the submission appears to be a bona fide attempt to provide a complete reply to the prior Office action, applicant is given a shortened statutory period of TWO (2) MONTHS from the mailing date of this letter, to submit a complete reply. This shortened statutory period for reply supersedes the time period set in the prior Office action. This application has been granted special status under the accelerated examination program. Extensions of this time period may be granted under 37 CFR 1.136(a). However, filing a petition for extension of time will result in the application being taken out of the accelerated examination program. In no case can any extension carry the date for reply to this letter beyond the maximum period of SIX MONTHS set by statute (35 U.S.C. 133 ).
The objective of the accelerated examination program is to complete the examination of an application within twelve months from the filing date of the application. To meet that objective, any reply must be filed electronically via the USPTO patent electronic filing system so that the papers will be expeditiously processed and considered. If the reply is not filed electronically via the USPTO patent electronic filing system, the final disposition of the application may occur later than twelve months from the filing of the application.
1. Use this form paragraph to acknowledge an RCE filed with the fee and a submission where the submission is not fully responsive to the prior Office action. This form paragraph may be used for any RCE filed with a submission which is not fully responsive, i.e., an RCE filed after final rejection, after allowance, after an Office action under Ex parte Quayle, 25 USPQ 74, 453 OG 213 (Comm’r Pat. 1935), or after appeal.
2. In bracket 2, identify the reasons why the examiner considers the submission not to be fully responsive.
3. To be eligible for continued examination under 37 CFR 1.114, the application must be a utility or plant application filed under 35 U.S.C. 111(a) on or after June 8, 1995, or an international application filed under 35 U.S.C. 363 on or after June 8, 1995 that complies with 35 U.S.C. 371. The RCE must be filed on or after May 29, 2000.
4. This form paragraph may only be used in an application filed on or after August 25, 2006, that has been granted special status under the accelerated examination program or on other grounds under 37 CFR 1.102(c)(2) or (d).
5. This form paragraph should not be used for an application that has been granted special status under 37 CFR 1.102(c)(1) on the basis of applicant’s health or age, or the Patent Prosecution Highway pilot program.
This application is in condition for allowance except for the following formal matters: [1].
Prosecution on the merits is closed in accordance with the practice under Ex parte Quayle, 25 USPQ 74, 453 OG 213 (Comm’r Pat. 1935).
Since this application has been granted special status under the accelerated examination program, a shortened statutory period for reply to this action is set to expire TWO (2) MONTHS from the mailing date of this letter. Extensions of this time period may be granted under 37 CFR 1.136(a). However, filing a petition for extension of time will result in the application being taken out of the accelerated examination program. In no case can any extension carry the date for reply to this letter beyond the maximum period of SIX MONTHS set by statute (35 U.S.C. 133 ).
The objective of the accelerated examination program is to complete the examination of an application within twelve months from the filing date of the application. To meet that objective, any reply must be filed electronically via the USPTO patent electronic filing system so that the papers will be expeditiously processed and considered. If the reply is not filed electronically via the USPTO patent electronic filing system, the final disposition of the application may occur later than twelve months from the filing of the application.
1. Explain the formal matters which must be corrected in bracket 1.
2. This form paragraph may only be used in an application filed on or after August 25, 2006, that has been granted special status under the accelerated examination program or on other grounds under 37 CFR 1.102(c)(2) or (d).
3. This form paragraph should not be used for an application that has been granted special status under 37 CFR 1.102(c)(1) on the basis of applicant’s health or age, or the Patent Prosecution Highway pilot program.
Applicant is reminded that for any amendments to the claims (including any new claim) that is not encompassed by the preexamination search and accelerated examination support documents previously filed, applicant is required to provide updated preexamination search and accelerated examination support documents that encompass the amended or new claims at the time of filing the amendment. Failure to provide such updated preexamination search and accelerated examination support documents at the time of filing the amendment will cause the amendment to be treated as not fully responsive and not to be entered. See MPEP § 708.02(a), subsection VIII.D. for more information.
If the reply is not fully responsive, the final disposition of the application may occur later than twelve months from the filing of the application.
1. This form paragraph and form paragraph 7.71.AE must be included in every Office action, other than a notice of allowance, in an application filed on or after August 25, 2006, that has been granted special status under the accelerated examination program or on other grounds under 37 CFR 1.102(c)(2) or (d).
2. This form paragraph should not be used for an application that has been granted special status under 37 CFR 1.102(c)(1) on the basis of applicant’s health or age, or the Patent Prosecution Highway Program (pilot and permanent).
Any reply or other papers must be filed electronically via the USPTO patent electronic filing system so that the papers will be expeditiously processed and considered. If the papers are not filed electronically via the USPTO patent electronic filing system, the final disposition of the application may occur later than twelve months from the filing of the application.
Any reply to this communication filed via the USPTO patent electronic filing system must include a document that is filed using the document description of "Accelerated Exam - Transmittal amendment/reply." Applicant is reminded to use proper indexing for documents to avoid any delay in processing of follow on papers. Currently document indexing is not automated in the USPTO patent electronic filing system and applicant must select a particular document description for each attached file. An incorrect document description for a particular file may potentially delay processing of the application. A complete listing of all document codes currently supported in the USPTO patent electronic filing system is available from the USPTO website www.uspto.gov/patents/ apply/patent-center.
Any payment of fees via the USPTO patent electronic filing system must be accompanied by selection of a proper fee code. An improper fee code may potentially delay processing of the application. Instructions on payment of fees via the USPTO patent electronic filing system are available at www.uspto.gov/learning-and-resources/fees-and-payment.
1. This form paragraph and form paragraph 7.70.AE must be included in every Office action, other than a notice of allowance, in an application filed on or after August 25, 2006, that has been granted special status under the accelerated examination program or on other grounds under 37 CFR 1.102(c)(2) or (d).
2. This form paragraph should not be used for an application that has been granted special status under 37 CFR 1.102(c)(1) on the basis of applicant’s health or age, or the Patent Prosecution Highway Program (pilot and permanent).
The reply filed on [1] is not fully responsive to the prior Office action because it fails to include a complete or accurate record of the substance of the [2] interview. [3] Since the above-mentioned reply appears to be bona fide, applicant is given a shortened statutory period of TWO (2) MONTHS from the mailing date of this notice within which to supply the omission or correction in order to avoid abandonment. This application has been granted special status under the accelerated examination program. Extensions of this time period may be granted under 37 CFR 1.136(a). However, filing a petition for extension of time will result in the application being taken out of the accelerated examination program. In no case can any extension carry the date for reply to this letter beyond the maximum period of SIX MONTHS set by statute (35 U.S.C. 133 ).
The objective of the accelerated examination program is to complete the examination of an application within twelve months from the filing date of the application. To meet that objective, any reply must be filed electronically via the USPTO patent electronic filing system so that the papers will be expeditiously processed and considered. If the reply is not filed electronically via the USPTO patent electronic filing system, the final disposition of the application may occur later than twelve months from the filing of the application.
1. In bracket 2, insert the date of the interview.
2. In bracket 3, explain the deficiencies.
3. This form paragraph may only be used in an application filed on or after August 25, 2006, that has been granted special status under the accelerated examination program or on other grounds under 37 CFR 1.102(c)(2) or (d).
4. This form paragraph should not be used for an application that has been granted special status under 37 CFR 1.102(c)(1) on the basis of applicant’s health or age, or the Patent Prosecution Highway pilot program.
The proposed reply filed on [1] has not been entered because it is unsigned. Since the above-mentioned reply appears to be bona fide, applicant is given a shortened statutory period of TWO (2) MONTHS within which to supply the omission or correction in order to avoid abandonment. This application has been granted special status under the accelerated examination program. Extensions of this time period may be granted under 37 CFR 1.136(a). However, filing a petition for extension of time will result in the application being taken out of the accelerated examination program. In no case can any extension carry the date for reply to this letter beyond the maximum period of SIX MONTHS set by statute (35 U.S.C. 133 ).
The objective of the accelerated examination program is to complete the examination of an application within twelve months from the filing date of the application. To meet that objective, any reply must be filed electronically via EFS-Web so that the papers will be expeditiously processed and considered. If the reply is not filed electronically via EFS-Web, the final disposition of the application may occur later than twelve months from the filing of the application.
1. Examiner should first try to contact applicant by telephone and ask for a properly signed reply or ratification of the reply. If attempts to contact applicant are unsuccessful, examiner may use this form paragraph in a letter requiring a properly signed reply or ratification if the reply is to a non-final Office action.
2. This form paragraph may only be used in an application filed on or after August 25, 2006, that has been granted special status under the accelerated examination program or on other grounds under 37 CFR 1.102(c)(2) or (d).
3. This form paragraph should not be used for an application that has been granted special status under 37 CFR 1.102(c)(1) on the basis of applicant’s health or age, or the Patent Prosecution Highway pilot program.
The reply filed on [1] is not fully responsive to the prior Office action because of the following omission(s) or matter(s): [2]. See 37 CFR 1.111. Since the above-mentioned reply appears to be bona fide, applicant is given a shortened statutory period of TWO (2) MONTHS from the mailing date of this notice within which to supply the omission or correction in order to avoid abandonment. This application has been granted special status under the accelerated examination program. Extensions of this time period may be granted under 37 CFR 1.136(a). However, filing a petition for extension of time will result in the application being taken out of the accelerated examination program. In no case can any extension carry the date for reply to this letter beyond the maximum period of SIX MONTHS set by statute (35 U.S.C. 133 ).
The objective of the accelerated examination program is to complete the examination of an application within twelve months from the filing date of the application. To meet that objective, any reply must be filed electronically via the USPTO patent electronic filing system so that the papers will be expeditiously processed and considered. If the reply is not filed electronically via the USPTO patent electronic filing system, the final disposition of the application may occur later than twelve months from the filing of the application.
1. This practice does not apply where there has been a deliberate omission of some necessary part of a complete reply, or where the application is subject to a final Office action. Under such cases, the examiner has no authority to grant an extension if the period for reply has expired. See form paragraph 7.91.
2. This form paragraph may only be used in an application filed on or after August 25, 2006, that has been granted special status under the accelerated examination program or on other grounds under 37 CFR 1.102(c)(2) or (d).
3. This form paragraph should not be used for an application that has been granted special status under 37 CFR 1.102(c)(1) on the basis of applicant’s health or age, or the Patent Prosecution Highway pilot program.
The amendment filed on [1] canceling all claims drawn to the elected invention and presenting only claims drawn to a non-elected invention is non-responsive (MPEP § 821.03) and has not been entered. The remaining claims are not readable on the elected invention because [2].
Since the above-mentioned amendment appears to be a bona fide attempt to reply, applicant is given a shortened statutory period of TWO (2) MONTHS from the mailing date of this notice within which to supply the omission or correction in order to avoid abandonment. This application has been granted special status under the accelerated examination program. Extensions of time under 37 CFR 1.136(a) are available. However, filing a petition for extension of time will result in the application being taken out of the accelerated examination program. In no case can any extension carry the date for reply to this letter beyond the maximum period of SIX MONTHS set by statute (35 U.S.C. 133 ).
The objective of the accelerated examination program is to complete the examination of an application within twelve months from the filing date of the application. To meet that objective, any reply must be filed electronically via the USPTO patent electronic filing system so that the papers will be expeditiously processed and considered. If the reply is not filed electronically via the USPTO patent electronic filing system, the final disposition of the application may occur later than twelve months from the filing of the application.
1. This form paragraph should only be used in an application filed on or after August 25, 2006, that has been granted special status under the accelerated examination program or on other grounds under 37 CFR 1.102(c)(2) or (d).
2. This form paragraph should not be used for an application that has been granted special status under 37 CFR 1.102(c)(1) on the basis of applicant’s health or age, or the Patent Prosecution Highway pilot program.
The protest under 37 CFR 1.291 filed on [1] has been considered. In order to reach a full and proper consideration of the issues raised therein, it is necessary to obtain additional information from applicant regarding these issues. In particular [2]. The failure to reply to this requirement for information within TWO (2) MONTHS of the mailing date of this requirement will result in abandonment of the application. This application has been granted special status under the accelerated examination program. Extensions of time under 37 CFR 1.136(a) are available. However, filing a petition for extension of time will result in the application being taken out of the accelerated examination program. In no case can any extension carry the date for reply to this letter beyond the maximum period of SIX MONTHS set by statute (35 U.S.C. 133 ).
The objective of the accelerated examination program is to complete the examination of an application within twelve months from the filing date of the application. To meet that objective, any reply must be filed electronically via the USPTO patent electronic filing system so that the papers will be expeditiously processed and considered. If the reply is not filed electronically via the USPTO patent electronic filing system, the final disposition of the application may occur later than twelve months from the filing of the application.
1. While the examiner normally should not need further information from applicant, this form paragraph may be used to request specific additional information from the applicant.
2. This form paragraph may only be used in an application filed on or after August 25, 2006, that has been granted special status under the accelerated examination program or on other grounds under 37 CFR 1.102(c)(2) or (d).
3. This form paragraph should not be used for an application that has been granted special status under 37 CFR 1.102(c)(1) on the basis of applicant’s health or age, or the Patent Prosecution Highway pilot program.
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Section 11(h) of the Leahy-Smith America Invents Act provides for prioritized examination whereby applicants may request prioritized examination upon payment of appropriate fees and compliance with certain requirements.
Under prioritized examination, an application will be accorded special status until a final disposition is reached in the application. The goal for handling applications under prioritized examination is to provide, on average, a final disposition within twelve months of prioritized status being granted. Prioritized examination is available at the time of filing an original utility or plant application under 35 U.S.C. 111(a), as set forth in 37 CFR 1.102(e)(1). This is referred to as "Track One" prioritized examination. An "original" application includes a continuing application (i.e., a continuation, continuation-in-part, or divisional application) but does not include reissue applications. In addition, a single request for prioritized examination may be granted for a request for continued examination (RCE) in a plant or utility application, including an application that has entered the national stage under 35 U.S.C. 371, as set forth in 37 CFR 1.102(e)(2). This type of prioritized examination is referred to as "prioritized examination for requests for continued examination" (PE-RCE). The Office maintains a "Quick Start Guide" that illustrates how to file an electronic request for prioritized examination at www.uspto.gov/sites/default/ files/documents/track_ one_quick_start_guide_11-24-2013.pdf.
To maximize the benefit of prioritized examination, applicants should consider one or more of the following: (A) acquiring a good knowledge of the state of the prior art to be able to file the application with a clear specification having a complete schedule of claims from the broadest which the applicant believes is patentable in view of the prior art to the narrowest which the applicant is willing to accept; (B) submitting an application in condition for examination; (C) filing replies that are completely responsive to an Office action and within the shortened statutory period for reply set in the Office action; and (D) being prepared to conduct interviews with the examiner. The phrase "in condition for examination" in this context means the same as it does with respect to the current accelerated examination program, which is discussed in MPEP § 708.02(a), subsection VIII.C.
Until further notice, the Office will accept no more than 15,000 requests for prioritized examination in any fiscal year. Statistical findings about prioritized examination, including statistics concerning the Office’s ability to meet its stated goals for the program are available to the public on the Office’s Internet website at www.uspto.gov/patents/ init_events/Track_One.jsp.
The requirements for requesting prioritized examination are set forth below. A request must meet the general requirements specified in subsection I.A. below, and also meet the specific requirements for either subsection I.B. (for a newly filed application) or subsection I.C. (for a request for continued examination).
The application must be a utility or plant nonprovisional application, including a continuing application (i.e., a continuation, continuation-in-part, or divisional application). The procedure for prioritized examination does not apply to design applications, reissue applications, provisional applications, or reexamination proceedings. The procedure for prioritized examination does not apply to international applications that have entered the national stage under 35 U.S.C. 371, except that such an application may undergo prioritized examination if an RCE is filed (see I.C. below). A continuing application will not automatically be given prioritized examination status based on a request filed in the parent application; each application (including each continuing application) must, on its own, meet all requirements for prioritized examination under 37 CFR 1.102(e). A utility or plant nonprovisional application filed under 35 U.S.C. 111(a) may claim priority to a foreign application under 35 U.S.C. 119(a) - (d) or (f) and remain eligible for prioritized examination.
Upon filing the request for prioritized examination, the following fees must be paid for the application:
Small entity and micro entity fee reductions are available for many of the above fees; see the current fees at www.uspto.gov/Fees. Note that a fee may be set by the USPTO to $0, and in such a case, that fee is considered to be paid and no additional payment is necessary for that fee. If any fee is unpaid at the time of filing of the application, the request for prioritized examination will be dismissed. However, if an explicit authorization to charge any additional required fees has been provided in the papers accompanying the application and the request, the fees will be charged in accordance with the authorization, and the request will not be dismissed for nonpayment of fees.
The application must contain, or be amended to contain, no more than four independent claims and no more than thirty total claims. In addition, the application must not contain any multiple dependent claims. After prioritized examination has been granted in an application, an amendment that results in more than four independent claims or thirty total claims, or a multiple dependent claim, will result in termination of prioritized examination.
The request for prioritized examination may be accepted if the requirements under 37 CFR 1.102(e) are satisfied and the limit for the number of requests for the year has not been reached. The number of granted requests for prioritized examination under 37 CFR 1.102(e) is limited to a maximum of 15,000 per fiscal year. The Office posts statistics, including the number of granted prioritized examination requests, on its website at www.uspto.gov/ aia_implementation/patents.jsp. In addition, the Office will post a message in the USPTO patent electronic filing system if/when the number of granted requests is close to the limit. If the limit is reached, the Office will turn off the ability to file a request for prioritized examination in the USPTO patent electronic filing system.
Additional requirements must be met depending on whether prioritized examination is requested upon filing of a new application (Track One), see subsection I.B. or incident to filing a request for continued examination (PE-RCE), see subsection I.C.
It is strongly recommended that applicants use the Office’s certification and request form PTO/AIA/424 to request prioritized examination, but the form is not required. The form is available through USPTO patent electronic filing system and on the Office’s Internet website at www.uspto.gov/PatentForms. Failure to use form PTO/AIA/424 could result in the Office not recognizing the request or delays in processing the request. If applicant decides to use an applicant-created form for requesting prioritized examination, applicant’s form should be an equivalent to the Office’s form.
Any item submitted on the same day the request for prioritized examination is filed will be considered to have been filed with the request under 37 CFR 1.102(e).
A newly filed patent application may be granted Track One prioritized examination status if it meets the general conditions in subsection I.A. above, and the additional following conditions:
The application must be a utility or plant nonprovisional application, including a continuing application (i.e., a continuation, continuation-in-part, or divisional application), filed under 35 U.S.C. 111(a) on or after September 26, 2011. The application must be filed via the USPTO patent electronic filing system if it is a utility application. Plant applications must be filed in paper. Due to the need to limit the number of applications in the prioritized examination program in its initial stages, applications entering the national stage under 35 U.S.C. 371 are not eligible at the time of entry; see subsection I.C. below for prioritized examination of national stage entries under 35 U.S.C. 371 in which as RCE has been filed. However, an applicant who has filed an international application may participate in the prioritized examination program by filing a by-pass continuation; i.e., a new application filed in the United States under 35 U.S.C. 111(a) that claims the benefit of the earlier international application under 35 U.S.C. 365(c), rather than entering the national stage under 35 U.S.C. 371. In such a case, it is not necessary that the earlier international application have been filed in English in order to request prioritized examination of the 111(a) application; however, a translation is required in accordance with 37 CFR 1.52(b)(1).
A proper request for prioritized examination must include, on filing, a specification as prescribed by 35 U.S.C. 112 including at least one claim, and a drawing when necessary. The application must be filed with an executed application data sheet meeting the conditions specified in 1.53(f)(3)(i), or with the inventor’s oath or declaration (under 37 CFR 1.63 and 1.64 ) executed for each inventor. Such an application data sheet must include the legal name, mailing address, and residence (if not residing at the mailing address) for each inventor. Note that filing an application without the inventor’s oath or declaration requires payment of the surcharge set forth in 37 CFR 1.16(f).
The application must contain no more than four independent claims and no more than thirty total claims. If, at the time the request for prioritized examination is considered by the USPTO, the application does not meet this requirement, applicant will be notified of the deficiency through a decision on the request, which will provide one month for applicant to amend the claims consistent with the requirements for prioritized examination. In order to reduce Office processing and ensure that patent application publications are printed correctly, the Office strongly encourages applicants to file applications without any preliminary amendments.
The application must be filed with the basic filing fee, the search fee, and the examination fee. If applicable, any excess claims fees due because the number of independent claims exceeds three, as set forth in 37 CFR 1.16(h), and any excess claim fee due because the number of claims exceeds twenty, as set forth in 37 CFR 1.16(i), and any application size fee due because the specification and drawings exceed 100 sheets of paper, as set forth in 37 CFR 1.16(s), must be paid before Track One status will be granted. If, at the time the request for prioritized examination is considered by the USPTO, any of these three fees are required but have not been paid, applicant will be notified of the deficiency through a decision on the request. These three fees must be paid not later than one month from a first decision on the request for prioritized examination.
A nonpublication request under 35 U.S.C. 122(b)(2)(B)(i) may be submitted together with a request for prioritized examination. However, the publication fee set forth in 37 CFR 1.18(d) still must be paid upon request for prioritized examination. If the application is not published, a refund of the publication fee may be requested as provided in subsection III below and in MPEP § 1126.
Color drawings may be filed with new nonprovisional utility patent applications under 35 U.S.C. 111(a) and in U.S. national stage applications under 35 U.S.C. 371 applications through Patent Center; see MPEP § 502.05, subsection VIII. See also the Legal Framework for Patent Electronic System ((www.uspto.gov/PatentLegalFramework ) (October 2019)). A petition is still required for entry of color drawings; see MPEP § 608.02 subsection VIII.
If applicant discovers that a required item has been inadvertently omitted from the application filing, a follow-on submission may be filed, but only if the follow-on submission is submitted on the same day that the utility application and the prioritized examination request form are filed. For example, if an inventor’s oath or declaration or the filing fees are inadvertently omitted when the application is filed via the USPTO patent electronic filing system, then applicant may submit the inventor’s oath or declaration or the filing fees as a follow-on submission directly into the application on the same day as the filing date of the application. Applicants are also reminded that only registered users of the USPTO patent electronic filing system can submit follow-on documents via the USPTO patent electronic filing system and that follow-on documents are documents filed after the initial submission of the application. Thus, applicant would need to be a registered user of the USPTO patent electronic filing system to submit such a follow-on document on the same day the application was filed. See also MPEP § 502.05, subsection III. D. for examples describing implications raised when applicant inadvertently omits an item when filing an application electronically.
Applicants may receive a notice regarding informalities in their application (e.g., a notice to file corrected application papers because the application papers are not in compliance with 37 CFR 1.52 ) which will delay a decision on the request for prioritized examination; however, the request for prioritized examination may still be granted if the request is otherwise compliant with 37 CFR 1.102(e)(1). Any pre-examination notice from the Office of Patent Application Processing will delay a decision on the request for prioritized examination until after applicant has filed a complete and timely reply to the pre-examination notice. Any request for an extension of time, including an extension of time for the purpose of responding to a pre-examination notice (e.g., Notice to File Missing Parts), will cause the application to be ineligible for further treatment under the prioritized examination program. A request for an extension of time prior to the grant of prioritized examination status will prevent such status from being granted.
If the request for prioritized examination is dismissed, applicant can file a petition under 37 CFR 1.181 if applicant believes that a decision dismissing the request for prioritized examination is not proper. Applicant should review the reason(s) stated in the decision dismissing the request and make a determination that an error was made by the Office in not granting the request before filing such a petition under 37 CFR 1.181. Applicant may not refile a request for Track One prioritized examination in order to correct a deficiency in the request because a proper request for Track One prioritized examination (i.e., for prioritized examination of a newly-filed utility or plant application under 35 U.S.C. 111(a) and not for an RCE) requires that the request be included upon filing.
A pending patent application in which a request for continued examination has been filed may be granted PE-RCE prioritized examination status under the following conditions:
The application must be a non-reissue utility or plant nonprovisional application filed under 35 U.S.C. 111(a), or that has entered the national stage under 35 U.S.C. 371.
The publication fee set forth in 37 CFR 1.18(d) must be paid for the application, either previously or with the request for prioritized examination. Note that a fee may be set by the USPTO to $0, and in such a case, that fee is considered to be paid and no additional payment is necessary for that fee.
The PE-RCE request may be filed concurrently with, or subsequently to, the filing of a request for continued examination (RCE). However, the PE-RCE request must be filed before the mailing of the first Office action after the filing of the RCE. The conditions for filing an RCE are set forth in 37 CFR 1.114. Prosecution must be closed; i.e., the application is under appeal, the last Office action is a final action (37 CFR 1.113 ), a notice of allowance has been issued (37 CFR 1.311 ), or there has been an action that otherwise closes prosecution in the application. Any request for prioritized examination of an application in which there has been a request for continued examination is premised on the existence of a properly filed RCE. Prioritized examination will not be granted in an application where the RCE does not meet the requirements of 37 CFR 1.114.
Only a single such request for prioritized examination for a request for continued examination may be granted in an application. The prioritized examination program permits a single request to be granted under 37 CFR 1.102(e)(1) upon filing a new application under 35 U.S.C. 111(a), and a single request to be granted under 37 CFR 1.102(e)(2) upon filing a request for continued examination under 37 CFR 1.114.
Applicant may file a petition under 37 CFR 1.181 if applicant believes a decision dismissing a PE-RCE request is not proper. Applicant should review the reason(s) stated in the decision dismissing the PE-RCE request and make a determination that an error was made by the Office in not granting the request before filing such a petition under 37 CFR 1.181. Alternatively, applicant may choose to correct the deficiencies in the PE-RCE request by filing a new PE-RCE request for that same RCE. The new PE-RCE request must include any required fees and be timely; i.e., it must be filed prior to the mailing of a first Office action after the filing of the RCE.
The time periods set for reply in Office actions for applications undergoing prioritized examination will be the same as set forth in MPEP § 710.02(b). Where, however, an applicant files a petition for an extension of time to file a reply or files a request for suspension of action, the petition or request will be acted upon, but the prioritized examination of the application will be terminated. In addition, filing an amendment to the application which results in more than four independent claims, more than thirty total claims, or a multiple dependent claim will terminate the prioritized examination. Upon termination of prioritized examination, the application will be removed from the examiner’s special docket and placed on the examiner’s regular docket in accordance with its stage of prosecution.
The goal of the Office is to provide a final disposition within twelve months, on average, of the date that prioritized status was granted. The final disposition for the twelve-month goal means that within twelve months from the date prioritized status has been granted that one of the following occur: (A) mailing of a notice of allowance; (B) mailing of a final Office action; (C) filing of a notice of appeal; (D) completion of examination as defined in 37 CFR 41.102; (E) filing of a request for continued examination; or (F) abandonment of the application. An application under prioritized examination, therefore, would not be accorded special status during appeal or interference before the Patent Trial and Appeal Board (PTAB), or after the filing of a request for continued examination. As noted above, the submission of an amendment resulting in more than four independent claims or more than thirty total claims is not prohibited, but simply terminates the prioritized examination. Thus, upon mailing of a final rejection (at which point prioritized examination is terminated), applicants may amend the claims to place them in independent form where dependent claims were found allowable, or add new claims, subject only to the limitations applicable to any application under final rejection. See 37 CFR 1.116. Similarly, upon mailing of a notice of allowance, applicants may submit amendments to the claims, again subject only to the limitations applicable to any application that has been allowed. See 37 CFR 1.312. A patent that issues will not contain any indication on its face that it was processed via prioritized examination.
If a request for prioritized examination is dismissed, the prioritized examination fee set forth in 37 CFR 1.17(c) will be refunded. This fee will be refunded automatically (if paid) without the need for applicant to request such a refund. The processing fee set forth in 37 CFR 1.17(i) will be retained to cover the cost of processing the request. In accordance with 37 CFR 1.26, the application fees, including the basic filing fee, search fee, examination fee, and any required application size or excess claim fees cannot be refunded. Applicant may, however, request a refund of the search fee and any excess claims fees by filing a petition for express abandonment of the application in accordance with 37 CFR 1.138(d). Furthermore, applicant may request a refund of the publication fee in accordance with MPEP § 1126 if the application is not published under 35 U.S.C. 122(b).
As the termination of prioritized examination does not cause the prioritized examination fee to have been paid by mistake or in an amount in excess of that required, the termination of prioritized examination will not entitle the applicant to a refund of the prioritized examination fee. See 35 U.S.C. 42(d) and 37 CFR 1.26(a).
The Patent Prosecution Highway (PPH) speeds up the examination process for corresponding applications filed in participating patent 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 USPTO participates in the Global PPH and IP5 PPH pilot programs, and also has PPH agreements with several intellectual property offices that are not yet included in the Global PPH. See www.uspto.gov/patents/init_events/pph/index.jsp for details and forms to request participation in, and to petition to make an application special under, the PPH program.
Whenever an examiner tenders his or her resignation, the supervisory patent examiner should see that the remaining time as far as possible is used in winding up prosecution in those applications with complex issues or involved records that the examiner is already familiar with (e.g., applications with RCEs and continuation applications) and getting as many of his or her amended cases as possible ready for final disposition.