USPTO Examination Related Initiatives

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USPTO Examination Related Activities. Sway Fight Executive, Office of Patent Legitimate Organization Delegate Chief for Patent Examination Strategy Maryland Patent Law Affiliation September 14, 2006 Bob.Spar@uspto.gov (571) 272-7700. USPTO Examination Related Activities.

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USPTO Examination Related Initiatives Bob Spar Director, Office of Patent Legal Administration Deputy Commissioner for Patent Examination Policy Maryland Patent Law Association September 14, 2006 Bob.Spar@uspto.gov (571) 272-7700

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USPTO Examination Related Initiatives Quality Approached from various points: Proposed Rule Makings Examination Initiatives Technology Innovation

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Proposed Rule Makings Claims Continuations, RCEs, and Applications Containing Patentably Indistinct Claims (Continued Examination) Accelerated Examination (AE), Petitions to Make Special (Practice Change Only) Information Disclosure Statements (IDSs) Other Possible Rule Makings: Markush Practice/Alternatives in Claims Preexamination Search Reports Changes To Support EFS-Web filings Amendments in Reexaminations and Reissues Deferred Examination

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Proposed Rule Makings Quality Objectives: Examination: Focused introductory patentability examination of a set number of delegate cases – Get it right the first run through Operational effectiveness – Create conclusiveness in the examination procedure Improved nature of issued licenses – Give all the more auspicious notice of, and more noteworthy open conviction on, the extent of patent security by diminishing the quantity of licenses that have covering exposures and cases

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Notice of Proposed Rule Making Claims Changes to Practice for the Examination of Claims in Patent Applications 71 FR 61 (Jan. 3, 2006); 1302 OG 1329 (Jan. 24, 2006) See additional data on USPTO site at: http://www.uspto.gov/web/workplaces/pac/dapp/opla/introduction/focuspp.html Very expansive number of remarks got amid the expanded remark time frame which finished May 3, 2006 All remarks posted on USPTO site: http://www.uspto.gov/web/workplaces/pac/dapp/opla/remarks/fpp_claims/claims_comments.html

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Claims NPR Rules Proposed to be Changed or Added in 37 CFR § 1.75(b) and (c) Claim(s) § 1.104(a)(1), (b), and (c)(1) Nature of examination § 1.105(a)(1)(ix) Requirements for data § 1.117 (new) Refund because of cancelation of claim § 1.261 (new) Examination bolster report § 1.704 (c)(11) and (c)(12) Reduction of time of modification of patent term

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Notice of Proposed Rule Making Continued Examination Changes to Practice for Continuing Applications, Requests for Continued Examination Practice, and Applications Containing Patentably Indistinct Claims 71 FR 48 (Jan. 3, 2006); 1302 OG 1318 (Jan. 24, 2006) See USPTO site for further information Very substantial number of remarks got amid the amplified remark period which finished May 3, 2006 All remarks posted on USPTO site: http://www.uspto.gov/web/workplaces/pac/dapp/opla/remarks/fpp_continuation/continuation_comments.html

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Continued Examination NPR List of Rules Proposed to be Changed 37 CFR 1.78 – Claiming advantage of prior recording date and cross-references to different applications 37 CFR 1.114 – Request for proceeded with examination 37 CFR 1.495 – Entering the National Stage in the United States of America

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Continued Examination NPR Proposed Reorganization of whole govern § 1.78 with new subsections Section 1.78 is proposed to be rearranged as takes after: § 1.78(a) – definitions set up; § 1.78(b) - guarantees under 35 USC 119(e) for the advantage of an earlier documented temporary application; § 1.78(c) - deferred asserts under 35 USC 119(e); § 1.78(d) - guarantees under 35 USC 120, 121, or 365(c) for the advantage of an earlier recorded nonprovisional application; § 1.78(e) - postponed asserts under 35 USC 120, 121, or 365(c); § 1.78(f) - applications naming no less than one creator in like manner; § 1.78(g) - applications or licenses under reconsideration naming distinctive designers and containing patentably indistinguishable cases; and § 1.78(h) - the treatment of gatherings to a joint research understanding under the CREATE Act.

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Public Comments on Claims and Continued Examination NPRs The Office got around 520 remarks on both the cases and continuations NPRs, with more than 330 remarks on the Continued Examination Practice NPR and more than 180 remarks on the Claims NPR from: Intellectual Property Organizations; Businesses; Government Agencies; Universities/Other Organizations; Law Firms; Patent Practitioners, Independent Inventors, and Miscellaneous Individuals.

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Next Steps on Claims and Continued Examination NPRs The Office is as yet considering all the general population remarks. All the general population remarks have been placed in note pads, with gathering of comparable remarks, and painstakingly surveyed; and proposals have been examined opposite objectives and targets; Decisions will be made by considering all components. The last administer making notification will incorporate answers to the remarks. The Office arrangements to consolidate both the Claims and Continued Examination NPRs into one last administer take note. Production and Effective date of definite tenets: ?

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Notice of Proposed Practice Change Changes to Practice for Petitions in Patent Applications to Make Special and for Accelerated Examination 71 FR 36323 (June 26, 2006); 1308 OG 106 (July 18, 2006) Available at http://www.uspto.gov/web/workplaces/pac/dapp/ogsheet.html Effective August 25, 2006

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Revised Accelerated Examination (AE) Program and Petition to Make Special Procedures Overview Effective August 25, 2006, the accompanying have been amended: Requirements for recording petitions for quickened examination, and different petitions to make extraordinary, and Procedures put forward in MPEP 708.02 (8 th Edition) for preparing and inspecting these unique cases. Objective: to accomplish an official choice by the inspector inside 12 months from the recording date of the application See Changes to Practice for Petitions in Patent Applications to Make Special and for Accelerated Examination , 71 Fed. Reg. 36323 (June 26, 2006) (see) accessible at http://www.uspto.gov/web/workplaces/pac/dapp/ogsheet.html MPEP 708.02 (8 th Edition) will be updated at the appointed time to mirror the progressions.

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Revised Accelerated Examination (AE) Program and Petition to Make Special Procedures Overview The new necessities apply to all petitions to make exceptional. In this way, a uniform practice will be set up. But: Petitions on the premise of wellbeing, age and the Patent Prosecution Highway (PHH) experimental run program If the appeal to meets the prerequisites put forward in the notice, The application will be conceded exceptional status under the reexamined AE program, and The new preparing and examination strategies will apply to the application.

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Revised Accelerated Examination (AE) Program and Petition to Make Special Procedures Effective Date Provision: 8/25/06 Any appeal to for quickened examination, and some other appeal to make exceptional (aside from petitions in light of candidate's wellbeing or age or the PPH test case program) must meet the necessities put forward in the notice. For instance, the request of and application must be recorded electronically by means of EFS or EFS-Web. Petitions to make exceptional documented before 8/25/06 just needed to agree to the past prerequisites put forward in MPEP 708.02 (8 th Edition). The application will be prepared and analyzed utilizing the past strategies put forward in MPEP 708.02 (8 th Edition). Petitions for the changed AE program were not acknowledged before 8/25/06.

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Revised Accelerated Examination (AE) Program and Petition to Make Special Procedures Summary The amended AE program will permit candidates who crave speedy patent assurance for their creations a path: To get a last patentability choice by the inspector inside 12 months; and To pick which applications they need to progress for examination. So as to meet the 12-month objective, a candidate will be required to give extra data the appeal to for AE, and consent to reexamined techniques all through the examination procedure, to help the analyst in quickly touching base at a last aura.

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Revised Accelerated Examination (AE) Program and Petition to Make Special Procedures Summary - Benefits for Applicants Expedited taking care of all through the patent application handle, including: Office of Initial Patent Examination (OIPE); Examination; Post-offer process; and Patent issue prepare. Prior and better collaborations with the inspector. More investment in clearing up and centering the issues amid the arraignment.

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Revised Accelerated Examination (AE) Program and Petition to Make Special Procedures Filing Requirements The application must be documented with: The appeal to make exceptional shape PTO/SB/28; and The expense under § 1.17(h), or an announcement that the guaranteed topic is coordinated to natural quality, vitality, or countering fear based oppression (no charge required, see §1.102(c)(2)). The application must be finished under § 1.51 and in condition for examination after documenting. For instance , the application must incorporate the documenting expenses and an executed pledge or affirmation under § 1.63. .

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Revised Accelerated Examination (AE) Program and Petition to Make Special Procedures Filing Requirements (Cont'd) The application, appeal, and required charges must be documented electronically by means of EFS or EFS-Web. The application must contain: 3 or less autonomous cases; and 20 or less aggregate cases. The cases must be coordinated to a solitary creation . The application must not contain any different ward claims. .

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Revised Accelerated Examination (AE) Program and Petition to Make Special Procedures Filing Requirements (Cont'd) The petition* (frame PTO/SB/28) must include: An announcement that candidate will consent to make a race without cross in a telephonic meeting; An announcement that candidate will consent to have a meeting when asked for by the analyst; A statemen

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