By Donald Zuhn --
Prioritized Examination Interim Rule Adopted As Final
Last March, we reported on an interim rule implemented by the U.S. Patent and Trademark Office that expanded the time periods for meeting certain requirements for filing a request for Track I prioritized examination (see "USPTO to Permit Delay in Meeting Certain Prioritized Examination Requirements"). Under the interim rule, the requirements for which the time periods were expanded included: the submission, upon filing, of an inventor's oath or declaration and all required fees, as well as an application containing no more than four independent claims, thirty total claims, and no multiple dependent claims. In particular, the rules changes (1) postponed the requirement to file an inventor's oath or declaration if an application data sheet meeting the conditions specified in 37 CFR 1.53(f)(3)(i) is present upon filing, (2) provided a non-extendable one-month period (following notification of noncompliance from the Office) to file an amendment to cancel any independent claims in excess of four, any total claims in excess of thirty, or any multiple dependent claim, and (3) no longer required the payment of excess claims fees or the application size fee upon filing.
In a final rule published in the Federal Register last week (79 Fed. Reg. 68124), the Office noted that it had received no comments from the public regarding the interim rule, and therefore adopted as final the amendments to the rules of practice set forth in the interim rule. The final rule took effect as of November 14, 2014, and applies to applications filed under 35 U.S.C. § 111(a) on or after September 16, 2012, in which a first action has not been mailed.
USPTO Extends Quick Path Information Disclosure Statement Pilot Program
The U.S. Patent and Trademark Office recently noted on its website that the Quick Path Information Disclosure Statement (QPIDS) pilot program has been extended to September 30, 2015. The QPIDS pilot program, which was implemented by the Office in May of 2012, allows applicants to have an Information Disclosure Statement (IDS) considered after the issue fee has been paid and without having to file a Request for Continued Examination (RCE) (see "USPTO Announces Quick Path Information Disclosure Statement (QPIDS) Pilot Program").
Under the QPIDS pilot program, an examiner will consider IDS submissions made after the issue fee has been paid (and provided that the conditions below are met) to determine whether prosecution should be reopened. Where the examiner determines that no item of information in the IDS necessitates reopening prosecution, the Office will issue a corrected notice of allowability and the application will pass to issue, thereby eliminating the delays and costs associated with RCE practice. To be eligible to participate in the pilot program, an application must be an allowed utility or reissue application for which the issue fee has been paid and the patent has not yet issued, and a QPIDS submission must be made electronically via the EFS-Web. The QPIDS submission must include the following:
• A transmittal form that designates the submission as a QPIDS submission (e.g., form PTO/SB/09);
• An IDS accompanied by a timeliness statement set forth in 37 CFR 1.97(e), with the IDS fee set forth in 37 CFR 1.17(p) -- note: the QPIDS pilot program does not eliminate the requirements that an IDS be accompanied by the statement of 37 C.F.R. § 1.97(e)(1) or (2) and the fee set forth in 37 C.F.R. § 1.17(p)).
• A Web-based ePetition to withdraw from issue under 37 CFR 1.313(c)(2), with the petition fee set forth in 37 CFR 1.17(h); and
• An RCE, which will be treated as a "conditional" RCE, with the RCE fee under 37 C.F.R. 1.17(e) -- note: the IDS fee under 37 C.F.R. § 1.17(p) will be automatically returned if the examiner decides to reopen prosecution, necessitating that the RCE be processed, and the RCE fee will be automatically returned if the examiner determines that prosecution need not be reopened.
Additional information regarding the QPIDS pilot program can be found on the Office's QPIDS webpage.
USPTO Extends After Final Consideration Pilot 2.0 Program
The U.S. Patent and Trademark Office also recently noted on its website that the After Final Consideration Pilot 2.0 (AFCP 2.0) program has been extended to September 30, 2015. The AFCP, which was implemented in April 2012 (see "USPTO to Assess After Final Consideration Pilot Program") and then modified in May 2013 (see "USPTO News Briefs"), provides examiners with a limited amount of non-production time -- three hours for utility and reissue applications -- to consider responses filed following a final rejection.
In implementing the original AFCP, the Office described six limited situations in which further amendments or arguments may be considered under the AFCP:
1. The amendment places the application in condition for allowance by canceling claims or complying with formal requirement(s) in response to objection(s) made in the final office action.
2. The amendment places the application in condition for allowance by rewriting objected-to claims in independent form.
3. The amendment places the application in condition for allowance by incorporating limitations from objected-to claims into independent claims, if the new claim can be determined to be allowable with only a limited amount of further consideration or search.
4. The amendment can be determined to place the application in condition for allowance with only a limited amount of further search or consideration, even if new claims are added without cancelling a corresponding number of finally rejected claims.
5. The amendment can be determined to place the application in condition for allowance by adding new limitation(s) which require only a limited amount of further consideration or search.
6. The response comprises a perfected 37 CFR 1.131 or 37 CFR 1.132 affidavit or declaration (i.e. a new declaration which corrects formal defects noted in a prior affidavit or declaration) which can be determined to place the application in condition for allowance with only a limited amount of further search or consideration[.]
When the Office implemented the AFCP 2.0 program, it described three main differences between the original AFCP and the AFCP 2.0: (1) an applicant must file a request to participate in the AFCP 2.0; (2) a response after final rejection under the AFCP 2.0 must include an amendment to at least one independent claim; and (3) when a response does not result in a determination that all pending claims are in condition for allowance, the examiner will request an interview with the applicant to discuss the response. The requirements for participating in the AFCP 2.0 are as follows:
(1) a transmittal form that requests consideration under AFCP 2.0 (the Office suggests that applicants use form PTO/SB/434);
(2) a response under 37 CFR 1.116, including an amendment to at least one independent claim that does not broaden the scope of the independent claim in any aspect;
(3) a statement that the applicant is willing and available to participate in any interview initiated by the examiner concerning the accompanying response (according to the notice, "willing and available" means that the applicant is able to schedule the interview within ten (10) calendar days from the date the examiner first contacts the applicant);
(4) any necessary fees (e.g., a request filed more than three months after the mailing of a final rejection must include the appropriate fee for an extension of time under 37 C.F.R. § 1.136(a)); and
(5) the required papers must be filed via the EFS-Web.
In extending the AFCP 2.0 program, the Office notes that applicants submitting AFCP 2.0 requests will begin receiving a specialized form (PTO-2323) in response to requests. The new form will communicate the status of the submission, and if applicable, also accompany an interview summary. According to the Office, the new form is designed to more clearly indicate how the AFCP submission was treated by the examiner. Additional information regarding the AFCP 2.0 program can be found on the Office's AFCP 2.0 webpage.