Getting patents fast

1. NAPP Annual Meeting Denver July 12, 2015 Carl Oppedahl Oppedahl Patent Law Firm LLC www.oppedahl.com Getting patents fast

2. Topics for the day • Survey and summary of the nine approaches for getting US patents faster • Detailed discussion of PPH (Patent Prosecution Highway) • Detailed discussion of PCT-PPH (Patent Cooperation Treaty PPH) • Compare and contrast PPH and PCT-PPH with other approaches • Practice tips

3. Style of presentation • Feel free to ask questions as they arise, using the chat system • Please complete the evaluation form

4. Approaches for getting faster US patents • Pre-Appeal Program • Full First Action Interview Pilot Program • Accelerated Examination • Track I (Prioritized Examination) • Petition to Make Special because of applicant's health • Petition to Make Special based on age (inventor over 65 years) • PPH (Patent Prosecution Highway) • PCT-PPH (Patent Cooperation Treaty PPH) • 37 CFR § 1.496

5. Expectations management • None of these approaches offers an assurance of a granted US patent. • Maybe you get a faster first office action. • Maybe you get faster prosecution thereafter. • Maybe you get your appeal decided faster.

6. Some of the dockets within USPTO • Cases clearly in condition for allowance • Cases with set time limits, such as examiner’s answers and action upon an amendment or response before final rejection • Accelerated examination status • Special status • Prioritized examination (Track I) • Advanced out of turn for examination (Rule 496) • Regular docket

7. Restriction practice • 111(a) applications • Distinct-invention restriction practice • Species-type restriction practice • National-stage (371) applications • Unity-of-invention practice Normally if you disagree with a restriction requirement you can traverse Some traversals are successful, most are not

8. Limits on claims We will encounter a program that limits the filer to three independent claims and twenty total claims, with no multiple dependent claims We will encounter a program that limits the filer to four independent claims and thirty total claims, with no multiple dependent claims We will encounter one program that limits the filer to claims that correspond to those favorably treated in a Written Opinion or IPRP-II

9. Pre-Appeal Program • This program is designed to allow an applicant that thinks there is a clear deficiency in the prima facie case in support of a rejection to file the Pre-Appeal Program request at the same time that it files a notice of appeal • This program is not for “judgment calls” • This program is for “clear errors” by the Examiner

10. Pre-Appeal Program • You file the Pre-Appeal Request (form AIA/33 or SB/33) and a five-page statement with the notice of appeal • Your brief is due two months after you filed the Notice, or one month after the PAR panel responds, whichever is later

11. Pre-Appeal Program possible outcomes • Outcome 1: The application remains under appeal because there is at least one actual issue for appeal. Now you need to file your appeal brief. • Outcome 2: Prosecution on the merits is reopened and an appropriate Office communication will follow in due course. In appropriate circumstances, a proposed amendment may accompany the panel's decision proposing changes that, if accepted, may result in an indication of allowability for the contested claim(s). Now you do not need to file your appeal brief. • Outcome 3: The application is allowed on the existing claims and prosecution remains closed. Now you do not need to file your appeal brief. • Outcome 4: The request fails to comply with the submission requirements and is dismissed. Now you need to file your appeal brief.

12. Pre-Appeal Program – why we care? • These days it is taking five years or more for an ex parte appeal to get decided at the PTAB • It would be nice to avoid having to wait five years • It costs money to prepare and file an appeal brief • It would be nice to avoid that expense • After the Examiner's answering brief, you have a pay a big fee • It would be nice to avoid having to pay that big fee These are reasons to consider using the Pre-Appeal Program

13. Full First Action InterviewPilot Program • The general idea of this program is that you can get an interview prior to the first Office Action by asking nicely • This permits an early exploration of patentable subject matter and improves the chances of a first office action allowance

14. Full First Action InterviewPilot Program • Applicant's request to participate in the program must be filed at least one day before a first Office Action on the merits of the application appears in PAIR. • The application may contain no more than three independent claims and no more than twenty total claims, with no multiple dependent claims. • The applicant must promise in advance not to traverse any restriction requirement.

15. Full First Action InterviewPilot Program • The application can be a 111(a) application or a national-stage application. • No fee is required. • Note that this program does not make the first Office Action happen any sooner than it would otherwise happen. It only provides an opportunity for an interview earlier than would normally be available.

16. Accelerated Examination • In August of 2006, with much fanfare, USPTO announced its Accelerated Examination program. • The AE program has had only very limited success from USPTO's point of view, and many experienced practitioners consider AE tantamount to legal malpractice. • AE nonetheless remains available even now for use by applicants.

17. AE • As an inducement to filers to participate in AE, USPTO committed that it would conclude all prosecution (with an allowance or a final rejection) within 12 months of filing.

18. AE search • Search report and search statement. The filer must carry out an extremely detailed prior-art search. • USPTO has publicly admitted that the ordinary search that an Examiner would carry out in the examination of a normal (non-AE) application would not satisfy the requirements for an AE search. • USPTO has also stated that a foreign search (for example in a PCT application or in a priority application filed in a foreign patent office) would not satisfy the requirements of an AE search.

19. AE search • Having carried out the search, the filer must provide a signed search statement promising that all required databases and resources were searched, and must (effectively) represent that no significant reference was overlooked in the search. • The signer of such a search statement may reasonably expect to be deposed at length if the patent is ever litigated.

20. Accelerated Examination Support Document (AESD) • The filer must pick and choose among the references found in the AE search, picking out the “most important” references. The selected references must then be applied one by one, and in combination, against each claim in the application, and against each limitation of each claim. In a typical case with (say) thirty claims, and (say) twenty “most important” references, some six hundred combinations must be considered and discussed. The filer must construct a prima facie case for rejection of each claim as to each reference being discussed, and must then explain why the claim is nonetheless patentable even in view of the prima facie case for rejection.

21. AESD • One way to characterize the work required in preparing the AESD is that the filer must start by writing the first Office Action for the Examiner, and then responding to that first Office Action.

22. AESD support statement • In the AESD, the filer is required to provide a detailed statement of support as to each claim limitation, showing exactly where each such limitation may be found in the specification. • In contrast, in a normal (non-AE) application, such a support statement is only required if and when it turns out to be necessary to file an appeal brief to the Patent Trial and Appeal Board. Such a support statement is likely to make a big difference in litigation, probably narrowly limiting the scope and range of interpretation of particular claim terms.

23. Why so few have used AE? • Cost. Practitioners who have actually filed AE cases have reported that the additional cost to file AE (above and beyond normal preparation and filing costs) is ten or twenty thousand dollars or more. I have estimated that AE could easily double or triple the cost of a patent filing.

24. Why so few have used AE? • Weakening of any granted patent. Litigators rub their hands together with glee when they contemplate representation of an infringer where the patent asserted is an AE patent. The number and range of lines of attack are such that it is easy to imagine invalidating a patent earlier in a case, and at lower cost, then in an otherwise comparable non-AE case.

25. Why so few have used AE? • Malpractice risk. What practitioner would want to apply his or her signature to an AE search statement? What practitioner would want to apply his or her signature to an AESD? Imagine the inequitable-conduct charges that could be alleged against the signer, regardless of whether the signer did not did not actually do anything wrong. Imagine the discovery (not only as to documents but also in deposition) and the trial testimony that would be demanded of the signer.

26. Why so few have used AE? • Loss of appeal options. To get AE status, the filer must promise in advance that on appeal to the PTAB, the filer will not argue patentability of a dependent claim separately from the patentability of the independent claim from which it depends. Stated differently, the filer must concede in advance that all claims stand and fall together on appeal.

27. Why so few have used AE? • Limits on claim count. The application is not permitted to have, or to be amended to have, more than three independent claims, nor more than twenty total claims. The filer is not permitted to use multiple dependent claims.

28. Why so few have used AE? • Loss of ability to purchase extensions of time. If the filer purchases an extension of time to respond to any Office Action, the case loses AE status. The AESD and search results remain in the application file, however, available to the Examiner and to any adversary in litigation.

29. Why so few have used AE? • Vulnerability to unreasonable or unjustified restriction requirements. The filer must promise in advance not to traverse any restriction requirement. The Examiner can thus make any restriction requirement, no matter how unreasonable or unjustified, secure in the knowledge that there will be no review of the restriction requirement by any higher authority.

30. Why so few have used AE? • Consequences of a denial of the AE petition. About one-third of all AE petitions have been denied. When this happens, the application moves forward as a non-AE application. The AESD and search results remain in the application file. The Examiner will draw upon these documents in examining the application, and an adversary in litigation will be able to make use of the content of these documents and any party admissions therein.

31. Track I • With Track I, the applicant pays $4130 to get “prioritized” examination. (Cheaper for small and micro entity.) • The up-front fee cost of $4130 has two components: • $4000 track-I fee • $130 petition fee

32. Claim limits for Track I • The filer is limited to four independent claims. • The filer is limited to thirty total claims. • The filer is not permitted to use multiple dependent claims.

33. Track I requirements • Track I is not available for any already-pending case. If a filer has an already pending case, then to get its subject matter onto Track I would require filing a continuation application.

34. Losing Track-I status • Any of a long list of events triggers a loss of Track-I status. These events include: • filing of a Notice of Appeal • filing of an RCE • petitioning for an extension of time to respond to an Office Action • amending to add a fifth independent claim • amending to add a thirty-first total claim • amending to add a multiple-dependent claim

35. Petition to Make Special because of applicant's health • An application may be made special upon a petition by applicant accompanied by evidence showing that the state of health of the applicant is such that he or she 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. • Such a petition will be granted if any one of multiple inventors has such a state of his or her health. • Such petitions are routinely granted without any requirement by the USPTO that additional evidence be provide beyond a modest initial showing. • No fee is required for such a petition.

36. Petition to Make Special based on age (inventor 65 years of age) • USPTO will make a case “special” if it is shown that any one of multiple inventors is 65 years of age or older. • No fee is required for this petition. • This petition may be e-filed, and if e-filed, the EFS-Web system will automatically and instantly grant the petition.

37. PPH (Patent Prosecution Highway)

38. Bilateral PPH arrangements • US – Colombia • US – Czech Republic • US – Germany • US – Mexico • US – Nicaragua • US – Philippines • US – Poland • US – Romania • US – Taiwan Intellectual Property Office

39. PPH • You have an Office of First Examination (OFE) and an Office of Second Examination (OSE) • A favorable finding in an OFE permits you to put an application on the Highway in an OSE

40. How to docket PPH • When a PPH petition is filed, docket a month to check for a decision on the petition. • When a petition is filed in a case that does not have a Filing Receipt, docket a month to check for a Filing Receipt. • Also docket to check that an Examiner gets assigned to the case. • If a petition is dismissed, aggressively docket the one-month period.

41. PPH results • Allowance rate typically 90% as compared with 50-55% for non-PPH cases • Number of office actions to disposition reduced from around 2½ to around 1½ • Several factors may help to explain these results

42. PCT-PPH (Patent Cooperation Treaty PPH) • There need not be an OFE and OSE • The whole thing can be done in a single patent application if desired • The trigger for PCT-PPH benefits can be a mere Written Opinion

43. When do you get your WO? • Recall that you get your WO within: • three months of ISA's receipt of Search Copy, or • nine months of the priority date, whichever is later.

44. Without even trying ... • Many applicants can get PCT-PPH benefits even if they had no intention of trying to get such benefits. There is no extra cost beyond what would already be spent for a PCT filing.

45. Requirements for PCT-PPH • The ISA-WO or IPEA-WO or IPRP-II must come from an “approved” ISA or IPEA (AT, AU, CA, CN, EP, ES, FI, IL, JP, KR, RU, SG,SE, UK, US, XPAT, AU, CA, CN, EP, ES, FI, IL, JP, KR, RU, SG,SE, UK, US, XP) • The ISA-WO or IPEA-WO or IPRP-II must treat at least one claim favorably • The US case must be connected, no matter how remotely, by Section 119 and/or Section 120 and/or Paris Article 4 relationships, with the IA (international application) containing the WO or IPRP-II • The claims must “sufficiently correspond”

46. Identifying eligible cases for PCT-PPH? • You may have PCT-PPH-eligible cases right now, and maybe you don't even know it. Go back and look at every old PCT application that you ever filed. Look at every Written Opinion. Go back and look at every old IPRP-II. You might find some favorably treated claims.

47. Variety of possible “gaining” cases • PCT-PPH benefits are not limited to national-stage cases. The beneficiary of PCT-PPH might be a continuation case, or a domestic case that predates the PCT case.

48. 37 CFR § 1.496 • 37 CFR § 1.496 has been around since 1987. Under Rule 496, an applicant who chooses ISA/US or IPEA/US, and who receives a finding of patentability from the ISA/US or IPEA/US, can enter the US national stage and the Examining Corps is obligated to “advance” the national-stage application “out of turn for examination.”. Further, the national-stage search fee and examination fee are each waived. • The only patent application that can benefit from Rule 496 is a national-stage application. With PCT-PPH, in contrast, the gaining application can be a newly filed application (national-stage or not) or could be an already pending application (national-stage or not).

49. 37 CFR § 1.496 • A further problem with Rule 496 is that it only works if the ISA or IPEA is the ISA/US or IPEA/US. This presents a number of potential drawbacks, including the fact that ISA/US is not really the USPTO – it is either of three government contractors. There is no particular reason to think that an Examiner in the USPTO examining corps, examining a national-stage case, would give full faith and credit to work carried out by a government contractor.

50. 37 CFR § 1.496 • A further problem with Rule 496 is that USPTO has failed, throughout the over thirty years that Rule 496 has been in force, to take any measure to bring about examiner compliance with Rule 496. This leaves it to the filer to track the status of each Rule-496 case, and to badger the Examiner to examine such a case promptly. This badgering has often required escalating the matter to a SPE, to the Director of the technology center, or to the Commissioner's office.