Applicant found the following references from a preexamination search or from other sources: (1) several references to be relevant to the general subject matter of the claims; (2) one reference that establishes, by itself or in combination with other information, a prima facie case of unpatentability of a claim (see 37 CFR 1.56(b)); (3) one reference that discloses the most number of limitations in the independent claim; (4) one reference that discloses a limitation of an independent claim that is not shown in the other references; and (5) one reference that discloses a limitation of a dependent claim that is not shown in the other references.

When applicant submits an accelerated examination support document (AESD), is applicant required to: (A) cite all of the references relevant to the claims in an information disclosure statement (IDS) of the AESD; (B) for each reference cited in the IDS of the AESD, identify all of the limitations in the claims that are disclosed by the reference specifying where the limitation is disclosed in the cited reference, and (C) include a detailed explanation of how each of the claims are patentable over the references cited with the particularity under 37 CFR 1.111(b) and (c)?

Applicant is required to submit an accelerated examination support document (AESD) that includes an IDS in compliance with 37 CFR 1.98 citing each reference deemed most closely related to the subject matter of each of the claims (whether in independent or dependent form).

(1) Applicant is not required to cite the references that are only relevant to the general subject matter of the claims because there are references that are more closely related to the subject matter of the claims. Applicant is also not required to cite a reference that is cumulative to any other reference cited in the IDS.

(2) Applicant is required to cite any reference that establishes, by itself or in combination with other information, a prima facie case of unpatentability of a claim (see 37 CFR 1.56(b)) in the IDS of the AESD.

(3) Applicant is required to cite the reference that discloses the most limitations in the independent claim.

(4) Applicant is required to cite any reference that discloses a limitation of an independent claim that is not shown in the other references.

(5) Applicant is required to cite any reference that discloses a limitation of a dependent claim that is not shown in the other references.

For each reference cited in the IDS of the AESD, the AESD must include an identification of all the limitations in the claims that are disclosed by the reference specifying where the limitation is disclosed in the cited reference. The AESD must also include a detailed explanation of how each of the claims are patentable over the references cited with the particularity required by 37 CFR 1.111(b) and (c).

If an information disclosure statement (IDS) is filed after initial filing, is a supplemental accelerated examination support document (AESD) needed to address the newly submitted references?

Yes, a supplemental AESD is required if a reference being submitted in an IDS is deemed more closely related to the subject matter of at least one claim than the references provided in the previously-filed AESD. Consistent with 37 CFR 10.18, any reference submitted in a separate IDS that is not part of an AESD is a representation by applicant to the USPTO that no reference submitted in the separate IDS is deemed closer to the subject matter of at least one claim than the references provided in the AESD. If applicant deems references found after the initial filing to be closer to the subject matter of at least one claim than the references provided in the AESD, then applicant needs to supplement the AESD to account for these references.

Will the Office accept an accelerated examination support document (AESD) that contains a list of references in the information disclosure statement (IDS) of the AESD, but does not include any identification and explanation for those references that are not required to be submitted in the IDS of the AESD (i.e., references that are not most closely related to the subject matter of each of the claims)?

No, the AESD will be deemed insufficient for lack of identification and explanation. 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. The applicant will be given a time period of one month, without any extension of time under 37 CFR 1.136(a), to perfect the petition.

If applicant wishes to cite references that are not required in an AESD for the examiner to consider, applicant may submit such references in a separate IDS in compliance with 37 CFR 1.97 and 1.98. Applicant should clearly identify the IDS of the AESD that is in support of the petition to make special and, similarly, applicant should clearly identify the separate IDS that is not in support of the petition. Consistent with 37 CFR 10.18, any reference submitted in a separate IDS that is not part of an AESD will be treated as a representation by applicant to the USPTO that no reference submitted in the separate IDS is deemed closer to the subject matter of at least one claim than the references provided in the AESD.

If Final rejection is a disposition of the application why is RCE listed as a disposition as well?

To account for RCE after Ex Parte Quayle. That is, since an Ex Parte Quayle is not a final disposition for this program, the RCE will be the final disposition.

Can an application already on file participate in the accelerated examination procedure?

The only way for an applicant to enter the accelerated examination program with an application already on file would be to file a continuation meeting all the requirements of the AE program. If a petition to make special was filed before August 25th, 2006, the petition will be treated under the old procedures and therefore would not be eligible for the 12-month AE program.

When I check my application in Private PAIR how can I see that it has been recognized as an AE application?

The petition paper should be viewable in PAIR under the Image File Wrapper Tab and be designated with a “Petition for 12-month Accelerated Exam” Document description.

Are by-pass continuations eligible for the AE program?

Yes. They are applications under 35 USC 1.111(a) and are eligible.

Why aren’t 371 application filings eligible?

The procedure as implemented relies on the electronic filing of the application which is ready for examination on the filing date in order to reliably track the case and in order to achieve the 12-month goal. In general, a 371 application cannot be submitted in that condition since the specification must be retrieved from the IB if there is early entry (prior to publication) or if the international application is not in English.
Note however, that the same effect can be accomplished by means of filing a bypass continuation.

Does a foreign search report or a search where US is the ISA qualify for the pre-examination search?

If it meets all the requirements then it suffices. See items 8(A)-(E) of Part I of the Notice.

Can it be assumed that a search that follows the search templates will satisfy the standard for pre-examination search for this program?

A request for accelerated examination that follows the guidance provided by the search templates must be evaluated on its own to determine whether it meets the pre-examination search criteria. That is, there is no per se rule that a search that follows a search template will satisfy the pre-examination search for accelerated examination. Note for example, that the templates do not specify search terms or logic. Furthermore, there are instances where Applicant's expertise will result in a more restricted, yet more effective, search which would uncover art that would not be realized by following the template. The search templates provide excellent guidance on what non-patent literature resources should be considered in the search process.

When can applicant expect a decision on the petition under this program?

Generally, a decision on the petition will be issued approximately 2 months from the filing date. Applicant is encouraged to call the Office to check on the status if applicant has not received a communication regarding the application within 3 months from filing.

How does the newly proposed IDS package relate to the program?

The proposed IDS package would require applicant to provide explanation and additional disclosure regarding submitted documents in limited circumstances. The AE procedure requires applicant to explain the relevance of each item deemed most closely related. The proposed IDS package is not in conflict with the AE procedures. Should the proposed IDS package issue as a final rule Applicant will be required to meet all requirements of the rule in all cases including those that are undergoing accelerated examination.

Is there any way for an Applicant to discontinue participation in the program once the petition has been granted?

No. The application for which the petition has been granted is subject to the requirements of the program throughout the prosecution. Applicant may abandon the application in favor of a continuation. Since the program specifically requires that each application must meet the requirements on its own in order to be granted AE status, the new application will not be processed within the program absent a new petition.

If Applicant first becomes aware of infringement of a pending patent application after August 25th, 2006, how can applicant obtain accelerated examination?

Applicant would be required to file a continuation meeting all the AE requirements.

Why aren’t plant patent applications included in the program?

Plant applications use color figures. EFS is not equipped to handle the degree of color that would be required in plant submissions at this time.

Are applicants required to submit the references that are cited on the IDS?

The IDS must be compliant with 37 CFR 1.98. See 37 CFR 1.98(d) as to the requirements of submitting references cited on an IDS.

I tried to submit my application by EFS but was unable to. What recourse do I have, since the program requires electronic filing?

If EFS or EFS-Web is unavailable at the time of filing (during ordinary business hours) applicant may file the application by express mail accompanied by a statement that EFS or EFS-Web was unavailable. The statement must be specific as to the time period of the alleged, unscheduled outage. Applicant is advised to contact the USPTO's Patent Electronic Business Center, 1-866-217-9197 (toll-free for U.S.) or 571-272-4100(local & international callers)from 6 a.m. to 12 Midnight Eastern Time, Monday - Friday 6AM to Midnight or by e-mail at ebc@uspto.govto verify that the systems are unavailable and that the problem does not lie elsewhere.

I tried to submit my application by EFS but was unable to pay the fees because RAM was down. What recourse do I have, since the program requires the application to be complete on filing including the requisite fees?

If RAM was unavailable at the time of filing (during ordinary business hours) applicant should fax in the fee payment on the same day as the filing of the application accompanied by a statement that RAM was unavailable. The statement must be specific as to the time period of the alleged outage. Furthermore, applicant should include a statement (filed by EFS) to this effect in the application to ensure that the application is not inadvertently held not to be in condition for examination. Applicant is advised to contact the USPTO's Patent Electronic Business Center, 1-866-217-9197 (toll-free for U.S.) or 571-272-4100 (local & international callers) from 6 a.m. to 12 Midnight Eastern Time, Monday - Friday or by e-mail to ebc@uspto.gov to verify that the systems are unavailable and that the problem does not lie elsewhere.

I am filing a continuation of an application that has more than 20 claims. How do I submit the application since no preliminary amendments are permitted?

The application should be submitted with the claim set that is being presented for examination. Any changes to the specification, such as benefit claims, must be incorporated in the specification as filed.

If I filed a Petition to Make Special before August 25th, 2006 under the old procedures and the petition was dismissed affording an opportunity to rectify within a stated period, which procedures apply to the corrected submission?

The old procedures will apply and if the renewed petition is granted the application will be treated as special but not have the benefit of or be subject to the requirements of the AE procedures.