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Chris FildesFILDES & OUTLAND, P.C.
IP Practice in Japan Committee Pre-Meeting
AIPLA Annual Meeting, October 20, 2015
USPTO PILOT PROGRAMS
1© AIPLA 2015
Quick Path Information Disclosure Statement (QPIDS) After Final Consideration Pilot (AFCP) 2.0 First Action Interview Pilot Program Extended Missing Parts Pilot Program Glossary Pilot Program Expedited Patent Appeal Pilot Streamlined Expedited Patent Appeal Pilot for Small
Entity Collaborative Search Pilot Program Proposed Pilot Program on Alternative Approach to
Institution Decision
PILOT PROGRAMS
2 © AIPLA 2015
IDS submissions after payment of the issue fee are considered by examiners before determining whether prosecution should be reopened
RCE fee is paid up-front when the Quick Path submission is filed
fee is returned to the applicant if the examiner determines that none of the items of information in the IDS require further consideration
if the examiner should determine that further consideration is in fact required, then the USPTO will enter the RCE and keep the RCE fee
Quick Path Information Disclosure Statement (QPIDS)
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providing a mechanism for examiners to further consider an application after issuance of a final action
must include an amendment to at least one independent claim that does not broaden the scope of the independent claim in any aspect
the examiner is required to initiate an interview to explain the basis for not entering the amendment
After Final Consideration Pilot (AFCP) 2.0
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provides an applicant with the opportunity to conduct an interview with the examiner prior to the examiner issuing a first Office Action
examiner conducts a prior art search and provides the applicant with a report summarizing the relevant prior art and proposed rejections
applicant schedules an interview and provides the examiner with proposed amendments and arguments
If agreement can be reached during the interview, then the application may be allowed without an Office Action
if agreement is not reached, then the examiner will issue a first Office Action and the case will proceed as normal
First Action Interview Pilot Program
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allows applicants to delay payment of the search and examination fees for 12 months after the filing of a non-provisional application properly claiming priority to a provisional application
the basic filing fee remains due at the time of filing the non-provisional application
applicant may not request non-publication of the application
Extended Missing Parts Pilot Program
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the specification of the patent application must be drafted to include a glossary of term definitions at the beginning of the detailed description section
the application must be in a U.S. patent class that is examined by Technology Centers 2100, 2400, or 2600, or the business methods area of Technology Center 3600
the definitions are binding upon the applicant and later cannot be amended during prosecution
Glossary Pilot Program
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provides an appellant with expedited review of one ex parte appeal in exchange for withdrawing another ex parte appeal
both appeals must have been issued docketing notices before June 19, 2015, and both the applications which are appealed must name at least one common inventor or be owned by the same party as of June 19, 2015
USPTO desires to render final decisions in appeals made special under this program within six months
Expedited Patent Appeal Pilot
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the appellant must be entitled to small or micro entity status
the appeal being expedited must be the appellant’s only pending appeal
the appeal must have been pending before the Board as of September 18, 2015
the appeal cannot involve any claim subject to a Section 112 rejection
the appellant must agree that the PTAB may select a single claim from each ground of rejection on which basis the decision will be made
USPTO’s goal is to issue a final decision for these expedited appeals within 6 months
Streamlined Expedited Patent Appeal Pilot for Small Entity
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USPTO jointly launched collaborative search pilot programs with each of the JPO and the Korean Intellectual Property Office
to participate in the program, a petition must be filed and granted in both the U.S. application and the counterpart Japanese or Korean application
the petitions in the U.S. and foreign office should be filed within fifteen days of each other
Collaborative Search Pilot Program
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when the petition is filed, an Office Action on the merits must not have been issued in the application, and the earliest priority date of the application must be post-AIA
the U.S. application must have no more than 3 independent claims and 20 total claims directed to a single invention, and the claims of the U.S. application must substantially correspond to those in the counterpart Japanese or Korean application
a claims correspondence table indicating the substantial correspondence of the independent claims must be filed with the petition
a preliminary amendment may be filed to bring the claims in compliance with the program requirements
Collaborative Search Pilot Program (continued)
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in the JPO pilot, the USPTO and JPO will exchange search results identifying best prior art and provide a consolidated report that combines the work of the two offices
in the KIPO pilot, the USPTO and KIPO will each conduct independent searches and provide separate reports for the applicant to consider
the applicant will receive the search report and will be given the option of conducting an interview with the examiner prior to the examiner conducting a full examination of the claims and issuing an Office Action
Collaborative Search Pilot Program (continued)
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USPTO proposes to randomly select IPR petitions for inclusion in the program over a period of three to six months
the program would provide that a single APJ (administrative patent judge) would make an institution decision, whereupon institution of the IPR two additional judges would be appointed to the trial, or in other circumstances three new judges would be assigned to the panel for the trial
Proposed Pilot Program on IPR Institution Decision
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Law School Clinic Certification Pilot Program
Pro Se Pilot Examination Unit
Other Programs
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