Getting to the Goalpost: Achieving Patent Allowance in the United - - PowerPoint PPT Presentation

Getting to the Goalpost: Achieving Patent Allowance in the United States and Canada Quickly and Efficiently Matt Leaper & Elliott Simcoe September 2018

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Top Formality Differences

• 1. Excess claim fees
• 2. Disclosure Requirements
• 3. Continuation Practice
• 4. Double Patenting
• 5. Abandonment
• 6. Translation Requirements
• 7. Maintenance fees
• 8. Restoration of Priority

Expediting U.S Prosecution

What are your options?

– Track One Prioritized Examination – Accelerated Examination – PPH – Petition to Make Special – First Action Interview Pilot Program – Collaborative Search Pilot Program

Expediting U.S Prosecution

What are your options?

– Track One Prioritized Examination – Accelerated Examination – PPH – Petition to Make Special – First Action Interview Pilot Program – Collaborative Search Pilot Program

Normal U.S. Prosecution Timeline

1st Office Action Application Filed Final Disposition* 2 - 4 years

*Allowance, Final Rejection, Abandonment

Examination Procedure

Regular Docket

• 14 months to first Office Action
• 4 month to issue subsequent office

actions

• 3 years to issue
• No time frame for “final” disposition
• No guarantee Patent Office will meet

these deadlines

• Results in the pendency above

Special Docket

• Applications examined out
• f turn
• Can result in significantly

expedited prosecution

Track One Timeline

• Application + Fee + Request = Special Docket
• Goal:

1st Office Action Application Filed Final Disposition 12 months

Track One Timeline

Track One Normal

Filing to First OA 3.1 15.5 Filing to Final Disposition 8.7 24.3

Average Pendency (months) Through June, 20181

1 USPTO Patent Dashboard, https://www.uspto.gov/corda/dashboards/patents

Track One Timeline

1 2 3 4 5 6 7 8 9

Petition Grant to First Office Action Petition Grant to Allowance Petition Grant to Final Disposition Filing to Petition Grant

1.5

Pendency1 (months)

7.2 5.6 1.6 1.5 1.5 1 USPTO Patent Dashboard, https://www.uspto.gov/corda/dashboards/patents

Track One Timeline

U.S. Pat. No. 8,094,942

• First patent processed under

Track One prioritized examination.

• Issued within 4 months after

filing

Track One Eligibility

A new U.S. utility or plant application, including continuation, continuation-in-part, and divisional applications.

• OR-

A pending patent application in which a Request for Continued Examination (RCE) has been filed.

Track One Requirements

1) Type of Application 2) Ready for Examination 3) Number of claims 4) Fees 5) Request form 6) Yearly limit

Track One Requirements

1) A new utility or plant patent application filed under 35 U.S.C. § 111(a)

• Includes continuation, divisional and continuation-in-part

applications

• Utility must be filed via EFS-Web plant must filed in paper
• Applications entering the national stage under 35 U.S.C.

371 are not eligible

• Design, reissue, provisional and reexamination applications

are also not eligible

Track One Requirements

2) A specification as prescribed by 35 U.S.C. § 112

• at least one claim and drawing, if necessary; and
• either:
• an inventor’s oath or declaration, executed for each inventor;
• r
• application data sheet including the legal name, mailing

address, and residence for each inventor

Track One Requirements

3) Limitations on claim set

• 4 or fewer independent claims
• 30 or fewer total claims
• No multiple dependent claims

Track One Requirements

4) Track One Fees

• One time request for prioritized examination plus

processing fee (e.g., $4000+$140, small business discounts available)

• Standard filing, search, examination fees
• Excess claim fees (more than 3 independent or 20 total

claims)

• Application size fee (more than 100 sheets of paper)

Track One Requirements

5) Request Form

PTO/AIA/424

• Request made at time

application is filed

Track One Requirements

6) Limited to 10,000 applications per year

• USPTO has received 7389 Track One applications

between October, 2017 - June, 20181

1 USPTO Patent Dashboard, https://www.uspto.gov/corda/dashboards/patents

Track One Termination

Prioritized examination in the Track One Program will be terminated if:

• Applicant files for an extension of time to reply or requests

suspension of action

• Applicant files an amendment resulting in more than 4

independent claims, more than 30 total claims, or a multiple dependent claim

Upon termination, application is placed on the Examiner’s regular docket in accordance with its stage of prosecution

Track One Statistics

• Track One applications1

1 USPTO Patent Dashboard, https://www.uspto.gov/corda/dashboards/patents

45% 44%

Cumulative

Expediting U.S Prosecution

What are your options?

– Track One Prioritized Examination – Accelerated Examination – PPH – Petition to Make Special – First Action Interview Pilot Program – Collaborative Search Pilot Program

Accelerated Examination Timeline

• Appl/Fee/Petition + Other Reqs. = Special Docket
• Goal:

12 months 1st Office Action Application Filed Final Disposition

Accelerated Examination Timeline

Average Pendency (months) Through May, 20151 Accelerated Normal

Filing to First OA 2.4 ~17 Filing to Final Disposition 12.6 ~28

1 USPTO Patent Dashboard, https://www.uspto.gov/corda/dashboards/patents

Accelerated Examination Eligibility

A new U.S. utility or plant application, including continuation, continuation-in-part, and divisional applications.

• OR-

A pending patent application in which a Request for Continued Examination (RCE) has been filed.

Accelerated Examination Requirements

1) Type of Application 2) Ready for Examination 3) Number of claims 4) Fees 5) Petition 6) No yearly limit

Accelerated Examination Requirements

1) A new utility or design application filed under 35 U.S.C. 111(a)

• Includes continuation, divisional and continuation-in-part

applications

• Must be filed via EFS-Web
• Applications entering the national stage under 35 U.S.C.

371 are not eligible

• Plant, reissue, provisional and reexamination applications

are also not eligible

Accelerated Examination Requirements

2) Application must be complete, correct, and ready for

examination

• Declaration signed by all inventors
• Formal drawings (if any drawings are required)
• Title and abstract
• No preliminary amendment
• Translation of non-English priority documents or specification
• Electronic submissions of sequence listings, large tables, or

computer listings

• Foreign priority claim
• Domestic benefit claims

Accelerated Examination Requirements

3) Limitations on claim set

• 3 or fewer independent claims
• 20 or fewer total claims
• no multiple dependent claims
• directed to single invention

Accelerated Examination Requirements

4) Accelerated Examination Fees

• Petition fee
• $140, small business discounts available
• no fee with statement application is directed to

environmental quality or energy conservation or counter- terrorism

• Standard filing, search, examination fees
• Application size fee (more than 100 sheets of paper)

Accelerated Examination Requirements

5) Petition To Make Special Form PTO/SB/28

Accelerated Examination Requirements

5) Petition To Make Special (cont’d)

• Agreements made in Petition regarding:
• …will only appeal rejections of the independent claims
• …will elect one invention
• …will interview before a first Office Action if requested
• …a pre-examination search was conducted
• …an Accelerated Examination Support Document (AESD) is

provided

Accelerated Examination Requirements

Pre-Examination Search Document

http://www.uspto.gov/patent/initiatives/accelerated-examination

Scope of search

• Identify field of search by U.S. class/subclass
• Date of search
• For database searches, the search logic or chemical structure used

as query and name of files searched and database service

• Search must include U.S. patents/publications, foreign patent,

documents and non-patent literature

• Search must encompass all features of claims, including those that

may be later claimed

• Statement of search must meet the requirements

Accelerated Examination Requirements

Pre-Examination Search Document

http://www.uspto.gov/patent/initiatives/accelerated-examination

Does search report from foreign patent office satisfy pre- examination search?

• Partially for foreign search requirement:
• if it includes a text search of foreign patent documents that includes the

sources required under the PCT minimum documentation requirements and provides required search history

• Other portions of search (U.S. and non-patent) still need to be

done

• PCT search report is usually not satisfactory since it does not

include search history

Accelerated Examination Requirements

Accelerated Examination Support Document

http://www.uspto.gov/patent/initiatives/accelerated-examination

• Must include an Information Disclosure Statement (IDS) citing

the references deemed most closely related to the subject of each claim

• Must identify, for each cited reference, all the limitations in the

claims that are disclosed by the reference specifying where the limitation is disclosed in the cited reference

• Must include a detailed explanation of how each claim is

patentable over the cited reference

Accelerated Examination Requirements

Accelerated Examination Support Document

http://www.uspto.gov/patent/initiatives/accelerated-examination

• Must include a concise statement of the utility of the invention

as defined in each independent claim (except for design application)

• Must include a showing of where each limitation of the claims

find support under 35 USC112, first paragraph

• Must identify each means- (or step-) plus-function claim under

35 USC 112, sixth paragraph

• Must identify corresponding structure, material, or acts in the

specification

Accelerated Examination Petition Review

• Petition is carefully examined for strict compliance

with all requirements

• If search or AESD are insufficient, petition will be dismissed

(will indicate what needs to be done)

• Applicant will get one opportunity (one month) to remedy
• Can generally telephone to confirm with USPTO specialist

that planned corrections will perfect the filing

• If application is not in compliance and ready for

examination, petition will be denied with no

• pportunity to cure

Accelerated Examination Petition Review

Common application defects include:

• Presence of preliminary amendment
• More than 3 independent claims or 20 total claims
• Defect causing Office of Initial Patent Examination (OIPE) to

mail a defect notice

• Improper benefit claim to a prior application
• Presence of petition for a non-signing inventor

Accelerated Examination Timeline

U.S. Pat. No. 7,188,939

• First patent processed under

AE

• Issued within 6 months after

filing

Accelerated Examination

Special Considerations

• nly 1 month to respond to an office action
• Petition is denied » handled with no special status
• Petition granted

Accelerated Examination Statistics

Accelerated Examination

500 1000 1500 2000 2500 2007 2008 2009 2010 2011 2012 2013 2014 2015 Number of Petitions Filed Year

Expediting U.S Prosecution

What are your options?

– Track One Prioritized Examination – Accelerated Examination – PPH – Petition to Make Special – First Action Interview Pilot Program – Collaborative Search Pilot Program

PPH Overview

Claims allowable in the Office of first filing are eligible for accelerated examination in an Office of later filing

PPH Overview

Global and IP5 PPH Participants with the USPTO PPH Agreements with other IPO’s

∙ Taiwan ∙ Brazil ∙ Czech Republic ∙ Eurasian ∙ Mexico ∙ Nicaragua ∙ Philippines ∙ Romania ∙ Argentina

PPH Eligibility

• Related foreign application has allowable subject matter

(including PCT’s)

• Foreign application and U.S. application share common

earliest priority date

• Direct claim of priority not necessary
• E.g. by-pass continuation which claims benefit of a PCT application

claiming priority to application A filed with OEE » when claim in A is considered allowable, by-pass continuation is eligible for PPH

• Substantive examination has not started in USPTO
• Provisional, plant, design and reissue applications are not

eligible

PPH Requirements

• Applicant must submit:
• PPH Request
• Claims correspondence table indicating how all claims

correspond to allowable claim(s)

• Copy of last Office Action issued before Decision of Grant or

latest PCT work product

• Information Disclosure Statement (IDS) listing the

documents cited by the Foreign Patent Office or PCT

• No special PPH filing fee

PPH Request

Form PTO/SB/20GBL

PPH Examination Procedure

• Application granted special status
• Usually within 2 months of filing request
• Examination begins 2-3 months after request granted
• If PPH Request is not granted, get one chance to fix
• Claims must correspond to allowed foreign or PCT

claims at all times during examination

• All subsequent foreign Office Actions must be

submitted to the USPTO

PPH Statistics

• U.S. Statistics, as of end of December, 20171

PPH Request to First OA 6.3 months PPH Request to Final Disposition 18.9 months First OA Allowance Rate 22.7% Grant Rate 84%

1 http://www.jpo.go.jp/pph-portal/statistics

Expediting U.S Prosecution

What are your options?

– Track One Prioritized Examination – Accelerated Examination – PPH – Petition to Make Special – First Action Interview Pilot Program – Collaborative Search Pilot Program

Petition To Make Special

• Petitions to Make Special are Available for:
• Age- 65 or older
• Health
• Normal course of prosecution may result in applicant’s

inability to assist prosecution

• Requires proof but can request to keep information out of the

public record (e.g. doctor’s certificate)

• Application advanced out of turn
• Can be filed anytime during pendency

Petition To Make Special

Form- PTO/SB/130 Signed by:

• Inventor with statement of age

OR

• Attorney- retain evidence of age

(e.g., copy of driver’s license)

No Fee!

Expediting U.S Prosecution

What are your options?

– Track One Prioritized Examination – Accelerated Examination – PPH – Petition to Make Special – First Action Interview Pilot Program – Collaborative Search Pilot Program

First Action Interview Program

• Applicant is entitled to a first action interview, upon

request, prior to the first Office Action on the merits

• Examiner conducts prior art search and mails a pre-

interview communication

• Does not advance application out of turn
• No fee

First Action Interview Program Eligibility

• Type of Application
• Non-reissue, non-provisional utility application under 35

U.S.C. § 111(a)

• National stage application under 35 U.S.C. § 371
• Claims
• 3 or fewer independent and 20 or fewer total claims
• No multiple dependent claims
• Single invention
• Request filed at least one day before First OA

First Action Interview Program

Form PTO/SB/413C

First Action Interview Program

Begin

1) Examiner conducts prior art search 2) If not allowed, issues Pre-Interview Communication

Interview Route

3) Within 30 days + 1 mo. extension, Applicant must submit interview request form 4) Must conduct or at least schedule interview within 60 days from request’s filing date 5) Interview request form must include proposed amendments or arguments clearly labeled as “PROPOSED” at header or footer

No Interview Route

3) File via EFS-Web a request to not have an interview, a formal reply, or take no action

USPTO considers Pre-Interview Communication as 1st OA

First Action Interview Program

First Action Interview Program

Form PTOL-413A

First Action Interview Program Statistics

USPTO Patent Dashboard, https://www.uspto.gov/corda/dashboards/patents

Collaborative Search Program

• Pilot program with KIPO and

JPO began Nov. 1, 2017 for 3 years

• Applications accorded special

status prior to first office action

• Limited to 400

applications/year

• No fee required

Collaborative Search Program Requirements

• Non-reissue, non-provisional utility application filed under 35

U.S.C. § 111(a) or national stage application filed under 35 U.S.C. § 371 and earliest priority date after 3/16/2013

• Completed petition (Form PTO/SB/437) filed before examination

has commenced via EFS-Web

• Petition and any request filed in designated partner IP office

within 15 days of U.S. petition filing

• 3 or fewer independent claims, 20 or fewer total claims, no

multiple dependent claims

Collaborative Search Program

Form PT/SB/437

Collaborative Search Program

Collaborative Search Program Timeline

Exchange Results Petition Granted Exchange Draft OA 4 months 2 months Issue First OA

Summary

Track 1

• Accel. Exam.

Petition To Make Special PPH FAI

• Collab. Search

Program

$4140 $140 No Fee No Fee No Fee No Fee 4 Indep Claims 30 Total Claims 3 Indep Claims 20 Total Claims No Limit Claims match allowable foreign claims 3 Indep Claims 20 Total Claims 3 Indep Claims 20 Total Claims No Support Documents Pre-Exam Search + AESD No Support Documents

• Correspond. Claim

Table + Last foreign OA + IDS No Support Documents Petition to partner IP Office +

• Correspond. Claim

Table 3.1 months to 1st OA 2.4 months to 1st OA Moves application to Special Docket 6.3 months to 1st OA 15.5 months to Pre-Interview Comm. ~6-7 months to 1st OA

Current Client Service Standards

• Time to first Examiner’s Report (ER) for 90% of

applications from request for examination (due within 5 years of PCT filing)

– Organic Chemistry = 15 months – Mechanical = 16 months – Biotechnology = 17 months – General Chemistry and Electrical = 18 months

• Time to subsequent ER for 90% of applications

– Mechanical = 5 months – General and Organic Chemistry = 6 months – Biotechnology and Electrical = 9 months

Time to Examination

• Examination may be deferred up to five years from

filing date (likely to change to 3 years in 2019)

• …Or examination may be expedited

Applicant may control the prosecution time:

Special Order

• Two procedures:
• 1. Fee based ($500)
• Statement required explaining why failure to advance will prejudice

rights of requestor (no affidavit, declaration, or other evidence required)

• Third party could request
• 2. Green technology (“Green IP”)
• Applicant Declaration Required
• Application relates to technology the commercialization of which

would help to resolve or mitigate environmental impacts or conserve the natural environment and resources

PPH

• PPH request can be based
• either on the latest PCT work product (written opinion of the

ISA (WO-ISA) or international preliminary examination (IPER))

• or on the national work product established during the

processing of a national application or a PCT application that has entered the national phase before one of the participating offices including USPTO

• No government fee

PPH Workflow

Key Differences Between PPH in US & Canada

• In the USPTO, it seems that the goal of the PPH

Program is to accelerate examination of the application, not its allowance

• In the USPTO, a shorter wait time to the first Office

Action offers the most significant advantage of the PPH Program

• In Canada, quick allowance seems to be the main

goal

Benefits of using the PPH program in Canada

• Significantly lower prosecution costs
• Higher allowance rate
• Fewer office actions

Time from PPH Request to First Office Action

2 4 6 8 10 12 14

PPH Applications (CIPO) PPH Applications (USPTO) All Applications (CIPO) Months

Average Pendency from PPH Request to First Office Action (Months)

Time from PPH Request to Final Decision

5 10 15 20 25 30 35

PPH Applications (CIPO) PPH Applications (USPTO) All Applications (CIPO) Months

Average Pendency from PPH Request to Final Decision (Months)

Average Number of Office Actions

0,5 1 1,5 2 2,5 3 3,5

PPH Applications (CIPO) PPH Applications (USPTO) All Applications (CIPO) All Applications (USPTO) Number

Average Number of Office Actions

First Action Allowance Rate

5 10 15 20 25 30 35

PPH Applications (CIPO) PPH Applications (USPTO) All Applications (CIPO) All Applications (USPTO) Percentage

First Action Allowance Rate (%)

Advancing Prosecution After Final

What are your options?

– Challenge the Finality of the Rejection – Amendment After Final – Request for Continued Examination – After Final Consideration Pilot Program v2.0 – Appeal

Challenging Finality

• A final action is intended to close prosecution after

any second or subsequent examination the claims.

• Proper unless the Examiner introduces a new ground
• f rejection that is:
• NOT necessitated by a claim amendment; OR
• NOT based on information submitted in an IDS filed after the

preceding non-final action but before the final action.

• Proper on a first action only if:
• Application is continuation or after filing an RCE and all the

claims are drawn to the same invention and would have been properly finally rejected.

• E.g., by filing an RCE without amendments.

Challenging Finality

• If the criteria is met, then a request for withdrawal of

a premature Final Office Action may be filed

• Request may be negotiated with the Examiner during

an interview prior to filing

• Must be filed while the application is still before the

Examiner

• Not a response to the Final Office Action
• If successful, then the Examiner will withdraw finality
• If unsuccessful, then a complete response must be filed

Advancing Prosecution After Final

What are your options?

– Challenge the Finality of the Rejection – Amendment After Final – Request for Continued Examination – After Final Consideration Pilot Program v2.0 – Appeal

Amendment After Final

• Entry of proposed amendment is not a matter of

right, i.e., the Examiner may refuse entry.

• Amendments will likely be entered if they put the

application in condition for allowance by:

• Cancelling each rejected claim; and/or
• Complying with any requirements or objections.
• Examiner is not required to interview the case, but

may do so voluntarily upon request.

Advancing Prosecution After Final

What are your options?

– Challenge the Finality of the Rejection – Amendment After Final – Request for Continued Examination – After Final Consideration Pilot Program v2.0 – Appeal

Request for Continued Examination

• A reply to the Final Office Action may be filed no

later than six months from the mailing date of the Action.

• Must result in allowance; else, an RCE or a notice of

appeal must be filed to advance prosecution.

• The submission may include:
• An IDS
• An amendment
• New arguments
• New declarations
• If an Office Action is outstanding, then the

submission must provide a complete reply.

Request for Continued Examination

• May not be used to cancel pending claims and

introduce new claims directed to a different invention

• May be filed after receipt of a Notice of Allowance

and before payment of the Issue Fee to:

• Ensure consideration of previously uncited art
• Make other changes to the claims
• Create an opportunity to make additional corrections
• May be filed after payment of the issue fee with a

petition for similar reasons

• May be avoided by the QPIDS procedure

Advancing Prosecution After Final

What are your options?

– Challenge the Finality of the Rejection – Amendment After Final – Request for Continued Examination – After Final Consideration Pilot Program v2.0 – Appeal

AFCP v2.0 Eligibility

• Provides a limited opportunity to amend the claims

without filing an RCE

• A utility, design or plant non-provisional application

that has received a final rejection

• National stage applications
• Continuing applications
• But not reissue or reexamination applications
• Only one request for consideration may be filed

AFCP v2.0 Requirements

• A transmittal form (PTO/SB/434) requesting

consideration under AFCP 2.0

• A response, including an amendment to at least one

independent claim that does not broaden its scope

• A statement applicant is willing to participate in an

Examiner interview

• Any fees due (e.g. extension of time)

AFCP v2.0 Procedure

• Examiner reviews submission to determine all

requirements have been met

• Examiner is given 3 hours to perform any additional

search if required

• if cannot be completed, will mail Advisory Action
• Examiner considers if amendment places application in

condition for allowance

• YES! » Notice of Allowance
• NO!?! » Schedules interview

Advancing Prosecution After Final

What are your options?

– Challenge the Finality of the Rejection – Amendment After Final – Request for Continued Examination – After Final Consideration Pilot Program v2.0 – Appeal

Appeal Process

Notice of Appeal

• Who can file a Notice of Appeal?
• An applicant whose claims has been twice rejected
• A patent owner during re-examination
• When to File a Notice of Appeal
• For an applicant, upon any claim being twice rejected
• For an owner, upon claims being finally rejected during re-

examination

• How to File a Notice of Appeal
• File a Notice of Appeal, form AIA/31
• Pay the required fees

Notice of Appeal

Form AIA/31

Appeal Brief

• Requirements
• A petition to invoke the supervisory authority of the

Director under 37 CFR 1.181

• A claim amendment
• A letter from the examiner stating that prosecution is

suspended without withdrawing the appealed rejection

• Deadlines
• No extension fee required if filed within 2 months from the

date of filing the Notice of Appeal.

• Extension fee required after 2 months.

Appeal Brief

• Consequences of Not Filing an Appeal Brief
• If no allowed claims, then the appeal will be dismissed and

the application will go abandoned.

• If allowed claims, then the application is not abandoned

and may be reinstated by filing a petition.

• If the claims contain allowable subject matter, yet are
• bjected for dependency, then the application will go

abandoned.

Examiner's Answer

• May counter arguments in the Appeal Brief
• May include a new ground of rejection
• New evidence and/or arguments
• Response options may vary accordingly:
• May argue against the counter-arguments in the reply

brief

• If a new grounds of rejection is asserted, then:
• May request to withdraw the appeal and re-open prosecution
• May maintain the appeal and address each now ground of

rejection in the reply brief

Reply Brief

• May be filed within the later of:
• Two months from the date of the Examiner’s Answer
• A decision refusing a petition refusing to designate a new

ground of rejection in the Examiner’s Answer

• Generally not required
• If not filed, then the application is forwarded to the

Board for decision on the appeal

• May be required if:
• The Examiner’s Answer (or a substitute) designates a new

ground of rejection

Oral Hearing, Decisions, Rehearings

• An oral hearing is available upon request (form AIA/31)
• If the rejection is affirmed or affirmed-in-part, then the

Applicant may:

• Appeal to the D.C. Court of Appeals; or
• File an amendment with an RCE
• If the rejection is reversed, then the case is brought up

for immediate action by the Examiner, who may:

• Issue a notice of allowance; or
• Reopen prosecution and enter a new rejection.
• A request for rehearing may be filed within two months
• f the date of the decision.

Other Response Options

• If an RCE is filed while an appeal is pending, then the

appeal is withdrawn and prosecution re-opened.

• May file a continuation or divisional application with

claims that overcome the appealed rejection, and allow the parent case to go abandoned.

Post Allowance Procedures at the USPTO

What are your options?

– File a Continuation, CIP, or Divisional – Quick Path Information Disclosure Statement

Continuation Practice

• A continuation application is a non-provisional patent

application that allows you to seek protection for additional claims based on the originally filed disclosure.

• No new matter (else, file as a CIP)
• Must be co-pendent with the parent application,

meaning that it must be filed prior to issuance.

• Typically no more than 4-6 weeks after payment of the issue

fee.

• New claims may be submitted after filing
• Typically no more than 2-3 weeks after

Continuation Practice

• Benefits of filing the continuation application will

depend upon your business goals.

– Obtain broader claims based on a more precise understanding of the novel aspects of the disclosure; – Protect related inventions that were disclosed in the parent application but otherwise not claimed – Keep the family open so that you can more precisely target any potential infringers.

• If you do not file the continuation application, then

the family will close permanently.

Continuation Practice

• U.S. Continuation (typ.)

– Inherits the parent application’s priority date, but is limited to the parent application’s disclosure – No new matter

• U.S. Continuation-in-Part

– May add new subject matter to the existing disclosure of the parent application while retaining the priority date for claims based on the original disclosure. – Claiming any new matter spoils priority

• If the CIP’s claim extends even slightly past what a parent

application disclosed more than a year earlier, the parent can be used as prior art against the CIP claim.

Continuation Practice

• U.S. Divisional

– Usually the result of a restriction requirement – No new matter – Intended for different inventions – Practically speaking, no different than a continuation.

Final Action Practice (Canada)

• A Final Action is just that – “final”.
• Applicant can make any amendments and put

forward any arguments to address the objections raised in the Final Action. But any amendments submitted in response to a Final Action are considered not to have been made if the response does not persuade the Examiner to allow the application.

• Quickly open a dialog with the Examiner.

Patent Appeal Board Practice

• After Final Action, the Examiner will forward the

application to the Commissioner of Patents for review who can decide that specific amendments to the application are required.

• Alternatively, an oral hearing before the Patent

Appeal Board could be ordered. At the oral hearing, the Applicant can be represented by counsel. It may be at least 1-2 years or longer before the oral hearing is scheduled.

Patent Appeal Board Practice (Canada)

• Once an oral hearing is held, the Patent Appeal

Board should be in a position to make a recommendation to the Commissioner of Patents concerning disposition of the application within 4-6 months.

• The Commissioner's decision following receipt of the

Patent Appeal Board recommendation can be appealed to Federal Court.

Post Allowance Procedures at the USPTO

What are your options?

– File a Continuation, CIP, or Divisional – Quick Path Information Disclosure Statement

Quick Path Information Disclosure Statement

• Pilot Program set to expire Sept. 30, 2018
• Used to submit references after issue fee payment
• IDS is filed with “conditional” RCE
• Examiner will consider IDS and decide if prosecution

needs to be reopened

• If Examiner decides not to reopen, RCE fee will not be

charged and “conditional” RCE will not be processed

Quick Path Information Disclosure Requirements

• Must be a utility or reissue application
• Transmittal form designating as QPIDS submission (PTO/SB/09)
• IDS (+Fee) with timeliness statement (37 CFR 1.97(e))
• Web-based ePetition to Withdraw from Issue (+Fee)
• https://www.uspto.gov/patents-application-process/applying-
• nline/epetition-resource-page
• Request for Continued Examination (+Fee)
• Fees paid via authorization to charge a deposit account
• Filed via EFS-Web

Quick Path Information Disclosure Requirements

Post Allowance Practice (Canada)

• No continuations
• Voluntary divisionals discouraged due to laws against

double patenting

• Amendment after allowance, for minor amendments

where no further search required (CAD$400 fee)

• Abandonment/reinstatement procedures to add new

claims (CAD$200 fee)

Thank You

Matt Leaper mleaper@smart-biggar.ca Elliott Simcoe esimcoe@smart-biggar.ca