Expediting Patent RightsExpediting Patent Rights

David JonesDavid Jones

November 18, 2005November 18, 2005

Topics:Topics:

Early Publication for Provisional Early Publication for Provisional RightsRights

Petition to Make Special for Early Petition to Make Special for Early ExaminationExamination

Provisional rights:Provisional rights:

35 USCS § 154(d) (2005):35 USCS § 154(d) (2005):

(1)(1) IN GENRAL – In addition to other rights provided IN GENRAL – In addition to other rights provided by this section, a patent shall include the right by this section, a patent shall include the right to obtain a reasonable royalty from any person to obtain a reasonable royalty from any person who, during the period beginning on the date of who, during the period beginning on the date of publication of the application for such patent publication of the application for such patent under section 122(b), or … filed under the under section 122(b), or … filed under the treaty defined in section 351(a) designating the treaty defined in section 351(a) designating the United States … and ending on the date the United States … and ending on the date the patent is issued—patent is issued—

Provisional rights: Provisional rights: (Continued)(Continued)

(A) (i)(A) (i) makes, uses, offers for sale, or sells in the makes, uses, offers for sale, or sells in the United States the invention as claimed in the United States the invention as claimed in the published patent application or imports such an published patent application or imports such an invention into the United States; orinvention into the United States; or

(ii)(ii) if the invention as claimed in the published if the invention as claimed in the published patent application is a process, uses, offers for patent application is a process, uses, offers for sale, or sells in the United States or imports sale, or sells in the United States or imports into the United States products made by that into the United States products made by that process as claimed in the published patent process as claimed in the published patent application; andapplication; and

Provisional rights: Provisional rights: (Continued)(Continued)

(B)(B) had had actual noticeactual notice of the published patent of the published patent application….application….

(2)(2) …The right under paragraph (1) to obtain a …The right under paragraph (1) to obtain a reasonable royalty shall not be available reasonable royalty shall not be available under this subsection unless the invention as under this subsection unless the invention as claimed in the patent is claimed in the patent is substantially substantially identicalidentical to the invention as claimed in the to the invention as claimed in the published patent application.published patent application.

US Early publication:US Early publication:

Applications that will be published under § 1.211 may Applications that will be published under § 1.211 may be published earlier than as set forth in § 1.211(a) at be published earlier than as set forth in § 1.211(a) at the request of the applicant. Any request for early the request of the applicant. Any request for early publication must be accompanied by the publication fee publication must be accompanied by the publication fee set forth in § 1.18(d). If the applicant does not submit a set forth in § 1.18(d). If the applicant does not submit a copy of the application in compliance with the Office copy of the application in compliance with the Office electronic filing system requirements pursuant to § electronic filing system requirements pursuant to § 1.215(c), the Office will publish the application as 1.215(c), the Office will publish the application as provided in § 1.215(a). No consideration will be given to provided in § 1.215(a). No consideration will be given to requests for publication on a certain date, and such requests for publication on a certain date, and such requests will be treated as a request for publication as requests will be treated as a request for publication as soon as possible.soon as possible.

--37 CFR 1.21937 CFR 1.219

PCT Earlier Publication on the PCT Earlier Publication on the Applicant's RequestApplicant's Request

Publication under Articles 21(2)(b) and 64(3)(c)(i) Publication under Articles 21(2)(b) and 64(3)(c)(i) shall be effected by the International Bureau shall be effected by the International Bureau promptly after the applicant has asked for it and, promptly after the applicant has asked for it and, where a special fee is due under paragraph (a), where a special fee is due under paragraph (a), after receipt of such fee. after receipt of such fee.

-PCT Rule 48.4(b)-PCT Rule 48.4(b)

““[W]hen the applicant asks the International [W]hen the applicant asks the International Bureau to publish his international application Bureau to publish his international application earlier, the International Bureau does so.”earlier, the International Bureau does so.”

-PCT Applicant’s Guide v. 1 § 306-PCT Applicant’s Guide v. 1 § 306

Foreign Filing License for Foreign Foreign Filing License for Foreign Filing Under the PCTFiling Under the PCT

A license for foreign filing is not required to A license for foreign filing is not required to file an international application in the United file an international application in the United States Receiving Office but may be required States Receiving Office but may be required before the applicant or the U.S. Receiving before the applicant or the U.S. Receiving Office can forward a copy of the international Office can forward a copy of the international application to a foreign patent office, application to a foreign patent office, the the International BureauInternational Bureau or other foreign or other foreign authority.authority.

- MPEP 1832 citing 35 U.S.C. 368, 37 CFR 5.1 and 5.11- MPEP 1832 citing 35 U.S.C. 368, 37 CFR 5.1 and 5.11

Petition to Make Special for Early Petition to Make Special for Early ExaminationExamination

New applications ordinarily are examined in the order of New applications ordinarily are examined in the order of their their effectiveeffective United States filing dates. Certain United States filing dates. Certain exceptions are made by way of petitions to make exceptions are made by way of petitions to make special, Examples of conditions under which exceptions special, Examples of conditions under which exceptions are made include:are made include:

ManufactureManufacture

InfringementInfringement

Applicant’s HealthApplicant’s Health

Applicant’s AgeApplicant’s Age

Environmental QualityEnvironmental Quality

EnergyEnergy

Inventions Relating to Inventions Relating to Recombinant DNARecombinant DNA

Applications Relating to Applications Relating to SuperconductivitySuperconductivity

Inventions relating to HIV/AIDS Inventions relating to HIV/AIDS and Cancerand Cancer

Inventions for Countering Inventions for Countering TerrorismTerrorism

Biotechnology Applications from Biotechnology Applications from Small EntitiesSmall Entities

Catch-All – Special Examining Catch-All – Special Examining Procedure for Certain New Procedure for Certain New Applications – Accelerated Applications – Accelerated ExaminationExamination

- MPEP 708.02- MPEP 708.02

Requirements for Catch-All Provision Requirements for Catch-All Provision under MPEP 708.02 VIIIunder MPEP 708.02 VIII

(A)(A) Submits a petition to make special accompanied by Submits a petition to make special accompanied by the fee set forth in 37 CFR 1.17(h);the fee set forth in 37 CFR 1.17(h);

(B)(B) Presents all claims directed to a single invention, or Presents all claims directed to a single invention, or if the Office determines that all the claims if the Office determines that all the claims presented are not obviously directed to a single presented are not obviously directed to a single invention, will make an election without traverse as invention, will make an election without traverse as a prerequisite to the grant of special status…;a prerequisite to the grant of special status…;

(C)(C) Submits a statement(s) that a pre-examination Submits a statement(s) that a pre-examination search was made, listing the field of search by class search was made, listing the field of search by class and subclass, publication, Chemical Abstracts, and subclass, publication, Chemical Abstracts, foreign patents, etc…;foreign patents, etc…;

Requirements for Catch-All Provision under Requirements for Catch-All Provision under

MPEP 708.02 VIIIMPEP 708.02 VIII (Continued)(Continued)

(D)(D) Submits one copy each of the references deemed Submits one copy each of the references deemed most closely related to the subject matter most closely related to the subject matter encompassed by the claims if said references are encompassed by the claims if said references are not already of record; andnot already of record; and

(E)(E) Submits a detailed discussion of the references, Submits a detailed discussion of the references, which discussion points out, with the particularity which discussion points out, with the particularity required by 37 CFR 1.111 (b) and (c), how the required by 37 CFR 1.111 (b) and (c), how the claimed subject matter is patentable over the claimed subject matter is patentable over the references. references.

The special examining procedure of The special examining procedure of MPEP 708.02 VIII (accelerated examination) MPEP 708.02 VIII (accelerated examination)

involves the following procedures:involves the following procedures:

(A)(A) The new application, having been granted The new application, having been granted special status will be taken up by the examiner special status will be taken up by the examiner before all other categories of applicationsbefore all other categories of applications except those clearly in condition for allowance except those clearly in condition for allowance and those with set time limits.and those with set time limits.

(B)(B) During the 3-month period for reply, applicant During the 3-month period for reply, applicant is encouraged to arrange for an interview with is encouraged to arrange for an interview with the examiner in order to resolve, with finality, the examiner in order to resolve, with finality,

as many issues as possible.as many issues as possible.

The special examining procedure of VIII The special examining procedure of VIII (accelerated examination) involves the (accelerated examination) involves the

following procedures:following procedures: (Continued)(Continued)

(C)(C) Subsequent to the interview, or responsive to the Subsequent to the interview, or responsive to the examiner's first action if no interview was had, applicant examiner's first action if no interview was had, applicant will file the "record" reply. The reply at this stage, to be will file the "record" reply. The reply at this stage, to be proper, must be restricted to the rejections, objections, proper, must be restricted to the rejections, objections, and requirements made. and requirements made. Any amendment which Any amendment which would require broadening the search field will be would require broadening the search field will be treated as an improper reply.treated as an improper reply.

(D)(D) The examiner will, The examiner will, within 1 monthwithin 1 month from the date of from the date of receipt of applicant's formal reply, take up the receipt of applicant's formal reply, take up the application for final disposition. This disposition will application for final disposition. This disposition will constitute either a final action which terminates with the constitute either a final action which terminates with the setting of a 3-month period for reply, or a notice of setting of a 3-month period for reply, or a notice of allowance. allowance.

After allowance, these applications are given After allowance, these applications are given top top priority for printingpriority for printing..

See MPEP § 1309See MPEP § 1309

Any statement in support of a petition to Any statement in support of a petition to make special must be based on a good make special must be based on a good faith belief that the invention in fact faith belief that the invention in fact

qualifies for special status.qualifies for special status. See 37 CFR 1.56 and 10.18; See 37 CFR 1.56 and 10.18;

and and General Electro. v. General General Electro. v. General Music Music

19 F.3d 1405 (Fed. Cir. 19 F.3d 1405 (Fed. Cir. 1994)1994)

There is no provision for "withdrawal" There is no provision for "withdrawal" from special status.from special status.