708.02(a) Accelerated Examination [R-07.2022]

All petitions to make special, except those based on applicant’s health or age or participation in the Patent Prosecution Highway (PPH) pilot program must meet the requirements set forth in subsection I below. See MPEP § 708.02 subsection I or II (where appropriate) for the requirements for filing a petition to make special based on applicant’s health or age. For prioritized examination under 37 CFR 1.102(e), see MPEP § 708.02(b). For participation in the Patent Prosecution Highway program, see MPEP § 708.02(c).

I. REQUIREMENTS FOR PETITIONS TO MAKE SPECIAL UNDER ACCELERATED EXAMINATION

A new application may be granted accelerated examination status under the following conditions:

• (A) The application must be filed with a petition to make special under the accelerated examination program accompanied by either the fee set forth in 37 CFR 1.17(h) or a statement that the claimed subject matter is directed to environmental quality, the development or conservation of energy resources, or countering terrorism. See 37 CFR 1.102(c)(2). Applicant should use form PTO/SB/28 for filing the petition.
• (B) The application must be a non-reissue utility or design application filed under 35 U.S.C. 111(a).
• (C) The application, petition, and required fees must be filed electronically using the USPTO patent electronic filing system, EFS-Web. If the USPTO’s EFS-Web is not available to the public during the normal business hours for the system at the time of filing the application, applicant may file the application, other papers, and fees by mail accompanied by a statement that EFS-Web was not available during the normal business hours. The applicant should prominently indicate the paper filing is under the accelerated examination procedure to help ensure proper processing. Note, however, when the documents are filed in paper instead of through EFS-Web, the final disposition of the application may occur later than twelve months from the filing of the application. See subsection VIII.F. below for more information.
• (D) At the time of filing, the application must be complete under 37 CFR 1.51 and in condition for examination. For example, the application must be filed together with the basic filing fee, search fee, examination fee, and application size fee (if applicable), and an executed inventor’s oath or declaration (under 37 CFR 1.63 or 1.64) for each inventor. See subsection VIII.C. below for more information. It is noted that while an inventor’s oath or declaration is not required to obtain a filing date for applications filed under 35 U.S.C. 111(a), it is a requirement under 37 CFR 1.51 and must be present upon filing for entry in the program. Permitting an oath or declaration after filing would delay processing of the application and make it difficult to achieve the program’s goal of reaching a patentability decision within twelve months of the filing date.
• (E) The application must contain three or fewer independent claims and twenty or fewer total claims. The application must also not contain any multiple dependent claims. By filing a petition to make special under the accelerated examination program the applicant is agreeing not to separately argue the patentability of any dependent claim during any appeal in the application. Specifically, the applicant is agreeing that the dependent claims will be grouped together with and not argued separately from the independent claim from which they depend in any appeal brief filed in the application (37 CFR 41.37(c)(1)(iv)). The petition must include a statement that applicant will agree not to separately argue the patentability of any dependent claim during any appeal in the application. See form PTO/SB/28.
• (F) The claims must be directed to a single invention. If the USPTO determines that all the claims presented are not directed to a single invention, applicant must make an election without traverse in a telephonic interview. The petition must include a statement that applicant will agree to make an election without traverse in a telephonic interview. See form PTO/SB/28.
• (G) The applicant must be willing to have an interview (including an interview before a first Office action) to discuss the prior art and any potential rejections or objections with the intention of clarifying and possibly resolving all issues with respect to patentability at that time. The petition must include a statement that applicant will agree to have such an interview when requested by the examiner. See form PTO/SB/28.
• (H) At the time of filing, applicant must provide a statement that a preexamination search was conducted, including an identification of the field of search by group/subgroup of the Cooperative Patent Classification for utility applications or class/subclass of the U.S. Patent Classification for design applications and the date of the search, where applicable. For database searches, applicant must provide the search logic or chemical structure or sequence used as a query, the name of the file or files searched and the database service, and the date of the search.
  • (1) This preexamination search must involve U.S. patents and patent application publications, foreign patent documents, and non-patent literature, unless the applicant can justify with reasonable certainty that no references more pertinent than those already identified are likely to be found in the eliminated source and includes such a justification with this statement.
  • (2) This preexamination search must be directed to the claimed invention and encompass all of the features of the claims, giving the claims the broadest reasonable interpretation.
  • (3) The preexamination search must also encompass the disclosed features that may be claimed. An amendment to the claims (including any new claim) that is not encompassed by the preexamination search or an updated accelerated examination support document (see item I) will be treated as not fully responsive and will not be entered. See subsection IV below for more information.
  • (4) A search report from a foreign patent office will not satisfy this preexamination search requirement unless the search report satisfies the requirements for a preexamination search.
  • (5) Any statement in support of a petition to make special must be based on a good faith belief that the preexamination search was conducted in compliance with these requirements. See 37 CFR 1.56 and 11.18.
• (I) At the time of filing, applicant must provide in support of the petition an accelerated examination support document.
  • (1) An accelerated examination support document must include an information disclosure statement (IDS) in compliance with 37 CFR 1.98 citing each reference deemed most closely related to the subject matter of each of the claims.
  • (2) For each reference cited, the accelerated examination support document 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.
  • (3) The accelerated examination support document must 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).
  • (4) The accelerated examination support document must include a concise statement of the utility of the invention as defined in each of the independent claims (unless the application is a design application).
  • (5) The accelerated examination support document must include a showing of where each limitation of the claims finds support under 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112 in the written description of the specification. If applicable, the showing must also identify:
    • (i) each means- (or step-) plus-function claim element that invokes consideration under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, paragraph 6; and
    • (ii) the structure, material, or acts in the specification that correspond to each means- (or step-) plus-function claim element that invokes consideration under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, paragraph 6. If the application claims the benefit of one or more applications under title 35, United States Code, the showing must also include where each limitation of the claims finds support under 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112 in each such application in which such support exists.
  • (6)
    • (i) For an application that is subject to examination under AIA 35 U.S.C. 102 and 103 (see MPEP § 2159et seq. to determine if an application is subject to the first inventor to file (FITF) provisions of the AIA), the accelerated examination support document must identify any cited references that disclose subject matter that may be excepted as prior art under 35 U.S.C. 102(b)(2)(C).
    • (ii) For an application that is subject to examination under the pre-AIA (first to invent (FTI)) 35 U.S.C. 102 and 103, the accelerated examination support document must identify any cited references that may be disqualified as prior art under pre-AIA 35 U.S.C. 103(c) as amended by the Cooperative Research and Technology Enhancement (CREATE) Act (Pub. L. 108-453, 118 Stat. 3596 (2004)).

II. DECISION ON PETITION TO MAKE SPECIAL

Applicant will be notified of the decision by the deciding official. If the application and/or petition does not meet all the requirements set forth in subsection I above for the application to be granted special status (including a determination that the search is deemed to be insufficient), 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. In those instances in which the petition or accelerated examination support document is defective in one or more requirements, applicant will be given a single opportunity to perfect the petition or accelerated examination support document within a time period of two months. Extensions of time under the provisions of 37 CFR 1.136(a) will be permitted, but filing a petition for an extension of time will result in the application being taken out of the accelerated examination program. This opportunity to perfect a petition does not apply to applications that are not in condition for examination on filing. See subsection VIII.C. below. If the document is satisfactorily corrected in a timely manner, the petition will then be granted, but the final disposition of the application may occur later than twelve months from the filing date of the application. Once a petition has been granted, prosecution will proceed according to the procedure set forth below.

III. THE INITIAL ACTION ON THE APPLICATION BY THE EXAMINER

Once the application is granted special status, the application will be docketed and taken up for action expeditiously (e.g., within two weeks of the granting of special status). If it is determined that all the claims presented are not directed to a single invention, the telephone restriction practice set forth in MPEP § 812.01 will be followed. Applicant must make an election without traverse during the telephonic interview. If applicant refuses to make an election without traverse or the examiner cannot reach the applicant after a reasonable effort, the examiner will treat the first claimed invention (the invention of claim 1) as constructively elected without traverse for examination. Continuing applications (e.g., a divisional application directed to the non-elected inventions) will not automatically be given special status based on papers filed with the petition in the parent application. Each continuing application must on its own meet all requirements for special status.

If the USPTO determines that a possible rejection or other issue must be addressed, the examiner will telephone the applicant to discuss the issue and any possible amendment or submission to resolve such issue. The USPTO will not issue an Office action (other than a notice of allowance) unless either: (A) an interview was conducted but did not result in the application being placed in condition for allowance; or (B) there is a determination that an interview is unlikely to result in the application being placed in condition for allowance. Furthermore, prior to the mailing of any Office action rejecting the claims, the USPTO will conduct a conference to review the rejections set forth in the Office action.

If an Office action other than a notice of allowance is mailed, the Office action will set a shortened statutory period of two (2) months. Extensions of this shortened statutory period under 37 CFR 1.136(a) will be permitted. However, filing a petition for extension of time will result in the application being taken out of the accelerated examination program. Failure to timely file a reply will result in abandonment of the application. See subsections V and VI for more information on post-allowance and after-final procedures.

IV. REPLY BY APPLICANT

A reply to an Office action must be limited to the rejections, objections, and requirements made. Any amendment that attempts to: (A) add claims which would result in more than three independent claims or more than twenty total claims pending in the application; (B) present claims not encompassed by the preexamination search (see subsection I, item (H) above) or an updated accelerated examination support document (see next paragraph); or (C) present claims that are directed to a nonelected invention or an invention other than previously claimed in the application, will be treated as not fully responsive and will not be entered. See subsection VIII.D. below for more information.

For any amendment to the claims (including any new claim) that is not encompassed by the accelerated examination support document in subsection I, item (I) above, applicant is required to provide an updated accelerated examination support document that encompasses the amended or new claims at the time of filing the amendment. Failure to provide such updated accelerated examination support document at the time of filing the amendment will cause the amendment to be treated as not fully responsive and to not be entered. See subsection VIII.D. below for more information. Any IDS filed with an updated accelerated examination support document must also comply with the requirements of 37 CFR 1.97 and 1.98.

Any reply or other papers must be filed electronically via EFS-Web so that the papers will be expeditiously processed and considered. If the papers are not filed electronically via EFS-Web, or the reply is not fully responsive, the final disposition of the application may occur later than twelve months from the filing of the application.

V. POST-ALLOWANCE PROCESSING

The mailing of a notice of allowance is the final disposition for purposes of the twelve-month goal for the accelerated examination program. In response to a notice of allowance, applicant must pay the issue fee within three months from the date of mailing of the Notice of Allowance and Fee(s) Due (form PTOL-85) to avoid abandonment of the application. In order for the application to be expeditiously issued as a patent, the applicant must also: (A) pay the issue fee (and any outstanding fees due) within one month from the mailing date of the form PTOL-85; and (B) not file any post-allowance papers that are not required by the USPTO (e.g., an amendment under 37 CFR 1.312 that was not requested by the USPTO).

VI. AFTER-FINAL AND APPEAL PROCEDURES

The mailing of a final Office action or the filing of a notice of appeal, whichever is earlier, is the final disposition for purposes of the twelve-month goal for the accelerated examination program. Prior to the mailing of a final Office action, the USPTO will conduct a conference to review the rejections set forth in the final Office action (i.e., the type of conference conducted in an application on appeal when the applicant requests a pre-appeal brief conference). In order for the application to be expeditiously forwarded to the Patent Trial and Appeal Board (PTAB) for a decision, applicant must: (A) promptly file the notice of appeal, appeal brief, and appeal fees; and (B) not request a pre-appeal brief conference. A pre-appeal brief conference would not be of value in an application under a final Office action because the examiner will have already conducted such a conference prior to mailing the final Office action. During the appeal process, the application will be treated in accordance with the normal appeal procedures (see MPEP Chapter 1200). The USPTO will continue to treat the application as special under the accelerated examination program after the decision by the PTAB.

Any after-final amendment, affidavit, or other evidence filed under 37 CFR 1.116 or 41.33 must also meet the requirements set forth in subsection IV above. If applicant files a request for continued examination (RCE) under 37 CFR 1.114 with a submission and fee, the submission must meet the reply requirements under 37 CFR 1.111 (see 37 CFR 1.114(c)) and the requirements set forth in subsection IV above. The filing of the RCE is a final disposition for purposes of the twelve-month goal for the accelerated examination program. The application will retain its special status and remain in the accelerated examination program. Thus, the examiner will continue to examine the application in accordance with the procedures set forth in subsection III above and any subsequent replies filed by applicant must meet the requirements of subsection IV above. The goal of the accelerated examination program will then be to reach a final disposition of the application within twelve months from the filing of the RCE.

VII. PROCEEDINGS OUTSIDE THE NORMAL EXAMINATION PROCESS

If an application becomes involved in proceedings outside the normal examination process (e.g., a secrecy order, national security review, interference, or petitions under 37 CFR 1.181, 1.182, or 1.183), the USPTO will treat the application as special under the accelerated examination program before and after such proceedings. During those proceedings, however, the application will not be accelerated. For example, during an interference proceeding, the application will be treated in accordance with the normal interference procedures and will not be treated under the accelerated examination program. Once any one of these proceedings is completed, the USPTO will process the application expeditiously under the accelerated examination program until it reaches final disposition, but that may occur later than twelve months from the filing of the application.

VIII. MORE INFORMATION

A. Eligibility

Any non-reissue utility or design application filed under 35 U.S.C. 111(a) on or after August 25, 2006 is eligible for the accelerated examination program. The following types of filings are not eligible for the accelerated examination program:

• (1) plant applications;
• (2) reissue applications;
• (3) applications entering the national stage from an international application after compliance with 35 U.S.C. 371;
• (4) reexamination proceedings;
• (5) RCEs under 37 CFR 1.114 (unless the application was previously granted special status under the program);
• (6) petitions to make special based on applicant’s health or age (see MPEP § 708.02; and
• (7) petitions to make special based on participation in the PPH pilot program. (see MPEP § 708.02(c)).

Rather than participating in the accelerated examination program, applicants for a design patent may participate in the expedited examination program by filing a request in compliance with the guidelines set forth in MPEP § 1504.30. See 37 CFR 1.155.

B. Form

Applicant should use form PTO/SB/28 for filing a petition to make special, other than those based on applicant’s health or age or the PPH pilot program. The form is available on EFS-Web and on the USPTO’s website at www.uspto.gov/PatentForms.

C. Conditions for Examination

The application must be in condition for examination at the time of filing. This means the application must include the following:

• (1) Basic filing fee, search fee, and examination fee, under 37 CFR 1.16 (see MPEP § 607 subsection I);
• (2) Application size fee under 37 CFR 1.16(s) (if the specification and drawings exceed 100 sheets of paper) (see MPEP § 607 subsection II);
• (3) An executed inventor’s oath or declaration in compliance with 37 CFR 1.63 or 1.64 for each inventor;
• (4) A specification (in compliance with 37 CFR 1.52) containing a description (37 CFR 1.71) and claims in compliance with 37 CFR 1.75;
• (5) A title and an abstract in compliance with 37 CFR 1.72;
• (6) Drawings in compliance with 37 CFR 1.84;
• (7)
  • • For an application filed prior to July 1, 2022 an alectronic submissions of “Sequence Listings” or computer readable forms (CRFs) of “Sequence Listings” in compliance with  37 CFR 1.821(c) or (e);
  • • For an application filed on or after July 1, 2022 an electronic submissions of “Sequence Listing XMLs” in compliance with 37 CFR 1.831 through 1.835 submitted either on read-only optical disc(s) in compliance with 37 CFR 1.52(e) or via the USPTO patent electronic filing system in XML format as part of an associated file (if applicable);
  • “Large Tables” submitted in ASCII plain text either on read-only optical disc(s) in compliance with 37 CFR 1.52(e) or via the USPTO patent electronic filing system in compliance with 37 CFR 1.58(c)et seq.,.
• (8) Foreign priority claim under 35 U.S.C. 119(a) – (d) identified in the application data sheet (if applicable);
• (9) Domestic benefit claims under 35 U.S.C. 119(e), 120, 121, 365(c) or 386(c) in compliance with 37 CFR 1.78 (e.g., for applications filed on or after September 16, 2012, the specific reference to the prior application must be in an application data sheet and for applications filed prior to September 16, 2012, the specific reference to the prior application must be submitted in the first sentence(s) of the specification or in an application data sheet, and for any benefit claim to a non-English language provisional application, the application must include a statement that (a) an English language translation, and (b) a statement that the translation is accurate, have been filed in the provisional application) (if applicable);
• (10) English language translation under 37 CFR 1.52(d), a statement that the translation is accurate, and the processing fee under 37 CFR 1.17(i) (if the specification is in a non-English language);
• (11) No preliminary amendments present on the filing date of the application; and
• (12) No petition that would delay the processing of the application. For example, for an application filed prior to September 16, 2012, no petition under 37 CFR 1.47 for a non-signing inventor. For an application filed after September 16, 2012, no petition under 37 CFR 1.46(b)(2) to designate a person with sufficient proprietary interest as the applicant or a petition under 37 CFR 1.78 to accept a delayed benefit claim.

Furthermore, if the application is a design application, the application must also comply with the requirements set forth in 37 CFR 1.151, 1.152, 1.153, and 1.154.

The petition to make special will be dismissed if the application omits an item or includes a paper that causes the Office of Patent Application Processing (OPAP) to mail a notice during the formality review (e.g., a notice of incomplete application, notice to file missing parts, notice to file corrected application papers, notice of omitted items, or information notice to applicant). The opportunity to perfect a petition (subsection II above) does not apply to applications that are not in condition for examination on filing.

D. Reply Not Fully Responsive

If a reply to a non-final Office action is not fully responsive, but is a bona fide attempt to advance the application to final action, the examiner may provide two months for applicant to supply the omission or a fully responsive reply. Extensions of this time period under 37 CFR 1.136(a) will be permitted. However, filing a petition for extension of time will result in the application being taken out of the accelerated examination program. Failure to timely file the omission or a fully responsive reply will result in abandonment of the application. If the reply is not a bona fide attempt or if it is a reply to a final Office action, no additional time period will be given. The time period set forth in the previous Office action will continue to run.

E. Withdrawal From Accelerated Examination

There is no provision for “withdrawal” from special status under the accelerated examination program. However, filing a petition for extension of time will result in the application being taken out of the accelerated examination program. An applicant may abandon the application that has been granted special status under the accelerated examination program in favor of a continuing application, and the continuing application will not be given special status under the accelerated examination program unless the continuing application is filed with a petition to make special under the accelerated examination program. The filing of an RCE under 37 CFR 1.114, however, will not result in an application being withdrawn from special status under the accelerated examination program.

F. The Twelve-Month Goal

The objective of the accelerated examination program is to complete the examination of an application within twelve months from the filing date of the application. The twelve-month goal is successfully achieved when one of the following final dispositions occurs:

• (1) the mailing of a notice of allowance;
• (2) the mailing of a final Office action;
• (3) the filing of an RCE; or
• (4) the abandonment of the application.

The final disposition of an application, however, may occur later than the twelve-month time frame in certain situations (e.g., an IDS citing new prior art after the mailing of a first Office action). See subsection VII above for more information on other events that may cause examination to extend beyond this twelve-month time frame. In any event, however, this twelve-month time frame is simply a goal. Any failure to meet the twelve-month goal or other issues relating to this twelve-month goal are neither petitionable nor appealable matters.

IX. FORM PARAGRAPHS

The following form paragraphs may be used for the accelerated examination program: