First, speed up the review? (accelerate? Exam)
The United States Patent and Trademark Office provides an accelerated examination procedure to speed up the examination process of some applications. Accelerated examination applies to applications for invention patents and design patents? . To apply for accelerated review, the applicant must first submit a request for accelerated review and pay the corresponding fees. Secondly, the patent application itself and the subsequent examination process must meet the following requirements:
1, the total number of claims shall not exceed 20, the number of independent claims shall not exceed 3, and there shall not be multiple cited subordinate claims; 2. All claims must be directed at an invention; If the US Patent Office considers that the claim contains multiple inventions, the applicant must choose one of them without objection; 3. When submitting a patent application, the applicant must pay all expenses such as application fee, search fee and examination fee. , and all documents must be submitted, such as the oath of the inventor. 4. Applications must be submitted electronically; 5. Agree to meet with the examiner to discuss the problems in the process of patent examination. In addition, the application for accelerated review is very different from the ordinary application. The applicant needs to conduct pre-trial retrieval of the claims to be submitted, submit a pre-trial retrieval report, and specify his own retrieval route and time in detail. The retrieval ways include: searching databases, that is, places that have been searched, such as the US Patent Office database, the Chinese Patent Office database, the European Patent Office database, and I? e？ e？ E literature and so on. ; You also need to list the technical categories of retrieval; Keywords, keyword combination methods and search results.
Applicants should also submit supporting documents to speed up the review and analysis of search results. The analysis should indicate which claims are disclosed in each existing document. According to the retrieved existing literature, the reasons why each claim can be patented are expounded.
Many accelerated review periods are shorter than regular review periods. After the request for accelerated review is approved, the examiner usually starts the review within two weeks. The examiner can communicate with the applicant by telephone and solve the problems in the application as soon as possible. If the examiner issues an examination opinion, the applicant must give a reply within 1 month, which cannot be extended (in the routine examination, the period is usually 3 months, which can be extended to 6 months). If the applicant fails to give a reply within 1 month, the application will be regarded as abandoned, not turned into a regular application. The application should be finally processed within 12 months. The so-called final treatment includes issuing a notice of approval, issuing a final opinion, the applicant appealing, the applicant proposing to continue the examination, or giving up the application.
According to the statistics of April 20 12 of the United States patent office, the United States patent office * * * received 4,996 requests for accelerated examination, and among 3,797 requests meeting the format requirements, 3 175 patents were granted. In addition, of the 365,438+075 applications for authorization, 65,438+0352 were authorized in the first instance. Accelerated examination provides a way to obtain patents quickly and has a high approval rate. Its disadvantage is that the applicant needs to do a lot of work, such as pre-trial retrieval, analysis of retrieval results, and accelerated examination and preparation of supporting documents.
Second, the priority review (priority? Exam? Tracking? -? "Tracking? One ")
The priority review procedure took effect on September 26th, 20 1 1. The applicant paid an additional official fee of $4,800 ($4,000 from the landing date of March 65,438+09, 2065,438), and put forward a priority review request, which was finally processed within 65,438+02 months from the date of priority review approval.
Priority examination applies to the application date of 20 1? 1? Ninth grade? February second? 6? Invention patent application and plant patent application. The applicant may make a request for priority review when submitting a continuation application, a divisional application or a continuation review. For example, an application filed before September 26, 20 1 1 cannot require priority review, but the applicant can file a continuation application, a divisional application, a continuation review, and require priority review at the same time. P at present? c？ T the national application of the United States can not participate in the priority review procedure for the time being, but the US Patent Office indicated that it may be adjusted according to the implementation of the procedure. Moreover, if the applicant uses "bypassing the application" (? Continued application under section 365(C) of the US Patent Law)? Access to the United States may require priority review. Applying for foreign priority through the Paris Convention may require priority review.
Compared with the above-mentioned accelerated review procedure, the materials required to apply for priority review are much less, and the applicant does not need to do pre-trial search and submit supporting documents for accelerated review. The request for priority examination must meet the following conditions: the patent application must be submitted electronically; Submit a complete application, that is, a complete patent specification, the inventor's affidavit, the basic application fee, the search fee, the examination fee, etc. ; The application shall not exceed 4 independent claims, totaling 30 claims, and shall not contain multiple cited subordinate claims; Put forward the priority review request and pay the priority review fee; And the number of priority review places in that year. The US Patent Office can accept 10000 priority applications every year.
After the priority review request is approved, the application will be given priority review status. If the patent applicant modifies the application after this, making it more than 4 independent claims or more than 30 claims in total, or adding a number of cited subordinate claims, it will lose the priority examination qualification. The events that lead to the disqualification of priority examination also include: proposing to continue the examination, and the applicant requesting an extension in response to the examiner's opinion or other opinions of the Patent Office.
According to the statistics of the United States Patent Office, in 20 12, a total of 5027 requests for priority review were received, and 46 10 requests were approved to enter the priority review procedure (92%). As of February 20, 1965, among all the approved applications, 4,375 applications received preliminary comments, and 2,672 applications were finally processed, of which 1427 applications were approved. The average time from requesting approval to issuing the first-instance opinion is 2 months, and the average time for obtaining the final treatment is 5.32 months.
Third, the patent prosecution highway (patent? Sue? Highway? (PPH))
Many China companies choose to apply for patents in China first, and then pass the Paris Convention or P? c？ T-way entered the United States. In this case, the Patent Prosecution Highway (PPH) can be used to speed up the authorization of American applications.
Patent offices in the United States and many countries, including China, have P? PH pilot project. The purpose of this project is to require patent offices in various countries to recognize each other's examination results for patent applications of the same family, thus reducing the workload. Through PPH, the applicant can request an accelerated examination of the subsequent application in the subsequent application acceptance bureau according to one or more claims identified as authorization in the patent application submitted by the earlier application acceptance bureau, without paying extra fees.
The Sino-US Patent Prosecution Expressway (PPH) pilot project was launched on 201121,and the original trial period was one year. Recently, the PPH pilot project was extended for one year to 20 13 1 1.30. This project is only applicable to invention patent applications, not temporary patent applications, plant patent applications, design patent applications, etc.
Conventional PPH applications can be based on the examination results of China application or PCT application.
1. Paris convention or P? c？ T the application for entry to the United States can be based on the examination results of the application for entry to China, and PP? H program. Applications to enter the United States through the Paris Convention generally require the priority of one or more China applications; Or is the application in America PC? T apply to enter the American national phase or bypass the application, PC? T application requires China to apply for priority; Or do both China and the United States require PCs? Apply for priority, etc. Under these circumstances, if China's application is approved or authorized first, the applicant can adopt PP for the application of the United States (or the continuation application, divisional application and partial continuation application) according to the examination results of the application of the same subject in China. H. if the Chinese patent office determines that at least one claim is patentable, the applicant may submit to the U.S. patent office for participation in p? p？ H's request. The China application that can be authorized cannot be a utility model application. Request to participate in p? PH All claims in the United States application must completely correspond to the claims deemed as authorized in the China application, or completely correspond after modification. Besides, before submitting p? p？ H At the time of the request, the substantive examination of the United States application must not have begun.
After confirming that the US application meets the above conditions, the applicant shall provide the following documents to the US Patent Office to participate in PP? H: (1) Participate in P? p？ H's request and the corresponding claim form; (2) Claims in China's application and its English translation; (3) Notice of all examination opinions (related to patentability) applied by China and its English translation; (4) If necessary, submit an initial amendment to modify the claims, so that all the claims in the US application completely correspond to the patentable claims in the China application. In practice, most applicants submit initial amendments to modify the claims in the US application, so that they correspond to the patentable claims in the China application.
In addition, if there is a priority p? c？ T the application has entered the stage of other countries (such as Europe or Japan) and has been authorized by the patent office of that country. Based on the results of the examination in this country, the applicant may submit to the U.S. Patent Office to participate in the P? p？ H's request. The materials required by the applicant are the same as those required by China to apply for PPH.
2, based on the PCT application review results according to the previous P? c？ T apply for the results of the audit, you can ask to participate in the United States to apply for the same family PPH? . The application must be an application for PCT to enter the national phase of the United States or a bypass application; Or another PCT application enters the national stage of the United States, which requires the priority of the corresponding PCT application. Eligible American applications (including continuation application, divisional application and partial continuation application) can participate in P? c？ T-P？ p？ Item H. The common situation is shown in Figure 4 and Figure 5 below: Written opinion on international retrieval of PCT application (WO/I? SA), international preliminary examination written opinions (WO/I? p？ e？ A) or international preliminary examination report (I? p？ e？ R), pointing out that there are claims of novelty, creativity and industrial practicability, the applicant may submit to the United States Patent Office to participate in the P? c？ T-P？ PH's request to participate in PC? T-P？ All claims in the U.S. application of PH must correspond to those in the PCT application that are considered to be novel, creative and industrial, and meet the formal requirements, or be modified. And asked to participate in p? p？ The substantive examination of H's application has not yet started.
Applicants need to provide the following documents to the US Patent Office to participate in the P? c？ T-P？ p？ H: (1) Participate in P? c？ T-P？ p？ H request, and the form corresponding to the request; (2) corresponding to p? c？ T claims considered to be novel, creative and industrial practical in the application; (3) International evaluation results (WO/I? SA、WO/I？ p？ e？ A or me? p？ Er); (4) If necessary, submit an initial amendment to modify the claim, so that the claim applied by the United States is the same as that of P? c？ The claims in the application are considered to be novel, creative and industrial practical.
3、PPH？ Effect The U.S. Patent Office is usually located in P? p？ h？ Requests should be reviewed and approved within two months after submission. After approval, the application will be given priority review. Examiners are usually in P? p？ H approval to start the review within two to three months. p？ p？ The obvious advantage of the H project is through free P? p？ H requests are given priority in the patent office and have a high authorization rate. According to the statistics of the United States Patent Office in September, 20 1 1, p? p？ H in the application, the notice of the first review was issued in about 6 months, and the authorization rate was about 87%. Based on p? c？ T p of previous review results? p？ H in the application, the notice of preliminary examination was issued in about 4 months, and the authorization rate was about 93%. Not p? p？ The application authorization rate of project H is only 48%. At the same time, it reduces the number of times the applicant replies to the notice and greatly reduces the application cost. The above two p's? p？ H, the average number of rejection notices issued by the US Patent Office for each application is 2. 13 and 1.6 1, not P? Each PH application is 2.5 1 copy. The probability of the applicant requesting further review decreased from 365,438+0% of the non-PPH application to 65,438+065,438+0%, and the probability of appeal decreased from 2.5% to 0.3%. The U.S. Patent Office estimates that for an application with particularly complicated technology and high cost, the applicant can pass the above two PP? Project H saves about 82 18 USD and10/63 USD respectively.
Fourth, the first instance meeting procedure (first? Action? Interviewing pilots? Program)
The preliminary examination meeting is another procedure aimed at speeding up the application for approval. The applicant may, after submitting the application but before the substantive examination, request to meet with the examiner to discuss the patentability of the application. The examiner must complete the interview with the applicant before issuing the first-instance opinion. The meeting can be held by telephone or in person at the patent office. If the program is used correctly, the applicant can quickly obtain the examination opinions of the examiner, thus speeding up the authorization of the patent application.
The procedure of the first-instance meeting is only applicable to the application for invention patent, not to the application for design patent and plant patent. The procedure for an application for a patent for invention to attend the meeting of first instance must meet certain requirements. If the application contains no more than three independent claims, the total number of claims shall not exceed 20. If the application does not meet these requirements, the applicant may delete the redundant claims through preliminary modification. ? Meanwhile, the claims of this application can only contain one invention. If the patent office determines that the claim in the application contains multiple inventions, the applicant must choose the claim corresponding to one of the inventions without objection.
First of all, a request for a meeting must be made as soon as possible. No later than the day before the letter of preliminary examination opinions on substantive examination is issued. If the request meets the requirements, the examiner will send a pre-meeting communication, including cited references, brief analysis, etc. Then, the applicant submits a written meeting request. During the meeting, the applicant can negotiate with the examiner on the communication content before the meeting. The applicant can also send the modification of the claim to the examiner and discuss it in the meeting. If the examiner thinks that the revised claim can be authorized, the applicant can formally submit it to the Patent Office; ? If the amended claim is still not authorized, the applicant may put forward other suggestions for amendment. After the meeting, the applicant may submit a review reply according to the results of the meeting to further modify the claim.
The first-instance interview procedure provides many conveniences for applicants. For example, through the first-instance interview procedure, the applicant can communicate with the examiner before the first-instance opinion, listen to the examiner's opinions on novelty and creativity, or understand the cited documents and claims. According to the results of the first-instance meeting, the applicant can modify the claims in the application to speed up the examination and authorization. According to experience, if you make full preparations before the preliminary examination meeting and make appropriate changes after the meeting, the application can often be authorized at the first instance. According to the statistics of the U.S. Patent Office, 29.4% of all first-instance interview applications were authorized by the first instance, while only 1 1.5% of general applications were authorized by the first instance.
The risk of the first-instance meeting procedure is relatively small. It is worth noting that unlike the accelerated review, the first-instance meeting procedure cannot advance the review date of the application. Applications to participate in the first-instance meeting procedure, like other normal applications, need to be queued for hearing according to the date of application submission. However, the correct use of the first-instance meeting procedure can speed up the review process and may soon be authorized. Moreover, the first-instance interview procedure can often reduce the number of times the examiner sends out rejection opinions, thus reducing the number of times to reply opinions and reducing costs.
Five, the chief examiner meeting (examiner? Interview)
In the process of patent examination, except for the special pre-trial interview procedure, meeting with the examiner is very beneficial to speed up the trial and authorization in other time periods. Examiners can meet by phone or in person. The contents of the meeting may include the background technology of the invention, the understanding and scope of the claims, the contents disclosed in the cited documents, the authorized modification scheme, etc.
Generally speaking, the applicant can ask for an interview with the examiner at any stage of the application. After the final opinion comes out, the examiner can refuse the interview request, but many times he will approve it. The better meeting time is after the submission of the first instance and before the reply. During the meeting, the applicant can ask the examiner to further explain the opinions of the first instance, understand the examiner's thinking, and also clarify the novelty of the patent and convince the examiner. According to the results of the meeting, the applicant can modify the claim or reply to the examiner's opinion in the reply, thus speeding up the examination and authorization most effectively. Before replying, the applicant can send the suggestion of claim modification to the examiner, and then communicate with the examiner to discuss whether the suggestion can be approved, so as to obtain authorization as soon as possible.
Other special applications of intransitive verbs
The U.S. Patent Office provides an accelerated examination channel for some special applications. For example, if the inventor is over 65 years old or in poor health, he can ask the patent office to examine his patent application quickly. The applicant can also base on the particularity of the invention, such as the invention can significantly improve the environmental quality (1); (2) Having made significant contributions to the development and energy conservation; Or (3) making significant contributions to the defense of terrorist organizations. These special channels to speed up the review are rarely used in practice.
Seven. general survey
To sum up, the applicant can speed up the authorization of his patent application by accelerating the examination, giving priority to the examination, meeting with the examiner on the examination highway before the first trial, and meeting with the examiner in the general examination procedure. The specific application of which method should be based on personal circumstances, such as time requirements, business objectives, budget, etc. Make a specific judgment. If these channels are used properly, they can reduce the number of replies to examiners' opinions, thus obtaining authorization quickly and saving costs. In particular, there is no need to pay an additional application fee if the examination highway, the first-instance meeting procedure and the ordinary examiner meeting are adopted.