708    Order of Examination [R-11.2013]

Nonprovisional applications filed in the U.S. Patent and Trademark Office and accepted as complete applications are assigned for examination to the respective examining Technology Centers (TCs) having the classes of inventions to which the applications relate. Nonprovisional applications are ordinarily taken up for examination by the examiner to whom they have been assigned in the order in which they have been filed except for those applications in which examination has been advanced pursuant to 37 CFR 1.102. See 37 CFR 1.496  and MPEP § 1893.03 for the order of examination of international applications in the national stage, including taking up out of order certain national stage applications which have been indicated as satisfying the criteria of PCT Article 33(1)-(4)  as to novelty, inventive step and industrial applicability.

Applications which have been acted upon by the examiner, and which have been placed by the applicant in condition for further action by the examiner (amended applications) shall be taken up for action in such order as shall be determined by the Director of the USPTO.

Each examiner will give priority to that application in his or her docket, whether amended or new, which has the oldest effective U.S. filing date. This basic policy applies to all applications; rare circumstances may justify TC Directors granting individual exceptions.

The actual filing date of a continuation-in-part application is used for docketing purposes. However, the examiner may act on a continuation-in-part application by using the effective filing date, if desired.

If at any time an examiner determines that the "effective filing date" status of any application differs from what the records show, the technical support staff should be informed, who should promptly amend the records to show the correct status, with the date of correction.

The order of examination for each examiner is to give priority to reissue applications and to reexamination proceedings, with top priority to reissue applications in which litigation has been stayed (MPEP § 1442.03), to ex parte reexamination proceedings involved in litigation (MPEP § 2261), and to inter partes reexamination proceedings involved in litigation (MPEP § 2661), then to those special cases having a fixed 30-day due date, such as examiner’s answers and decisions on motions. Most other cases in the "special" category (for example, interference cases, cases made special by petition, cases ready for final conclusion, etc.) will continue in this category, with the earliest effective U.S. filing date among them normally controlling priority.

All amendments before final rejection should be responded to within two months of receipt.

708.01    List of Special Cases [R-07.2022]

Certain procedures by the examiners take precedence over actions even on special cases.

For example, all papers typed and ready for signature should be completed and mailed.

All allowed cases returned to the examiner marked as a "Printer Rush" must be processed and returned within the period indicated.

Reissue applications, particularly those involved in stayed litigation, should be given priority.

Applications in which practice requires that the examiner act within a set period, such as 2 months after appellants brief to furnish the examiner’s answers (MPEP § 1208), necessarily take priority over special cases without specific time limits.

If an examiner is satisfied that an application is in condition for allowance or needs to be finally rejected, the examiner should give action forthwith instead of making the application await its turn.

Subject alone to diligent prosecution by the applicant, an application for patent that has once been made special and advanced out of turn for examination by reason of a ruling made in that particular case (by the Director of the USPTO or a Commissioner) will continue to be special throughout its entire course of prosecution in the U.S. Patent and Trademark Office, including appeal, if any, to the Patent Trial and Appeal Board.

The following is a list of special cases (those which are advanced out of turn for examination):

• (A) Applications on inventions that are deemed of peculiar importance to some branch of the public service and when for that reason the head of some department of the Government requests immediate action and the Director of the USPTO so orders (37 CFR 1.102 ).
• (B) Applications made special as a result of a petition to make special, a request for prioritized examination, or a request for participation in a PPH program. (See MPEP § 708.02 et seq.)
• (C) Applications for reissues, particularly those involved in stayed litigation (37 CFR 1.176 ).
• (D) Applications remanded by an appellate tribunal for further action.
• (E) Applications, once taken up for action by an examiner according to their effective filing date, should be treated as special by an examiner, art unit or Technology Center to which they may subsequently be transferred; exemplary situations include new cases transferred as the result of a telephone election and cases transferred as the result of a timely reply to any official action.
• (F) Applications which appear to interfere with other applications previously considered and found to be allowable, or which will be placed in interference with an unexpired patent or patents.
• (G) Applications ready for allowance, or ready for allowance except as to formal matters.
• (H) Applications which are in condition for final rejection.
• (I) Applications pending more than 5 years, including those which, by relation to a prior United States application, have an effective pendency of more than 5 years. See MPEP § 707.02.
• (J) Reexamination proceedings, MPEP §§ 2261 and 2661.

See also MPEP §§ 714.13, 1207, and 1309.

708.02    Petition To Make Special [R-07.2022]

New applications ordinarily are taken up for examination in the order of their effective United States filing dates. Certain exceptions are made by way of petitions to make special, which may be granted under the conditions set forth below. Any statement in support of a petition to make special must be based on a good faith belief that the invention in fact qualifies for special status. See 37 CFR 1.56  and 11.18. Advancement of examination under 37 CFR 1.102 may be sought via a petition to make special under 37 CFR 1.102(c) - (d), or via a request for prioritized examination under 37 CFR 1.102(e).

Any petition to make special, other than those based on applicant’s health or age or participation in the Patent Prosecution Highway (PPH) pilot program, filed on or after August 25, 2006 must meet the requirements for the revised accelerated examination program set forth in MPEP § 708.02(a). For prioritized examination under 37 CFR 1.102(e), see MPEP § 708.02(b). See subsections I and II below for the requirements for filing a petition to make special based on applicant’s health or age.

See the version of MPEP § 708.02 in force in August 2010 (Eighth Edition, Revision 9) for guidelines and the requirements for a petition to make special filed in an application before August 25, 2006. A petition to make special filed on or after August 25, 2006 will only be granted if it is based upon applicant’s health or age, is under the PPH pilot program (see MPEP § 708.02(c)), or complies with the requirements set forth in MPEP § 708.02(a). For a request for prioritized examination under 37 CFR 1.102(e)  filed on or after September 26, 2011, see MPEP § 708.02(b).

An application may be made special upon a petition by applicant accompanied by any evidence showing that the state of health of the inventor or joint inventor is such that they might not be available to assist in the prosecution of the application if it were to run its normal course, such as a doctor’s certificate or other medical certificate. No fee is required for such a petition. See 37 CFR 1.102(c).

Personal/medical information submitted as evidence to support the petition will be available to the public if the application file and contents are available to the public pursuant to 37 CFR 1.11  or 1.14. If applicant does not wish to have this information become part of the application file record, the information must be submitted pursuant to MPEP § 724.02.

An application may be made special upon filing a petition including any evidence showing that the inventor or joint inventor is 65 years of age, or more, such as a statement by the inventor or joint inventor or a statement from a registered practitioner that they have evidence that the inventor or joint inventor is 65 years of age or older. No fee is required with such a petition. See 37 CFR 1.102(c).

The petition can be filed as a web-based ePetition. See the ePetition Resource Page (www.uspto.gov/Epetitions ).

Personal/medical information submitted as evidence to support the petition will be available to the public if the application file and contents are available to the public pursuant to 37 CFR 1.11  or 1.14. If applicant does not wish to have this information become part of the application file record, the information must be submitted pursuant to MPEP § 724.02.

The U.S. Patent and Trademark Office will accord "special" status to all patent applications for inventions which materially enhance the quality of the environment of mankind by contributing to the restoration or maintenance of the basic life-sustaining natural elements, i.e., air, water, and soil. Any petition to make special filed under this subsection must comply with the requirements set forth in MPEP § 708.02(a).

All applicants desiring to participate in this program should petition that their applications be accorded "special" status. The petition under 37 CFR 1.102  must state that special status is sought because the invention materially enhances the quality of the environment of mankind by contributing to the restoration or maintenance of the basic life-sustaining natural elements. No fee is required for such a petition. See 37 CFR 1.102(c). If it is not clear from the application's disclosure that the claimed invention materially enhances the quality of the environment by contributing to the restoration or maintenance of one of the basic life-sustaining natural elements, the petition must be accompanied by a statement under 37 CFR 1.102  by the applicant, assignee, or an attorney/agent registered to practice before the Office explaining how the materiality standard is met. The materiality standard does not permit an applicant to speculate as to how a hypothetical end-user might specially apply the invention in a manner that could materially enhance the quality of the environment. Nor does such standard permit an applicant to enjoy the benefit of advanced examination merely because some minor aspect of the claimed invention may enhance the quality of the environment.

The U.S. Patent and Trademark Office will, on petition, accord "special" status to all patent applications for inventions which materially contribute to (A) the discovery or development of energy resources, or (B) the more efficient utilization and conservation of energy resources. Examples of inventions in category (A) would be developments in fossil fuels (natural gas, coal, and petroleum), hydrogen fuel technologies, nuclear energy, solar energy, etc. Category (B) would include inventions relating to the reduction of energy consumption in combustion systems, industrial equipment, household appliances, etc. Any petition to make special filed under this subsection must comply with the requirements set forth in MPEP § 708.02(a).

All applicants desiring to participate in this program should petition that their applications be accorded "special" status. The petition under 37 CFR 1.102  must state that special status is sought because the invention materially contributes to category (A) or (B) set forth above. No fee is required for such a petition, 37 CFR 1.102(c). If the application disclosure is not clear on its face that the claimed invention materially contributes to category (A) or (B), the petition must be accompanied by a statement under 37 CFR 1.102  by the applicant, assignee, or an attorney/agent registered to practice before the Office explaining how the materiality standard is met. The materiality standard does not permit an applicant to speculate as to how a hypothetical end-user might specially apply the invention in a manner that could materially contribute to category (A) or (B). Nor does such standard permit an applicant to enjoy the benefit of advanced examination merely because some minor aspect of the claimed invention may be directed to category (A) or (B).

In view of the importance of developing technologies for countering terrorism and the desirability of prompt disclosure of advances made in these fields, the U.S. Patent and Trademark Office will accord "special" status to patent applications for inventions which materially contribute to countering terrorism. Any petition to make special filed under this subsection must comply with the requirements set forth in MPEP § 708.02(a).

International terrorism as defined in 18 U.S.C. 2331 includes "activities that - (A) involve violent acts or acts dangerous to human life that are a violation of the criminal laws of the United States or of any State, or that would be a criminal violation if committed within the jurisdiction of the United States or of any State; [and] (B) appear to be intended - (i) to intimidate or coerce a civilian population; (ii) to influence the policy of a government by intimidation or coercion; or (iii) to affect the conduct of a government by assassination or kidnapping..." The types of technology for countering terrorism could include, but are not limited to, systems for detecting/identifying explosives, aircraft sensors/security systems, and vehicular barricades/disabling systems.

All applicants desiring to participate in this program should petition that their applications be accorded special status. The petition under 37 CFR 1.102  must state that special status is sought because the invention materially contributes to countering terrorism. No fee is required for such a petition. See 37 CFR 1.102(c). If the application disclosure is not clear on its face that the claimed invention is materially directed to countering terrorism, the petition must be accompanied by a statement under 37 CFR 1.102  by the applicant, assignee, or an attorney/agent registered to practice before the Office explaining how the invention materiality contributes to countering terrorism. The materiality standard does not permit an applicant to speculate as to how a hypothetical end-user might specially apply the invention in a manner that could counter terrorism. Nor does such standard permit an applicant to enjoy the benefit of advanced examination merely because some minor aspect of the claimed invention may be directed to countering terrorism.

Applications which have been made special will be advanced out of turn for examination and will continue to be treated as special throughout the entire prosecution in the Office with the exception of applications having been granted prioritized examination which remain special until prioritized examination is terminated or until a final disposition of the application (see MPEP § 708.02(b), subsection II).

Each petition to make special or request to advance examination, regardless of the ground upon which the petition or request is based and the nature of the decision, is made of record in the application file, together with the decision thereon. The part of the Office that rules on a petition is responsible for properly entering that petition and the resulting decision in the file record. The petition, with any attached papers and supporting affidavits, will be provided as a single document in the application’s file wrapper. The decision will be provided as a separate document similarly entered. To ensure entries in the "Contents" in proper order, the technical support staff in the TC will make certain that all papers prior to a petition have been entered and/or listed in the application file before forwarding it for consideration of the petition. Note MPEP § 1002.02(s). Currently petitions to make special based on applicant’s health or age, participation in a PPH program, or under a pilot program, and requests for prioritized examination under 37 CFR 1.102(e)  are decided by the Office of Petitions. All other petitions to make special are decided by the Quality Assurance Specialist of the TC to which the application is assigned.

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).

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 § 2159 et 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)).

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.

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.

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 sub