ADVANCEMENT OF EXAMINATION -UNITED STATES PATENT RULES

December 14, 2004
Harakenzo World Patent & Trademark
Foreign Department General Manager
Takamasa ARAI

1. ADVANCEMENT OF EXAMINATION
New applications filed ordinarily are taken up for examination in the order of their effective United States filing dates with certain exceptions.
MPEP (Manual of Patent Examining Procedure) 708.02 grants the above certain exceptions and an applicant can file a petition to make special in order to request the advancement of examination under the conditions set forth in MPEP 708.02.

2. CONDITIONS TO MAKE PETITION SPECIAL
Advancement of Examination is made if an applicant requests expedited examination process under any of the conditions set forth below (See MPEP 708.02):
(I) the applicant possessing sufficient presently available capital and facilities to manufacture the invention;
(II) an infringing device or product being actually on the market;
(III) the applicant having a health problem;
(IV) the applicant being 65 years of age, or more;
(V) inventions materially enhancing the quality of the environment of mankind;
(VI) inventions materially contributing to (A) the discovery or development of energy resources, or (B) the more efficient utilization and conservation of energy resources;
(VII) inventions relating to recombinant DNA;
(VIII) the application having a status that complies with Special Examination Procedure For Certain New Applications-Accelerated Examination;
(IX) patent applications relating to superconductivity;
(X) inventions relating to HIV/AIDS and cancer;
(XI) inventions for countering terrorism; and
(XII) applications relating to biotechnology field by applicants who are small entities.

3. SPECIAL EXAMINATION PROCEDURE FOR CERTAIN NEW APPLICATIONS - ACCELERATED EXAMINATION
In order for a filed application to be eligible for this special examination procedure, the following requirements must be met:
(1) An application has not received any examination by the examiner.
(2) The applicant submits a petition to make special accompanied by the fee (CFR 1.17(h)).
(3) The applicant presents all claims directed to a single invention. If the applicant later receives a restriction requirement (the Restriction of Invention) or/and a requirement to choose a reasonable number of species (the Election of Species) from the Office by phone, the applicant will make a restriction/an election without traverse. Each divisional applications directed to the nonelected inventions need a new special examination procedure.
(4) The applicant submits a statement(s) that a pre-examination search was made, listing the field of search by class and subclass, publication, Chemical Abstracts, foreign patents, etc. A search made by a foreign patent office satisfies this requirement.
(5) The applicant submits one copy each of the known references (that are not already of recorded) deemed most closely related to the subject matter encompassed by the claims.
(6) The applicant submits a detailed discussion of the references, which discussion points out, with the particularity required by 37 CFR 1.111 (b) (a section concerning a reply by the applicant/patent owner to an Office Action), how the claimed subject matter is patentable over the known references.
In those instances where the request for this special examination procedure does not meet all the prerequisites (1) through (6) set forth above, the special examination procedure is not processed. In such cases, a new petition to make special for the special examination becomes necessary.
Once a request has been granted, prosecution will proceed and there is no provision for withdrawal from this procedure.

4. PROCEDURES OF SPECIAL EXAMINATION PROCEDURE
The special examination procedure involves the following procedures:
(a) The new application, having been granted special, will be taken up for examination by the examiner. Other than the case where the Notice of Allowance is issued, the application is given an Office Action. The Office Action sets a period for applicant's reply in conformity with a "3-month shortened period for reply".
(b) During the period for reply, the applicant is encouraged to arrange for an interview with the examiner. In the case where an interview is scheduled, the applicant or his or her representative should cause a copy of the amendment (the copy will not become a part of the file, but will form a basis for discussion at the interview with the examiner) to be placed in the hands of the examiner at least one working day prior to the interview.
(c) Subsequent to the interview, or responsive to the examiner's first action if no interview was had, the applicant will file the "record" reply. At this stage, any amendment, which would require the examiner to broaden the search field, will be treated as an improper reply.
(d) The examiner will, within 1 month from the date of receipt of applicant's formal reply, issue a Final Office Action or a Notice of Allowance. By receipt of an examiner's answer, that is, the Final Office Action, the applicant can choose to file an appeal brief at this time.
(e) After a Notice of Allowance, these applications are given top priority for printing.
A personal interview after a Final Office Action will not be permitted unless requested by the examiner. However, telephonic interviews will be permitted where appropriate for the purpose of correcting any minor outstanding matters. Reference: MPEP