Apple Inc. v. Samsung Electronics Co. Ltd. et al
Filing
167
Declaration of NICHOLAS P. GODICI IN SUPPORT OF SAMSUNG'S OPPOSITION TO APPLE'S MOTION FOR PRELIMINARY INJUNCTION filed bySamsung Electronics America, Inc., Samsung Electronics Co. Ltd., Samsung Telecommunications America, LLC. (Attachments: #1 Exhibit 1, #2 Exhibit 2, #3 Exhibit 3, #4 Exhibit 4-1, #5 Exhibit 4-2, #6 Exhibit 5, #7 Exhibit 6, #8 Exhibit 7, #9 Exhibit 8-1, #10 Exhibit 8-2, #11 Exhibit 8-3, #12 Exhibit 8-4, #13 Exhibit 8-5, #14 Exhibit 8-6, #15 Exhibit 8-7, #16 Exhibit 9, #17 Exhibit 10, #18 Exhibit 11, #19 Exhibit 12-1, #20 Exhibit 12-2, #21 Exhibit 12-3, #22 Exhibit 12-4, #23 Exhibit 13, #24 Exhibit 14)(Maroulis, Victoria) (Filed on 8/22/2011) Modified on 8/29/2011 cannot link entry-opposition has not been efiled (dhm, COURT STAFF).
Exhibit 5
Revised Accelerated Examination Program
and Petition to Make Special Procedures
Office of Patent Legal Administration
Robert J. Spar, Director
General Legal Help Line: (571) 272-7701
Revised Accelerated Examination (AE) Program
and Petition to Make Special Procedures
Overview
Effective August 25, 2006, the following will be revised:
Requirements for filing petitions for accelerated examination, and
other petitions to make special, and
Procedures set forth in MPEP 708.02 (8th Edition) for processing
and examining these special cases.
GOAL: to achieve a final decision by the examiner within 12 months
from the filing date of the application
See Changes to Practice for Petitions in Patent Applications to Make
Special and for Accelerated Examination, 71 Fed. Reg. 36323 (June 26,
2006) (notice) available at http://www.uspto.gov/web/offices/pac/dapp/ogsheet.html
MPEP 708.02 (8th Edition) will be revised in due course to reflect the
changes.
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Revised Accelerated Examination (AE) Program
and Petition to Make Special Procedures
Overview
The new requirements apply to all petitions to make
special. Thus, a uniform practice will be established.
Except: Petitions on the basis of health, age and the Patent
Prosecution Highway (PPH) pilot program
If the petition meets the requirements set forth in the
notice,
The application will be granted special status under the revised
AE program, and
The new processing and examination procedures will apply to the
application.
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Revised Accelerated Examination (AE) Program
and Petition to Make Special Procedures
Effective Date Provision: 8/25/06
On or after August 25, 2006
Any petition for accelerated examination, and any other petition to
make special (except petitions based on applicant’s health or age or
the PPH pilot program) must meet the requirements set forth in the
notice.
For example, the petition and application must be filed
electronically via EFS or EFS-Web.
Petitions to make special filed before 8/25/06 need only comply with the
previous requirements set forth in MPEP 708.02 (8th Edition).
The application will be processed and examined using the previous
procedures set forth in MPEP 708.02 (8th Edition).
Petitions for the revised AE program will not be accepted before 8/25/06.
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Revised Accelerated Examination (AE) Program
and Petition to Make Special Procedures
Summary
The revised AE program will allow applicants who desire
quick patent protection for their inventions a way:
to receive a final patentability decision by the examiner within 12
months; and
to choose which applications they want to advance for
examination.
In order to meet the 12-month goal, an applicant will be
required to provide additional information with the petition
for AE, and comply with revised procedures throughout the
examination process, to assist the examiner in expeditiously
arriving at a final disposition.
5
Revised Accelerated Examination (AE) Program
and Petition to Make Special Procedures
Summary - Benefits for Applicants
Expedited handling throughout the patent application
process, including:
Office of Initial Patent Examination (OIPE);
Examination;
Post-appeal process; and
Patent issue process.
Earlier and better interactions with the examiner.
More participation in clarifying and focusing the issues
during the prosecution.
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Revised Accelerated Examination (AE) Program
and Petition to Make Special Procedures
Filing Requirements
The application must be filed with:
The petition to make special (form PTO/SB/28 will be made
available prior to 8/25/06); and
The fee under § 1.17(h), or a statement that the claimed
subject matter is directed to environmental quality, energy, or
countering terrorism (no fee required, see §1.102(c)(2)).
The application must be complete under § 1.51 and in
condition for examination upon filing.
For example, the application must include the filing fees and
an executed oath or declaration under § 1.63.
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Revised Accelerated Examination (AE) Program
and Petition to Make Special Procedures
Filing Requirements (Cont’d)
The application, petition, and required fees must be filed
electronically via EFS or EFS-Web.
The application must contain:
3 or fewer independent claims; and
20 or fewer total claims.
The claims must be directed to a single invention.
The application must not contain any multiple dependent
claims.
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Revised Accelerated Examination (AE) Program
and Petition to Make Special Procedures
Filing Requirements (Cont’d)
The petition* (form PTO/SB/28) must include:
A statement that applicant will agree to make an election without
traverse in a telephonic interview;
A statement that applicant will agree to have an interview when
requested by the examiner;
A statement that applicant will agree not to separately argue the
patentability of any dependent claim during any appeal;
A statement that a pre-examination search was conducted; and
An accelerated examination support document (ESD).
*Applicant should contact the Office if a decision is not received by applicant after
three months from the filing of the petition.
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Revised Accelerated Examination (AE) Program
and Petition to Make Special Procedures
Filing Requirements: Pre-examination Search
PreThe statement that a pre-examination search was
conducted must include:
An identification of the field of search by U.S. class and
subclass and the date of the search, where applicable; and
For database searches,
the search logic or chemical structure or sequence used
as a query;
the name of the file or files searched;
the database service; and
the date of the search.
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Revised Accelerated Examination (AE) Program
and Petition to Make Special Procedures
Filing Requirements: AE Support Document
The accelerated examination support document must include:
An information disclosure statement (IDS) citing each reference deemed
most closely related to the subject matter of each claim;
An identification of where each limitation disclosed in the references is
found.
A detailed explanation of how each claim is patentable over the
reference;
A concise statement of utility of the invention;
A showing of support for each claim limitation in specification and any
parent application, including any means-plus-function limitations; and
An identification of any cited references that may be disqualified as
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prior art under 35 U.S.C. 103(c).
Revised Accelerated Examination (AE) Program
and Petition to Make Special Procedures
Processing and Examining Procedures
Once the application is granted special status, the application will
be promptly taken up for action (e.g., within 2 weeks of petition
decision), with special examining procedures set forth in the notice.
The examiner will consider the AE Support Document and conduct
a complete prior art search.
Prior to mailing any first Office action rejecting claims,
A telephone interview will be conducted, unless an interview is
deemed unlikely to overcome the rejection; and
A conference will be conducted in the USPTO to ensure the
viability of the rejection(s).
There will also be a conference before mailing any final Office
action.
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Revised Accelerated Examination (AE) Program
and Petition to Make Special Procedures
Processing and Examining Procedures (Cont’d)
Office actions will have a shorter period for reply:
One-month (or 30 days) SSP for any action, other than
a final rejection or allowance.
No extensions of time under § 1.136(a) permitted.
Failure to timely file a reply will result in abandonment of
the application.
Extensions of time are only available under § 1.136(b).
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Revised Accelerated Examination (AE) Program
and Petition to Make Special Procedures
Examining Procedures: Applicant’s Reply
Any reply must be:
filed via EFS-Web;
complete, fully responsive; and
limited to the rejection(s), objection(s) and requirements made.
An updated AE support document is required for any
amended or newly added claims that are not encompassed
by the previously-filed AE support document.
The above requirements are imposed in order to be able to
complete the examination within 12 months.
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Revised Accelerated Examination (AE) Program
and Petition to Make Special Procedures
Examining Procedures: Applicant’s Reply (Cont’d)
The Office will treat any amendments (including after-final
amendments and RCE submissions) as not being fully
responsive if the amendment:
Exceeds the 3/20 claim limit;
Presents claims to a non-elected invention;
Presents claims not encompassed by the preexamination search; or
Presents claims requiring an updated AE support
document, which is not submitted.
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Revised Accelerated Examination (AE) Program
and Petition to Make Special Procedures
PostPost-Allowance Procedures
While the mailing of a notice of allowance is the final
disposition for purposes of the Office’s 12 month goal, in
order for the application to be expeditiously issued as a
patent, applicant must:
Within one month, pay the issue fee (and any
outstanding fees due) and return the form PTOL-85B
(Part B of the Notice of Allowance and Fee(s) Due); and
Not file any post-allowance papers that are not required
by the Office.
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Revised Accelerated Examination (AE) Program
and Petition to Make Special Procedures
Appeal Procedures
While the mailing of a final rejection is the final
disposition for purposes of the Office’s 12 month goal, in
order for the application to be expeditiously forwarded to
the Board of Patent Appeals and Interference for a
decision, applicant must:
Promptly file the notice of appeal, appeal brief, and appeal
fees; and
Not request a pre-appeal brief conference (which would not
be of value because a conference would already have been
conducted).
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Revised Accelerated Examination (AE) Program
and Petition to Make Special Procedures
The Office’s Twelve-Month Goal
TwelveThe objective is to achieve a final decision by the
examiner within 12 months from the filing date of the
application.
The 12-month goal is successfully achieved when one of
the following final dispositions occur:
Notice of Allowance;
Final Office action;
Notice of appeal;
Request for Continued Examination (RCE); and
Abandonment.
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Revised Accelerated Examination (AE) Program
and Petition to Make Special Procedures
The Office’s Twelve-Month Goal (Cont’d)
TwelveThe final disposition may occur later than 12 months in
certain situations.
For example, if there is a secrecy order, national
security review, interference, petition under §§ 1.181,
1.182, or 1.183, or non-compliant or not fully responsive
amendment.
Any failure to meet the goal, or other issues relating to
this goal, are neither petitionable, nor appealable.
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Revised Accelerated Examination (AE) Program
and Petition to Make Special Procedures
Eligible Applications
Any non-reissue utility or design application filed under
35 U.S.C. 111(a) on or after the effective date is eligible.
Not eligible: plant applications, international applications
including applications entering the national stage under 35
U.S.C. 371, and reissue applications.
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Revised Accelerated Examination (AE) Program
and Petition to Make Special Procedures
Summary
Quality Patents in Less Time
In exchange for quick examination, examiners will receive
more focused and detailed information about the invention
and the closest prior art from applicants.
The upfront disclosure by applicants will help examiners
to more quickly make the correct decision on whether a
claimed invention is patentable.
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Revised Accelerated Examination (AE) Program
and Petition to Make Special Procedures
Additional Information
Additional information is available on the USPTO’s
Internet web site at
http://www.uspto.gov/web/offices/pac/dapp/ogsheet.html
For more information, please contact the Office of Patent
Legal Administration (OPLA) at (571) 272-7701, or e-mail
to PatentPractice@USPTO.gov, or contact Pinchus M.
Laufer at (571) 272-7726.
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Revised Accelerated Examination (AE) Program
and Petition to Make Special Procedures
Thank you
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