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The United States Patent Office recently enacted a new system of "Accelerated Examination" with the goal of completing examination of a patent application within 12 months of its filing. This new system can be applied to any patent application filed after Aug 25, 2006.1 What a great deal! Where's the catch?
I like to refer to this new system as the: "So you want your patent examined in 12 months - you be the examiner!" system. Here's how it all works:
To request accelerated examination, a Petition for Accelerated Examination must be filed at the same time the patent application is filed. It is not possible to simply request that a pending application be accelerated.
However, it is possible to accelerate a pending case by filing a continuation case (including a "Request For Continuing Examination" (RCE)) and then filing the Petition for Accelerated Examination along with the RCE.
Here come the formalities………
There are several important requirements for filing the Petition for Accelerated Examination. The application must: (1) be electronically filed; (2) pay all fees; (3) be filed with an executed oath; (4) include all priority claims; (5) be filed in English; (6) include no Preliminary Amendments; and (7) include no Petitions re: a non-signing inventor.
And now the claim requirements………
The claim set must: (1) have no more than 3 independent claims; (2) have no more than 20 total claims; (3) have no multiple dependent claims. Also, the claims must all be directed to a single invention.
And here's your extra homework………
To file the Petition for Accelerated Examination, the Applicant must first do a Pre-Examination Search. The Applicant must search US and foreign patents, patent publications, and non-patent literature.2 The Applicant must also state that the search was conducted, and identify the class and sub-class, dates, databases, the search logic, or chemical structure or sequence, and the name of the database service. This search must cover the broadest reading of the claims.
And now the scary part………
Once the search has been completed, the Applicant must file an "Accelerated Examination Support Document (ESD)." This ESD must list the references found in the search. In addition, for each reference, the Applicant: (1) must identify all of the limitations in the claims that are found in the reference; (2) provide a detailed explanation as to how the claim is patentable over the references; (3) state the utility of each independent claim; and (4) show where each limitation is supported by the specification.
Note: I refer to this requirement as the "scary part" since it is here that the Applicant starts to act as the Examiner of his own case. The danger of doing this is that the Applicant's comments become part of the public record and can (and likely will) be used by parties attempting to contest the scope or validity of the patent in the future.
Rules, rules, rules………
There are other requirements for prosecution of an Accelerated case. For example: (1) all Office Actions must be replied to within 1 month (no extensions permitted!) or the case goes abandoned3; (2) Amendments/Replies must be filed electronically; (3) the Amendments can't add more than 3 independent claims, present claims not encompassed by the pre-exam search; or directed to a non-elected invention; (4) the Applicant must agree to interview the case4; (5) the Issue Fee must be paid within 1 month5.
In addition, should the case be appealed, it is important to remember that the Appeal process itself is not expedited. However, to keep an Appealed case expedited (after the Appeal), the Applicant must promptly file the Notice of Appeal, Appeal Brief, pay the fees, and not request a Pre-Appeal Conference. Moreover, the Applicant must agree not to separately argue the patentability of any dependent claims during an appeal.6
Other tough rules include………
There is no provision to withdraw a case from accelerated examination other than to file a continuation. Additionally, continuation (and divisional) applications are not accelerated just because the parent case has been accelerated. Finally, if your application isn't fully complete - it defaults to a normal case.7
What exactly is the Patent Office's 12 month processing goal?
The U.S. Patent Office states that their goal is "examination" of the patent application within 12 months of it's filing. The 12 month goal is to get to any one of a: (1) Notice of Allowance; (2) a Final Office Action; (3) the filing of a Request For Continuing Application (RCE)8 ; or (4) abandonment of the case.
How do these new Accelerated Examinations compare to the old rules on Accelerated Examinations?
The new rules do not apply to Petitions on Applicant's age/health, but replaces all of the other old categories.9 Note, however, that there is no fee required if the invention is directed to: (1) environmental quality, (2) energy, or (3) countering terrorism.
So, when should you opt for Accelerated Examination?
Consider applying for Accelerated Examination when: (1) you are introducing a clearly defined product; (2) there is a high likelihood that a competitor will quickly copy it; (3) there is a long backlog in that art area at the Patent Office (e.g.: business methods, software, biotech); (4) you are planning to file a plurality of related applications; and/or (5) you are looking for a quick decision regarding declaration of an interference.
Don't consider using Accelerated Examination when: (1) it is too expensive; (2) it is too time consuming; (3) it is too close to a filing deadline; (4) you are concerned about the risk of others using your filed comments and arguments against you; (5) it would limit your claim strategy/number; and/or (6) there is no real backlog in that art area at the Patent Office (e.g.: pure mechanical inventions).
Is Accelerated Examination right for your patent application?
For more information, or if you would like help on deciding whether to have your patent application accelerated, please contact me.
1 Note: does not apply to Design, Re-issue and U.S. National Phase patent applications.
2 Note: A search from a foreign Patent Office isn't sufficient by itself.
3 With the exception of: responding to a Final Office Action, filing an Appeal, or filing a continuation case.
4 Even before receiving the first Office Action.
5 And have no post-allowance paperwork filed. If post-allowance paperwork is filed, the case is re-directed through regular (i.e. slower) issuance channels.
6 In other words, an Applicant can't offer an alternative argument for patentability if the argument relies upon a limitation in a dependent claim.
7 But, minor deficiencies can be cured provided they are cured within 1 month (no extensions), however, such deficiencies may result in more than the 12 month goal total processing time.
8 Note: If you file an RCE, the 12 month goal re-processing time is re-started.
9 Manufacture, Infringement, Environmental Quality, Superconductivity, DNA, AIDS, Cancer.
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