Anticipate This!™ | Patent and Trademark Law Blog

All Aboard the USPTO Express?

Posted in Practice Commentary by Jake Ward on June 30, 2006

The USPTO has recently announced the publication of procedures for a 12-month “accelerated examination” program.  Under this program, a decision on patentability by an Examiner will be made within 12 months of filing, and upon granting of a petition to make special under the new procedures. 

In exchange, Applicant must submit an “accelerated examination support document.”  This document includes a prior art search (encompassing all the features of the claims, under their broadest reasonable interpretation) with analysis of the closest art.  A search report from a foreign patent office will not suffice.  Applicant must also provide an explanation of the usefulness of the invention and a showing of where the claims are supported in the specification. 

In addition to the burden associated with the support document, Applicant is limited to 20 claims and a one month period of Reply to Office Actions, with no extensions available. 

Further requirements and features of the program may be viewed at this notice in the Federal Register, and include:

1.) All materials and fees must be filed electronically with the USPTO’s Electronic Filing System (EFS).

2.) No multiple dependant claims are to be included in the claim set.

3.) The Applicant must agree to not argue the patentability of any dependent claim separately during any appeal.

4.) The Applicant must agree that all elections must be made telephonically and without traverse.

5)  The Applicant must agree to an interview with an Examiner to discuss and potentially resolve any issues of patentability.

6)  Amendments adding claims beyond 20 total, or adding claims beyond the scope of the prior art search, will render the Amendment not fully responsive and prevent entering of the Amendment.

7) Upon issuance of a Final Rejection, the USPTO will conduct a conference to review the rejections (a conference similar to a Pre-Appeal Brief Conference).

8.) If a rejection is appealed, the appeal process will continue according to normal appeal procedures. 

9)  Filing of an RCE will continue examination within the accelerated examination program.

10.) There is no withdrawal provision . . . however, if an Applicant wishes to leave the accelerated program, Applicant can file a continuation without a petition to make special, thereby placing the application under conventional USPTO examination.

So . . . I think the “accelerated examination” program is an interesting proposition.  However, it remains to be seen whether this new procedure will be accepted by practitioners and/or have any effect on USPTO backlog?  Is the additional burden too “burdensome,” and aren’t there potential post-prosecution issues associated with the new procedure that practitioners should be wary of?  Comments are welcome!

One Response

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  1. Russ Krajec said, on September 7, 2006 at 11:11 am

    This program is a disaster waiting to happen. I pity the poor, unwary practitioner who files one of these prior art searches, unwittingly misinterprets, misunderstands, or mischaracterizes one of the prior art references, then gets sued for malpractice when the billion dollar licensing deal goes south and his client is holding an invalid patent.

    No reasonable practitioner would EVER file an application under these rules, those who do so unknowlingly put their very livelihood at risk.

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