PTO Proposes New "Accelerated Examination" Procedures

In response to unrelenting criticism of the “backlog,” the USPTO has announced a new “accelerated examination” program that promises a 12–month final decision on patentability. This creative solution will give applicants the chance to cut in line if they meet certain criteria. To qualify, a patent applicant must:

• File the application electronically with a petition to make special (with fees paid and appropriate declaration);
• Conduct a search of prior art;
• Submit all prior art that is closest to their invention;
• Identify all the limitations in the claims that are disclosed in the submitted references (with pin cites to the references)
• Explain what the prior art teaches and how their invention is different (claim by claim);
• Explicitly discuss how the invention is useful and show how the written description supports the claimed invention;
• Include only 20 claims (3 independent);
• Agree to have an interview with the Examiner; and
• Agree to base claims of patentability only on the independent claims.

The applicant will only be given one-month (non-extendable) to reply to any office action. An applicant may abandon the accelerated application in favor of a continuing application, and the continuing application will not be given special status under the accelerated examination program (unless so requested).

The change in examination requirements will apply to all petitions to make special filed on or after August 25, 2006. Comments concerning petition to make special practice may be sent by email to mpepfeedback@uspto.gov.

According to the PTO, the accelerated examination procedure is designed to give applicants quality patents in less time. In exchange for quick examination, patent examiners will receive more focused and detailed information about the invention and the closest prior art from the applicants.  This increased disclosure up-front by applicants will help examiners more quickly make the correct decision about whether a claimed invention deserves a patent.

Caution: The rules and restrictions for this procedure are quite specific (onerous?) and have some potential for loss of rights for your clients. Make sure that you understand the rules completely before signing-up.

Link: http://www.uspto.gov/web/offices/com/sol/notices/71fr36323.htm

Aside: I had heard some rumors that the PTO would be enacting its proposed changes to continuation practice in August of this year.  Those do not appear to be true — Rather, that this change appears to be the August change and the new rules are likely around the end of the year.

Comments

[David Barman]

Thanks for including the words of caution at the end of your reporting. I hope people tread cautiously.

Inventors often believe that their inventions are CLEARLY different, without an understanding of what constitutes true novelty.

[Jim]

This seems a good procedure for those only looking for a patent NUMBER to slap on their product's box. Anyone else ... no. As a patent attorney, I would never take this procedure because of the liability involved (if the client is sued, the client will sue you). I think if the procedure somehow prevented estopple from applying against such an applicant, the procedure would be better. The details of this procedure are a good read as it shows what aspects the Patent Office thinks will help move a patent application along quicker.

[Mark Perdue]

My mentor in prosecution cautioned against any and all petitions to make special. He believed that anything that resulted in an application receiving special treatment or increased scrutiny was, on balance, not a good thing. My experience with reissues and to a lesser extent reexaminations ("made special" by the Office) reinforces his conclusion.

[ja]

Jim) Two clarifying questions 1)Do you mean to say that a client who tried to sue based on a patent and failed would have a malpractice claim against you? I can't see why a client being sued would care either way. 2)Are you referring to prosecution history estoppel during claim construction?

THe second point I think highlights the main problem with the relatively onerous procedures the PTO proposed here and in the rulemaking on claims practice earlier this year: The high degree of uncertainty in how courts will regard applications file using such procedures. The patent jurisprudence is already fairly dynamic. Since these new administrative rules aren't particularly binding on the courts, perhaps statutory reform is a more desirable route to shorter pendencies.

[Nic]

As first blush this appears to me as being absurd. Essentially, the Office is asking for self-examination. Next we will be asked to write Office Actions rejecting our own claims. I think there must be a distinction between Examiner and Agent/Attorney which has been blurred by this process and which I believe will create significant possibilities for the practitioner to become ensnared by their own opinions. I find little advantage as compared with the risks; therefore, I do not foresee using this process.

[Erik Ericksen]

Maybe I am missing something but the Federal Register notice does not appear to prevent the Applicant from amending the claims to present limitations found either in dependent claims or from the specification. The only caveat in this regard would be that the initial search encompassed the limitation or is updated to do so. On appeal you cannot separately argue dependent claims. My personal concern would be the dangerous requirement of highlighting where limitations are found in the references and how the claims differ. Depending on how a rejection is presented, different passages may be more or less relevant. Arguments regarding misguiding or misrepresentation would generally be an unacceptably high risk.