September 2006: U.S. Patent Office Offers Speedier Patent Examination

"It takes too long to obtain a patent. Is there anything I can do to speed up the process?" Patent lawyers and the U.S. Patent and Trademark Office (USPTO) have been hearing this complaint for years. Recently the USPTO responded to the demand for a streamlined process by offering what it calls "accelerated examination," which promises to enable patents to be granted within a year of filing -- a significant decrease compared to the 3-5 year process commonly endured by patent applicants. (Complete details on the program can be found at http://www.uspto.gov/web/offices/com/sol/notices/71fr36323.htm).

Patent applicants with a strong desire, or special need, to obtain patents quickly should consider the accelerated examination program. However, as with any other special legal process, one should consult with a patent attorney before seeking accelerated examination to evaluate the advantages and disadvantages of the program on a case-by-case basis.

The advantages of accelerated examination for patent applicants are clear. Obtaining a patent more quickly means that you can enforce the patent earlier, make business decisions that depend on the patent sooner, and inspire investors and customers with more confidence in the defensibility of your intellectual property.

The disadvantages of accelerated examination lurk in the details of the program. As anyone who has worked on a patent application will recognize, the accelerated examination program requires the applicant to perform a significant amount of work that normally would be performed by the patent examiner. As a result, preparing a patent application for accelerated examination will typically be significantly more time-consuming than preparing a regular application. In particular, to qualify for accelerated examination the applicant must:

• conduct a pre-examination prior art search satisfying specified requirements;
• provide an "accelerated examination support document," which includes a detailed report of the prior art search, provides a detailed analysis of the relationship between the claims and the prior art search results, describes the utility of each independent claim, and points out where each limitation of the claims is described in the patent application's specification;
• file a complete patent application (e.g., the declaration must be signed and the filing fee must be paid at the outset);
• claim only a single invention and include a limited number of claims;
• agree to hold an interview with the Examiner to discuss any outstanding issues arising in the examination process;
• submit a petition and fee (currently $130); and
• submit the application, and all subsequent submissions, online using the USPTO's Electronic Filing System (EFS).

Furthermore, complying with these requirements may limit the scope of the patent application in several ways. First, the claims must cover only a single invention, and the number of claims is limited. Second, the detailed written analysis that the applicant is required to provide, comparing the claims to the prior art and pointing out how the claims are supported by the specification, could later be used as ammunition against the patent applicant to limit the scope of the claims. As a result, anyone considering using the accelerated examination program for a particular patent application should carefully consider, in cooperation with patent counsel, the advantages and disadvantages of the program as it applies to that patent application.

In summary, accelerated examination has the potential to offer the benefit of speedier patent prosecution. On the other hand, patent applicants should not be blinded by the appeal of obtaining patents more quickly. Accelerated examination should only be undertaken after careful consideration of its advantages and disadvantages in the context of a particular patent application and the applicants goals for that patent application. If you would like to discuss whether a patent application for your invention is a good candidate for accelerated examination, please contact Robert Plotkin, P.C.