Thursday, March 29, 2007

2007 Guidelines for Accelerated Examination

In the June 26, 2006 Federal Register, the U.S. Patent and Trademark Office published changes to the practice for petitions in patent applications to make special and for accelerated examination.

The changes can be found here:

Guidelines supplementing the program requirements were published later, and can be found here:

The rule changes were effective August 25, 2006.

New patent applications were normally taken up for examination in the order of their U.S. filing date. The U.S. Patent and Trademark Office revised its procedures for making certain applications special with a goal of completing examination within twelve months of filing. However, the price to be paid by applicants for this special treatment is high indeed.

To qualify for the new accelerated examination program, an applicant must submit a petition and fee, file the application and all follow-on communications electronically, file a complete application, include no more than three independent claims and no more than twenty independent claims, file for a single invention or agree to elect a single invention without traverse, agree to an interview with an examiner, conduct a pre-examination search, and provide an accelerated examination support document.

In other words, the U.S. Patent and Trademark Office will expedite prosecution if applicants perform most of the work that examiners would normally do.

There are many problems with this procedure. Twenty claims with three independent claims may be inadequate for all but the simplest inventions. Federal Circuit case law has severely weakened the doctrine of equivalents to the point that it may not be worth gambling on an infringement suit unless literal infringement can clearly be shown. With only three independent claims, alternative claiming strategies cannot be fully explored. The English language is imprecise and it is difficult to cover many alternatives of an invention with so few claims. Literal infringement of patent claims can sometimes be avoided with fairly minor changes to a product. Federal Circuit law has evolved to a point where a large number of independent claims is needed to adequately cover an invention. Additionally, file wrapper estoppel problems can arise from voluntarily characterizing the prior art without even knowing if an examiner will consider a reference to be relevant. In addition, there is a strong risk of being accused of inequitable conduct if relevant prior art is located that a patent applicant did not uncover and disclose to the USPTO--the applicant could be accused of not having searched properly.

The search that applicants are required to perform by this procedure is quite substantial. The USPTO requires a search submitted in support of a petition for accelerated examination to include a classified search of the US patents and published patent applications in the Class and subclass where the claimed invention is most likely to be classified; a text search of the US patents and published patent applications that covers the subject matter of the independent claims using terms recognized in the art given their broadest reasonable interpretation; a text search of foreign patent documents that includes the sources required under the PCT minimum documentation requirements, to the extent available (the PCT minimum documentation requirements can be found at;
a text search of the suggested non-patent literature (NPL) resources from the current USPTO search templates found at
; and a search employing any special tools (e.g., nucleic acid or protein sequence searching tools) as identified in the current USPTO search templates.

After doing all this work, the result may just be a quicker Final Rejection.

In the end, taking some applications out of order will just mean that it will take even longer for other patent cases to be processed. And if many companies begin to use the accelerated examination procedure, it will eventually get bogged down too, unless examiners rely strongly on the work done by applicants.

Some companies who have large portfolios may not be too concerned about the validity of any individual patent, but other applicants may highly value their patents. Some large companies may not be too concerned about quality because with a large portfolio, they can accuse a potential licensee of infringing a large number of patents, and it will be too burdensome for the potential licensee to evaluate such a large volume of patents. This rule change may benefit such companies at the expense of smaller companies who need more independent claims and stronger patents.

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