By Michael Fuller, Nerac Analyst
The USPTO now allows patent applicants to bypass the long lines of other applicants and receive, in the agency’s words, a “quality patent in less time” by accelerating the examination of their applications, if the applicant is willing to do some of the PTO’s legwork. On balance, the potential benefits of accelerated examination should outweigh the pitfalls, but both the pros and cons should be considered before beginning the process.

The accelerated examination process is not entirely new. In reality it is merely a “petition to make special.” Historically, the PTO has acknowledged that the examination process is slow and offer applicants the opportunity to have their application expedited through a “petition to make special.” An applicant could qualify for such a petition if one or more criteria is met, such as the invention is directed to improving environmental quality, or if the inventor is in poor health or advanced age.

Applicants Must Meet Specific Criteria
Last August, the PTO changed the “petition to make special” program to allow for accelerated examination of any application meeting new criteria. In the PTO’s new program, besides the usual patent application requirements (the invention must be new, useful, and non-obvious, and be accompanied by a written description that discloses how to make and use the claimed invention), an applicant must also:

• File the completed application and fees electronically.
• Conduct a search of the prior art, submit all prior art that is closest to the invention (in the form of an IDS), and explain not only what the prior art teaches, but how their invention is different. This differs from the applicant’s usual duty to disclose relevant prior art of which they are aware, but NOT necessarily to search for prior art. Typically, an IDS is not required for an application.
• State how their invention is useful.
• Explain how the written description supports the claimed invention.
• Limit the number of claims in their applications (no more than 3 independent claims and no more than 20 claims directed to a single invention).
• Agree to respond to most PTO communications in shorter times.
• Agree to an interview with the examiner whenever the examiner so requests it.

Applicants in poor health or advanced age and wishing to have their applications expedited need not follow these stricter guidelines.

Here’s What You Can Expect
Anyone who has filed patent applications with the USPTO in the past knows the biggest benefit of an accelerated examination: dramatically shortened time to approval. The PTO promises a 12-month turnaround for applicants who adhere to their guidelines in the accelerated examination program. In fact, the first patent issued under the accelerated examination program, a printer ink gauge to Brother International, took only six months to issue, compared to an average review time of 25 months for applications in the ink cartridge technology area. This in turn means an invention gets to market more quickly and starts generating income.

However, as more applicants take advantage of this program, they shouldn’t expect such a quick turnaround in the future. Despite its initiatives in the past few years to expedite the examination process by implementing Internet-based filing and hiring new examiners, the PTO is still swamped with applications and is generally too understaffed to deal with them as quickly and efficiently as possible. Furthermore, applicants and their patent attorneys who wish to take advantage of this program should be aware that they could lose patent rights if they fail to adhere to the new guidelines imposed by the PTO. For example, failing to respond to an office action within the newly proscribed time period could result in abandonment of the application.

Patents Could Become Legal Targets
From a broader perspective, the quality of patents issued via accelerated examination will probably diminish because of the shortened examination time. This in turn may cause these patents to become especially prominent targets for opponents to attempt to invalidate. Ultimately, the program may be severely undermined if more and more patents granted through the accelerated examination process are challenged or invalidated.

Nerac Project Analyst Rick Lilley says the biggest problem with accelerated examination will be the introduction of prior art evidence that the PTO now requires as part of the accelerated examination process. Any patents or printed publications offered by an inventor or applicant during the accelerated examination of a patent, even in support of an invention’s patentability, are potential ammunition that can be used against the invention in an infringement suit. For example, a patent reference offered by an applicant to show non-obviousness could be used by an opponent or competitor of the patent holder to invalidate it if that opponent can find something within the patent reference that suggests the patent meets the Patent Act’s Section 103 criteria for obviousness.

Only One Percent Of Applications
Despite the potential pitfalls, Nerac Project Analyst Alan Harrison estimates that eventually one percent of all patent applications (last year the USPTO received approximately 500,000 applications) will be prosecuted via the accelerated examination route, based on the cost of thorough pre-examination searches versus the number of patent applications worth pursuing. Therefore, Nerac’s ability to perform thorough prior art searches and provide thoughtful, professional analyses of these references should prove valuable to companies and inventors wishing to take advantage of the accelerated examination process.

To find out more about accelerated patents, these publications are helpful:

• “Changes to practice for petitions in patent applications to make special and for accelerated examination,” from the Federal Register Online, at http://www.uspto.gov/web/offices/com/sol/notices/71fr36323.htm.
• “Accelerated examination,” at http://www.uspto.gov/web/patents/accelerated/index.htm.