ACCELERATED EXAMINATION PROCEDURE REVISITED

The USPTO has announced the grant of the first patent under the Accelerated Examination Procedures. Numerous commentators have opined (some strongly) that the advantages of the procedures are outweighed by inherent risks taken by the applicant (or more exactly the applicant’s attorney).

Much of the concern has to do with the search and certification requirement. The applicant is obligated to perform an exhaustive search and report the search results to the examiner. Omitting a prior art document can later open up the patent to invalidity and claims of inequitable conduct.

Repeating portions of my Accelerated Examination Procedures blog of August 2006, a significant expansion of the Accelerated Examination Procedures is that the applicant must conduct a search and the search must include foreign patent documents and non-patent literature. This is a broadened search. As a change, a search report from a foreign office will not satisfy the search requirement.

The search must be directed at the invention claimed or that may be claimed.

The applicant must specify the field of the search by class, subclass, date of search, the search logic, the name of the files searched and the databases searched. The applicant is required to insert into the petition affirmation that he/she has a good faith belief that the pre-examination search was conducted in compliance with the stated requirements.

In addition, the applicant must include an IDS with the petition “citing each reference deemed most closely related to the subject matter of each claim.” Further the petition must include an identification of all the limitations in the claims that are disclosed by the reference specifying where the limitation is disclosed in the cited reference.

Also, there must be a detailed explanation of how each of the claims are partentable over the references cited.

The petition support documents must include a concise statement of the utility of the invention as defined by each independent claim.

The petition support documents must also show where each limitation of the claims finds support under 35 USC 112 (1st paragraph).

The support documents must further identify any cited references that may be disqualified as prior art under 35 USC 103(c) amended by the Cooperative Research and Technology Enhancement (CREATE) Act.

If the filed application with support documents for accelerated examination, is found lacking in any manner, the applicant will be give a singe one month period to cure the deficiency.

It appears to me that there will be significant ramifications regarding the scope of an allowed patent that is the product of the accelerated application. Particularly, the applicant appears to narrowly define the scope of the invention and affirmatively describe the relationship of the invention and the prior art.