NEW ACCELERATED EXAMINATION PROCEDURES

The USPTO has a procedure for accelerated examination of applications. See patents petitions to make special. Now a new program is proposed and announced by Dennis Crouch of Patently-O to become effective August 25, 2006.

The new Accelerated Examination Procedure is more onerous than the current program. Much effort will be required to place an application in condition for accelerated examination. The legal fees associated with preparation of such an application may make it prohibitive for many applicants.

The application is filed with a petition (and associated petition fees). Of course, the normal application fees must also be paid at the time of filing. The application and petition must be filed electronically.

The claims of the application must be directed to a single invention. If review of the petition reveals that the claims are not directed to a single invention, the applicant is obligated to select without objection (traverse) a single invention. The applicant is agreeing up front to agree with the opinion of the examiner.

The applicant must also agree to an interview at a time selected by the examiner. I assume that the examiner would be reasonable, but the new procedure puts him in control.

In a significant expansion from the present practice, 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 cost of this scope of search may be prohibitively expensive for most clients.

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 cited references .

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). (Enablement and best mode.)

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 given a single 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 must narrowly define the scope of the invention and affirmatively describe the relationship of the invention and the prior art. It is difficult to imagine how the inventor/applicant will achieve broad patent coverage through this “accelerated” procedure. Also the costs of preparing an application to meet the procedural requirements will be significantly greater than for a “normal” utility application.