Accelerated examination in the US Patent & Trademark Office

October 8th, 2010

by Andrew Gerschutz

Andy Gerschutz

The average utility patent takes three years from filing to issue because of an extended examination process and a large backlog of patents. This extended examination process is undesirable for inventors and companies that want to bring a product to market quickly or prevent infringing products from capturing market share.

To address this issue, the U.S. Patent and Trademark Office developed an Accelerated Examination program that expedites the examination process. The goal of the program is to take an application from filing to a final decision within one year. While expedited examination may be beneficial to applicants, there are major concerns that need to be considered before enrolling in the program.

To qualify for the Accelerated Examination program, the applicant must submit a complete patent application and two supplemental documents to the Patent Office. The first supplemental document is a pre-exam search document disclosing the results of a prior art search. In contrast, an applicant must disclose known prior art but does not have to conduct an expensive search during a standard examination.

Moved to the top of the docket

The second supplemental document is a support document comparing the applicant’s claims to the references found in the search and explaining why each claim is patentable. Typically, the applicant only argues for the patentability of claims after they have been rejected by an examiner. By requiring the applicant to characterize the claims in advance, the support document may result in unnecessarily narrow claims.

Once in the Accelerated Examination program, the application will receive special treatment in the Patent Office. The application will be moved to the top of the examiner’s docket, multiple conferences will be held with the applicant, and there will be shortened time frames to respond to Patent Office requests. The application will be moved to a final decision, which can be an allowance, a final office action, an appeal, a request for continued examination, or abandonment, within one year of filing.

Not for everyone

While this program may be beneficial to applicants, there are drawbacks to consider. In addition to the risk of unnecessarily narrow claims, there is also a risk of inequitable conduct when characterizing prior art. If a reference is accidentally mischaracterized, e.g., a reference is thought to be irrelevant, a party opposing the issued patent could argue that the patent is invalid.

Another limitation of the process is that the pre-exam search must encompass the full breadth of the claims. If the claims are amended during examination but the original search did not encompass those amendments, the applicant needs to conduct another search and provide the results to the Patent Office.

Given the risks and costs associated with Accelerated Examination, the program may not be appropriate for most applicants. The program may be worth considering if the applicant needs an issued patent very quickly or if the applicant has already conducted an extensive patentability search and did not uncover relevant references. We recommend speaking with qualified patent counsel to discuss your particular needs and the appropriateness of the Accelerated Examination program for your circumstances.

Andy Gerschutz is an associate in the Research Triangle Park office of Moore & Van Allen. Mr. Gerschutz concentrates his practice in intellectual property with a focus on patent prosecution. Mr. Gerschutz’s areas of scientific expertise include plant biology, molecular biology, and biochemistry.