BNA (subscription service) reported on a webinar presented by CPA Global that touted the benefits of the PTO’s accelarated examination option for patent applications.
Accelerated examination is an option available to patent applicants who follow a fairly rigorous set of requirements when filing their patent application. These requirements include that the applicant perform a thorough prior art search where the prior art is searched for each limitation presented, or that may later be presented, in the claims. The applicant must also include an examination support document (ESD) where he details the differences between the prior art found in the search and the claimed invention. Applicants are limited to filing applications with 3 independent and 20 total claims. In return, the PTO advances such applications out of turn and attempts to issue patents in about a year.
According to the most recent PTO statistics on accelerated examination, the PTO is doing a pretty decent job, issuing patents in about 296 days from filing. The PTO grants about 50% of petitions for accelerated examination, with many other petitions being correctable for lacking formal requirements. Of those granted, the allowance rate by the PTO for FY2009 was 80.3%, compared to an overall allowance rate of about 42%.
The attorneys who presented at the webinar cited the difference in allowance rate, as well as the difference in pendency time, about 296 days compared to 3.5 years, as benefits of accelerated examination. Given the 20 year patent term from filing date, this time can be significant.
The presenters believe that one reason for the differences in allowance rate is that the examiners have a different attitude in an accelerated case. Instead of the prevailing attitude among examiners that they need to find a way to reject an application, during accelerated examination they seek to work with the applicant to find a way to craft the claims in such a way as to make them allowable. Early interviews are another way of encouraging give and take between the applicant and the examiner. Since less of the back and forth is conducted in writing, the presenters believe that the patent will be more litigation friendly, having less potential for arguments and amendments that create estoppel.
The presenters did acknowledge that the pre-filing search can be onerous. The applicant must provide search results that include U.S. patents and patent applications, foreign patent publications, and non-patent literature. The search must include all of the features or limitations of the claims. If a claim is amended or added later that includes a feature that was not included in the search, the applicant will not be permitted to make the amendment or add the new claim.
And, of course, examination support documents are frought with ways that an applicant could be accused of inequitable conduct when later seeking to enforce the patent. Potential defendants may argue that the search was insufficient, that the applicant did not submit all relevant prior art, that the applicant mischaracterized certain prior art, and many other statements based on the search.
The allowance rate difference is a bit disingenuous. The PTO is not allowing accelerated applications at a rate nearly twice that of all applications. The allowance rate figure the PTO uses is misleading. The PTO credits an application as being abandoned when a request for continued examination (RCE) is filed. The rate of RCE filings is increasing rapidly. Thus, the overall allowance rate is not really that low. Given the speed of an accelerated examination case and the examiner’s willingness to work with the applicant, RCE filings are far less likely, resulting in a higher allowance rate.
Should You Use Accelerated Examination?
The presenters sing the praises of accelerated examination. They suggest that it would be useful when a specific target is in mind for litigation, when the application has an existing portfolio that the application is building on, when the invention is an incremental advance over existing technology, and for start-up companies that want patents in hand to woo investors.
Accelerated examination sounds great. You can get a patent in less than a year and the examiner will work with you to craft the best claims to cover the invention and avoid the prior art. It sounds like an extremely underutilized way to get a patent quickly. It would be great if this aura of cooperation existed throughout the PTO.
Unfortunately, in an era where defendants are inequitable conduct happy, the requirements for accelerated examination are a bit too stringent. Perhaps this is an area where new Director Kappos can work to reduce pendency and work with applicants to improve patent quality.