Patent Law

Accel Excels

By Gary Odom and Jordan Kuhn

Having recently completed an Accelerated Examination filing, I am convinced that this is the way to go, especially under ideal circumstances. Accelerated Examination (AE) has taken quite a lashing on this blog, with one muffin-head professing: "Forget accelerated examination. Accelerated examination is an act of desperation for both the patent office and applicant." Personally, I am left rather touchy-feely about its prospects.

The AE process itself is very doable, especially for applications in technology areas with limited prior art and fairly straight-forward inventions. The meat of an AE application boils down to the AE support document, which must detail the closest prior art for each claim limitation, provide a statement of patentability for each claim, and provide specification support for each claimed feature.

AE definitely involves significant additional work over a traditional application, but the payoff is big as well. The goal of the PTO is to reach final rejection or allowance within 12 months of filing. Additionally, an application granted under the accelerated examination program arguably results in a patent more robust than one taking the plain-Jane approach. Here's why: the additional time spent by an applicant before filing the application leads to claims that are well drafted, easily construed, and patentably distinguishable over the prior art. So, even when handed to an examiner that is less than competent, the odds of securing enforceable claims are greatly improved.

When discussing AE, the focus always drifts toward increased chance of inequitable conduct and problems in future litigation. While these are admittedly inherent issues buried within the AE support document, they do not necessarily outweigh the benefits. Nor, if the work is properly done, is inequitable conduct any more likely. After all, the applicant specifies the databases searched. The only inequitable conduct liability is failing to cite highly relevant art that should have been seen within the parameters of search. Which is to say that AE places responsibility firmly in the applicant's/prosecutor's lap. AE would be anathema for production-line prosecution shops. Which is to say that AE is a statement of quality for those prosecutors up for it.

Cost to applicant is also a topic of concern in AE, yet there is the potential for patentees to actually save money in the long run. Accelerated Examination can act as a filter, blocking applications for non-novel and obvious inventions from ever being filed. The extensive time put into prior art search and possible claim construction yields a better picture of what to expect during examination, before the application is even filed. A little extra money up front could yield savings holistically with the patenting process.

Looking at total lifecycle, the positive benefit/cost of AE could be considerable. There is no discounting the prospect of an AE patent as gold-plated, imminently enforceable, if not bulletproof. An AE patent is less likely to suffer reexamination, and thus more likely to drive an infringer to settle.

The praise for AE is adulterated. For applications in areas with lots of prior art, where the prior art is not easily winnowed, AE is practically untenable. The prior art sifting task would be onerously expensive. Further, AE beckons prior art search excellence. An indifferent searcher is a formula for AE disaster.

There has been discussion within the PTO of implementing AE-support-document-like-requirements across the board for all new applications; an idea that has been met with harsh criticism. But there is a flipside.

In an AE regime, the current reject, reject, reject mentality of the examiner corps would subside, due to the reduced pressure on examiners to find the best prior art; this reduced pressure stemming from the significant amount of prior art search already performed by applicant. Reduced pressure on examiners would lead to improved retention. Examiners that previously left due to feelings of insignificance resulting from their lack of freedom to actually make patentability decisions, would now have reason to stay. The decreased attrition would naturally lead to decreased pendency.

A voluntary AE program, as now, is a sensible balance. Making patenting so expensive with requisite AE search would truly turn patents into the sport of kings.

Accelerated Examination is a new program. Despite the potential for intrinsic problems, AE is a viable option, with the possibility of benefits far outweighing the additional time, expense, and risk. Time will tell if the AE cachet gives a sheen to enforcement that merits gold-plating patents with a front-loaded prosecution payout.

Previous Patent Prospector coverage: June 27, 2006; November 2, 2006; May 17, 2007; September 14, 2007.

Full post as published by The Patent Prospector on September 20, 2008 (boomark / email).