Patent Law

AE = Accelerated Excuses

By Gary Odom and Jordan Kuhn

Start with a well-designed, seemingly effective program; add bureaucratic tanglese; top it off with the ubiquitous "we are always right, as we are the government" mentality, and, what do you get? The USPTO Accelerated Examination (AE) program in actuality. In a non-surprising move, the USPTO has rejected numerous otherwise valid requests for AE on the slightest technicalities. Apparently the easiest way to meet the goal of disposal within one year is to dispose of many without examination, and with no regard to fairness.

It is relatively common practice for the PTO to issue a "Notice to file corrected application papers" for minor inconsistencies in filing documents. For instance, for figures that are deemed "not electronically reproducible because portions of figures missing and/or blurry," or where the application includes "photographs of the invention subject matter that appear capable of illustration and which are illegible after scanning," or even when "the drawing sheets simply contained a very faint mark in its upper margin."

Applicant's normal reaction when receiving such notice of correction is to file amended drawings in a timely fashion. But even when applicant promptly responds, these minor inconsistencies are enough for the powers-that-be to bump an application off the AE train.

From MPEP 708.02(a)(VIII)(C):

The petition to make special will be denied if the application omits an item or includes a paper that causes the Office of Initial Patent Examination (OIPE) to mail a notice during the formality review (e.g., a notice of incomplete application, notice to file missing parts, notice to file corrected application papers, notice of omitted items, or notice of informal application). The opportunity to perfect a petition (subsection II above) does not apply to applications that are not in condition for examination on filing.

Therefore, any notice to file corrected application papers, even for minor inconsistencies results in automatic petition denial. Case closed.

After receiving an AE petition denial, applicant may grasp at straws, petitioning the Director to correct this injustice; just to be shot down once again.

The USPTO website has posted several Director petition decisions for instances such as this; all denied. Most notably 11/766,766, 11/866,896, and 12/019,912; each had minor drawing informalities at filing. 

Consistent with USPTO culture, the Director considered an applicant's attempt to be accommodating, by correcting supposed errors in a timely fashion without fighting the PTO on their merit, as an admission of guilt.

Petitioner has responded and corrected the errors. Therefore, Petitioner implicitly acknowledged that the application was not in condition for examination at the time of filing.

So, time to ignore mom's advice. Stop playing nice. If you receive a notice of correction, fight it. Or, kiss all the extra work and expense of filing an AE application goodbye.

Full post as published by The Patent Prospector on May 19, 2009 (boomark / email).