US Patent Office Speedy in Some Cases

John White and Mark Dighton share a laugh in Houston, TX

I am writing to you live from Houston, Texas, where our summer long journey across America teaching the PLI Patent Bar Review Course finds us presently.  For those who are not familiar with Houston let me give you a quick weather report.  It is EXTREMELY HOT and EXTREMELY HUMID.  Luckily we are here at the South Texas College of Law, on the 6th floor in their library, where the air conditioning seems to be working very well.

So, I am on the road, and when on the road I typically write about things that have been perculating for a while, and there is something that has been bothering me for some time.  Would it surprise you or your clients to learn that some patent examiners pick up and work on a file within six months of the application being filed?  Probably not given the accelerated examination option, where you can file a patent application along with an Examination Support Document (ESD).  If you file for accelerated examination the Patent Office will reach a final patentability decision within 12 months, regardless of the invention.  But what if I told you that the application I learned about recently was given a first office action within 6 months when there was no accelerated examination requested, and no ESD filed?
[Patent-Bar]
Yes, there are apparently examiners that have so little to do that they are able to provide a first office action within 6 months, while there are many applicants that have been waiting for a first office action for many years.  Our firm has a client that has a unique mechanical invention which has real market potential who has been waiting for a first office action for over 4 years now.  Our firm also has a client that had a petition to make special granted 3 years ago who still has not received a first office action.  I know of another firm that has a client that has a simple mechanical invention coupled with a process that has been waiting for a first office action for over 5 years.  In my own circumstance as an inventor I have been waiting for close to 3 years without a first office action, and there are some large companies that would be infringing reasonably anticipated claims.  Imagine my disappointment, shock and outrage to hear that there are applicants getting first office actions in non-accelerated cases.  If you are an applicant that has filed for accelerated examination and were willing to make all the terrible admissions you were required to make in exchange for speedy consideration you are likely even more outraged than the rest of us.  How is this fair?  It simply is not fair and something really needs to be done.

Lets take a look at the requirements associated with accelerated examination, which is supposed to be the only way you can get this type of lightening consideration from the USPTO.  To be eligible for accelerated examination, applicants are required to provide specific and detailed information so that review of the application can be completed rapidly and accurately. More specifically, a new application may be granted accelerated examination status when the following conditions are met:

1. The application must be filed with a petition to make special under the accelerated examination program;
2. The application must be a non-reissue utility or design application filed under 35 U.S.C. 111(a);
3. The application, petition, and required fees must be filed electronically using the Patent Office’s electronic filing system (EFS), or EFS-Web;
4. At the time of filing, the application must be complete under 37 CFR 1.51 and in condition for examination;
5. The application must contain three or fewer independent claims, twenty or fewer total claims and no multiple dependent claims;
6. The claims must be directed to a single invention;
7. The applicant must be willing to have an interview (including an interview before a first Office action) to discuss the prior art and any potential rejections or objections with the intention of clarifying and possibly resolving all issues with respect to patentability at that time;
8. At the time of filing, applicant must provide a statement that a pre-examination search was conducted, including an identification of the field of search by United States class and subclass and the date of the search, where applicable, and for database searches, the search logic or chemical structure or sequence used as a query, the name of the file or files searched and the database service, and the date of the search; and
9. At the time of filing, applicant must provide in support of the petition an accelerated examination support document, which must include an information disclosure statement (IDS) in compliance with 37 CFR 1.98 citing each reference deemed most closely related to the subject matter of each of the claims.

With respect to the examination support document, in addition to including an IDS, for each reference cited, the accelerated examination support document 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. Additionally, the accelerated examination support document must include a detailed explanation of how each of the claims are patentable over the references cited with the particularity required by 37 CFR 1.111(b) and (c). Furthermore, the accelerated examination support document must include a concise statement of the utility of the invention as defined in each of the independent claims, unless the application is a design application. Still further, the accelerated examination support document must include a showing of where each limitation of the claims finds support under the first paragraph of 35 U.S.C. 112 in the written description of the specification. Where applicable, the showing must also identify: (1) Each means- (or step-) plus-function claim element that invokes consideration under 35 U.S.C. 112, para. 6; and (2) the structure, material, or acts in the specification that correspond to each means- (or step-) plus-function claim element that invokes consideration under 35 U.S.C. 112, para. 6. If the application claims the benefit of one or more applications under title 35, United States Code, the showing must also include where each limitation of the claims finds support under the first paragraph of 35 U.S.C. 112 in each such application in which such support exists. Finally, the accelerated examination support document must identify any cited references that may be disqualified as prior art under 35 U.S.C. 103(c) as amended by the Cooperative Research and Technology Enhancement (CREATE) Act.

Essentially, requesting accelearated examination is like asking for the rope that will be used to hang yourself.  Factor in all the admissions that must be made in order to obtain the accelerated patent and now even those customers who can afford to pay for the preparation of such a ridiculously detailed patent application will likely elect to simply wait for a “real” patent to issue instead of one with a prosecution history that will surely come back to haunt even the most careful.  But the hearty few who have filed requesting for accelerated examination have to be sick to their stomachs learning that some are getting accelerated treatment without the additional cost, and without any of the troublesome admissions that will hang around the neck of the patentee like an albatross.

I have been pleased by recent intiatives and policy changes within the PTO.  The changes are encouraging and should lead to a better patent system.  Having said that, it is absolutely absurd to have some applications pending waiting for a first office action for 3, 4, 5 years or more, while at the same time some examiners have time to treat applications within 6 months.  Either this examiner was taking cases out of order to meet their quota requirements to ensure they get a bonus and keep their job, or there is at least one examiner, perhaps more, that have so little to do that they can get around to new applications within 6 months.  Either case is bad and management needs to address this immediately.  If examiners have so little do to then reassign them to art units with extraordinary delays.  If examiners are taking things out of order make sure that stops immediately.  If equal treatment under the law means anything it has to at a minimum mean that similarly situated individuals receive similar treatment.  That does not seem to be happening and this is alarming to me as a patent attorney and disgusting to me as an inventor.