Accelerated Exam in Inequitable Conduct Friendly Era

The United States Patent Office announced on March 13, 2007 that it had just issued the first patent granted under the then newly minted accelerated examination program, which was first brought into effect in August of 2006. The patent in question, , U.S. Patent No. 7,188,939, was granted to Brother International, Ltd. from an application filed on September 29, 2006, making the pendency of the application less than six months.  Wouldn’t it be nice if that could happen routinely and without having to compromise the integrity of the underlying patent?  The Federal Circuit may have made that possible should the new PTO Director want to revisit accelerated examination and fashion a more realistic set of requirements.

This extraordinarily fast allowance and issue marked a potential new era in how patent applications will be handled by the US Patent Office, provided, of course, applicants are willing to engage in the process, which at the time I opined was doubtful. I still believe that accelerated examination is under utilized, and there is no one to blame other than the Patent Office, at least until now perhaps.  While there are a number of onerous requirements one must satisfy in order to qualify for accelerated examination, there are at least two requirements that stand head and shoulders above the others as potential causes for concern for most applicants and attorneys. The real difficulty with accelerated examination from a prosecution history viewpoint is with respect to what is required in the pre-examination search report and in the examination support document.

The pre-examination search must involve U.S. patents and patent application publications, foreign patent documents, and non-patent literature, unless the applicant can justify with reasonable certainty that no references more pertinent than those already identified are likely to be found in the eliminated source and includes such a justification with this statement. The pre-examination search must also be directed to the claimed invention and encompass all of the features of the claims, as well as any disclosed feature that may be claimed. The short of this is that at the time of filing it will be necessary to envision any and all amendments that may be made, as well as any and all claims that will be added. This is true because the amendment will be refused entry when a claim amendment is attempted, or a claim is added, and the substance is not supported by the pre-examination search.

Insofar as the examination support document is concerned, this requirement will likely cause most who would otherwise be interested in accelerated examination to at least pause and consider whether the benefit really will outweigh the detriment. When I attended the National Association of Patent Practitioners Annual Conference in San Diego, CA, everyone was referring to the ESD as an “express suicide document,” a term coined by a frequent reader of this blog who shall remain anonymous, unless he wants to claim it and then I will be happy to give him credit for this creative and very descriptive characterization. In any event, the examination support document must include an Information Disclosure Statement, and for each reference cited in the IDS the applicant 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.

Last week a significant change in the laws surrounding inequitable conduct occurred, with the Federal Circuit coming to the rescue of patent prosecutors everywhere who are afraid to meaningfully participate in prosecution by providing the Patent Office useful information for fear of how it will be mischaracterized later by rabid patent litigators.  Time will tell whether accelerated examination will be used by applicants more now that the Federal Circuit has virtually made it impossible to plead inequitable conduct as a defense prior to actually having information that such fraud has occurred.

Whether patent attorneys and patent agents will be willing to use accelerated examination more now moving forward remains to be seen.  Now that newly confirmed PTO Director David Kappos has arrived on the scene he and the Patent Office generally would do well to revisit accelerated examination to see if there are ways to make it more palatable to the patent bar and applicants, while at the same time providing Patent Examiners more information than they typically get in hopes of moving prosecution along at a faster rate.  It is certainly possible to tweak accelerated examination, particularly now that inequitable conduct is far less of a concern.  But the Patent Office needs to take into consideration the costs associated with preparing the ESD, which are not at all trivial.  The Patent Office also needs to take into consideration the reality that doing a worldwide patent search is simply over the top, and patently ridiculous (pun intended). Few, if any, do a worldwide patent search in order to determine whether moving forward with the time and expense of a patent application makes sense.  Still fewer (if that is possible) do a worldwide patent search that would satisfy the accelerated examination standard.

Unless and until the Patent Office revises the accelerated examination requirements I think this procedure will continue to be undesirable.  My hope is that Kappos will look at these requirements though, and sooner rather than later.  It simply makes no sense to me to have such a procedure be severely under utilized, and so over burdensome.  Obviously, this is not helping.  Accelerated examination would be more help to applicants and Examiners if it were realistic and calculated to give help, not have the applicant examine the application for the Patent Office.  This all or nothing mentality is not helpful, and really guarantees that no help will be provided, which is not at all a step in the right direction to lower pendency and address the backlog.

I personaly do not think that the patent bar and applicants have anything against helping Patent Examiners as long as there is minimal inequitable conduct exposure, which has been achieved thanks to the Federal Circuit.  Nevertheless, the cost needs to fit within a relevant price-point for applicants, particularly during a recession.