USPTO considering an end to accelerated examination

By Gene Quinn & Steve Brachmann
August 30, 2016

uspto-globeFor the past decade, the U.S. Patent and Trademark Office has offered a patent application program known as accelerated examination, which can advance a patent application out of turn for a faster prosecution. Recently, the Patent Office recently announced changes to the accelerated examination program, and hinted that they would soon publish another notice soliciting public comments with respect to whether the program should be kept in place.

In order to take advantage of the accelerated examination program, a patent application must be filed with pre-examination search documents and an examination support document (ESD), which details U.S. and foreign patent documents related to the claimed invention. In essence, a party filing a patent application for accelerated examination must do their own examination of the prior art, an exceptionally difficult, time consuming and expensive task fraught with peril. According to statistics published online by the USPTO, the average time to first action in an accelerated examination was 4.9 months as of 2013, a much quicker time to first action than the average of 18.4 months for all cases.

Accelerated examination is a different process than prioritized examination, or Track One examination, which became effective as of September 2011. The Patent Office is not suggesting an end to prioritized examination.

Prioritized examination does not require the filing of an ESD but it does come with some hefty filing fees. Patent applications filed for prioritized examination have a $4,000 petition fee, which is reduced to $2,000 fee for small entities and $1,000 fee for micro entities. By contrast, accelerated examination petitions cost $140 and carry a $75 fee for small entities or a $35 fee for micro entities. Prioritized examinations provide a quicker time to first action than accelerated examinations at an average of 3.9 months.

Prioritized examinations have done a good job of cannibalizing the accelerated examination program at the USPTO, so much so that the agency issued a notice in the Federal Register published Tuesday, August 16th, seeking public comment regarding whether the accelerated examination program should remain. As the USPTO notes in the notice, there have been fewer than 200 accelerated examination petitions filed each year since the establishment of prioritized examinations.

Frankly, that there have been more than a small handful of accelerated examination petitions over the last five years is astonishing.

One reason why accelerated examination hasn’t been a popular choice for parties filing patent applications is that the ESD isn’t just time consuming to create, it can also actively be used against a patent owner after the patent has issued to challenge validity. The ESD used in accelerated examinations requires those filing a patent application to determine the limitations of the patent application’s claims and an explanation of how claims are patentable over cited references, essentially requiring applicants to examine the application themselves prior to filing the application. Given the high percentage of claims struck down by the Patent Trial and Appeal Board (PTAB) in inter partes reviews, it’s understandable why anyone filing a patent application might think twice about creating a paper record detailing the limitations of their patent claims. By contrast, the more expensive Track One prioritized examination doesn’t require ESDs or prior art searches and, therefore, can be filed without the same negative prosecution history fears.

Furthermore, the accelerated examination was not a particularly popular choice because the Patent Office routinely found unacceptable the patent searches submitted in support of acceleration requests. TO qualify for accelerated examination the applicant was required to identify the field of search, the date of the search, database searches, the search logic used (including the query), the name of the file or files searched and the database service. Even experienced patent practitioners utilizing highly capable search firms had great difficulty satisfying the Patent Office. Thus, even for those who were not scared away by the self examination of the application and copious admissions required in an ESD, accelerated examination frequently proved to be nothing more than a dead end.

Finally, the patent landscape has simply shifted. For example, when accelerated examination was first established, pre-examination documents were required to include a classification search of the United States Patent Classification (USPC) system to identify the class and subclass of the invention. Since accelerated examinations were instituted, the USPTO has worked with the European Patent Office to create the Cooperative Patent Classification (CPC) system for utility patents.

In a world where lightening fast, prioritize examination can be had for the payment of a fee it really doesn’t make sense to go through the trouble of doing the rigorous search and creating an examination support document that will create nothing but an undesirably negative prosecution history. Time will tell what the Patent Office does, but this is one program that was never as useful as it was promoted as being, and any utility it may have once had has long since been outlived.

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and President & CEO ofIPWatchdog, Inc.. Gene founded IPWatchdog.com in 1999. Gene is also a principal lecturer in the PLI Patent Bar Review Course and Of Counsel to the law firm of Berenato & White, LLC. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

Gene Quinn

Steve Brachmann is a freelance journalist located in Buffalo, New York. He has worked professionally as a freelancer for more than a decade. He writes about technology and innovation. His work has been published by The Buffalo News, The Hamburg Sun, USAToday.com, Chron.com, Motley Fool and OpenLettersMonthly.com. Steve also provides website copy and documents for various business clients and is available for research projects and freelance work.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 6 Comments comments.

  1. John White August 30, 2016 11:02 am

    PTO, here is my comment. Please end Accelerated Examination. It has outlived its purpose. In addition, limit special case to: Age/Illness (free and automatic), Track 1, PPH, and assorted Pilot Initiatives (ie, Green, Small entity Bio, etc.) that may be politically or technologically advantageous.

  2. Sandy August 31, 2016 7:32 am

    “Even experienced patent practitioners utilizing highly capable search firms had great difficulty satisfying the Patent Office. ”

    That statement is just dripping with irony coming from someone who thinks they know how to do the PTO’s job

  3. Gene Quinn August 31, 2016 12:02 pm

    Sandy-

    Not sure what you find ironic. The USPTO was extraordinarily unreasonable with the search requirements for accelerated examination, which is well known in the industry and also well known inside the Patent Office. If you are unfamiliar with the fact that the USPTO was unreasonable that speaks volumes about how little you really know.

    Like so many times when the USPTO abuses their authority, close to 90% of searches were returned as insufficient, which raised eyebrows both inside and outside the Office. So if there is an irony it seems to be that you don’t understand what it is you are commenting on but are doing so in a condescending way. You must be an examiner.

    As far as me knowing how to do the PTO’s job… YES! If given the opportunity to run the Patent Office I know I could do a better job than is being done currently because I would not tolerate the arbitrary and capricious decisions and the constant abuse of power by some examiners and Officials.

    -Gene

  4. Curious August 31, 2016 12:32 pm

    That statement is just dripping with irony coming from someone who thinks they know how to do the PTO’s job.
    Irony? No. That statement is just reflective of the unreasonableness of the USPTO (BTW — I used the term “unreasonableness” before reading Gene’s comment above).

  5. Gene Quinn August 31, 2016 2:16 pm

    Sandy-

    I found something truly ironic in your comment… its timing. On a day when the Commerce Department reports widespread financial fraud being perpetrated on the Patent Office by patent examiners you suggest that I don’t know what I’m talking about. Talk about irony. This just furthers the narrative of rogue examiners doing what they want with impunity.

    See: http://www.ipwatchdog.com/2016/08/31/patent-examiners-defraud-government/id=72481/

    -Gene

  6. Eric Mirabel September 21, 2016 1:56 pm

    Gene: I use accelerated examination extensively (disagree with your reasons not to); but now I’ve stopped because of rogue Examiners: who hate another type of “must do asap” (in addition to Track 1 prioritized) application for their already “over-worked” (and make no mistake, a lot of people there are over-worked — just not everyone) groups. The same format that’s worked as smoothly as my rhymes in Group 1600 accelerated exam petitions, fails in other Groups, more than once, and gets denied (which can’t be corrected) because the alleged defects are so great.