For 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.