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.


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Join the Discussion

11 comments so far.

  • [Avatar for Gerry Elman]
    Gerry Elman
    August 26, 2009 03:10 pm

    And back in October 2007, I suggested that improved semantic analysis tools and massive databases of technological information should make it possible to automate the preparation of such documents by the US PTO. See link to my editorial in Biotechnology Law Report at Shall we revisit that idea now that an IT-savvy Director is at the US PTO’s helm?

  • [Avatar for Public Searcher DIP]
    Public Searcher DIP
    August 13, 2009 04:45 pm

    No two people approach a search in exactly the same manner, so I understand the knee jerk reaction of rejecting a search the first time. I do it to my associates all the time even though my suggested modifications rarely uncover new art.

    Re: “do the searches that are mandated exceed the scope of the search that would be done by the USPTO in a non-accelerated case?”… Of course they do, but that’s comparing apples and oranges. The examiner is still going to do their search for these cases on top of what you’ve done before they allow it.

    I don’t mind this seeming double standard at all. The applicant submitted AE search is validity-lite that must be documented. The examiner only needs to find a few references that can be applied singly or together for a 102/103 rejection. They don’t need to find all of the art or even the best art to move the case forward in their docket. To put numbers to the two different search styles… an examiner can go through a few hundred references while the AE search should encompass a few thousand references.

    Pleasure chatting with you… I can go on forever with regard to this stuff!

  • [Avatar for Gene Quinn]
    Gene Quinn
    August 13, 2009 04:12 pm

    Public Searcher DIP-

    It seems that the numbers you have are what I have heard. It just bothers me that a 80% are rejected the first time. It is even worse, if you ask me, that a good faith and real search would get rejected half the time.

    In your experience, do the searches that are mandated exceed the scope of the search that would be done by the USPTO in a non-accelerated case?

    Thanks for the information!


  • [Avatar for Public Searcher DIP]
    Public Searcher DIP
    August 13, 2009 02:19 pm

    Believe me, as a full time patent searcher, this is a topic very near and dear to both my heart and wallet. Like most aspects of prosecution, the goal is to garner approval of a single PTO employee. Once you have that one person’s approval, you are fast tracked for examination. As we both know, this can be life or death for many small companies (particularly start-ups) so it surprises me how reluctant attorneys are to pursue this option.

    Here are the #’s from PTO website for the past fiscal year:

    54% of applications have been granted
    19% are still pending
    15% have been denied for not being done right
    5% have been dismissed or abandoned
    7% have been denied based on merits

    And reading between the lines, if you do not improperly file the ESD or Pre-X and let the pending apps run their course, the numbers turn out to be:

    82% of applications will be granted
    8% will be dismissed or abandoned
    10% will be denied based on merits

    This is significantly higher than the latest mid 40’s % being touted as the issuance rate and a lot easier to present to a financially-based decision maker.

    Regarding the acceptance of the search, I don’t know what to tell you other than an honest attempt (no field-of-search fibbing) gets the respect of the PTO employee. 80% still get rejected the first time, but all you have to do is follow there very explicit instructions which normally only take another couple of hours (use this word, add this sub, call if you have a question, etc.) Personally, my firm runs a 50% acceptance rate the first time through and 100% the second time through and these numbers are similar at other legit search firms (It’s a small and friendly club).

  • [Avatar for Gene Quinn]
    Gene Quinn
    August 13, 2009 10:31 am

    Public Searcher DIP

    I would like to hear more about the AE search. What you are saying is not what I have heard from those I know who have tried accelerated examination. What I have been told is that the search is always considered inadequate. On top of that, the requirements say it has to be a worldwide search, which in my experience is rarely done to determine patentability. It is also rarely done by USPTO employees when they examine an application, so why should the applicant have to do such a search when it exceeds what the USPTO would do themselves?


  • [Avatar for Public Searcher DIP]
    Public Searcher DIP
    August 12, 2009 11:09 am

    Correct spreadsheet address is for 200+ AE samples. I’ve located over 400 but have been too lazy to update the spreadsheet. Always hard to get motivated to do non-billable work!

  • [Avatar for Public Searcher DIP]
    Public Searcher DIP
    August 12, 2009 11:07 am


    The AE search requirements are not that hard. I’ve personally done dozens and had an extremely high success rate and do not consider myself an outlier. You just have to identify who the target audience is: a PTO employee. The target audience is not “the perfect search” or even the applicant. Here’s a link to a presentation to that affect: and a spreadsheet: aesamples.xls with 200+ issued patents across all of the tech centers to use as guidance (very few bio/pharma).

    With regard to the ESD, absolutely be careful. But also remember, not every cited reference needs to be analyzed, just a handful of the “most relevant”. The rest can be tossed in a supplemental IDS. If your drafted claims are specific enough, you should only be discussing 103 art. If they are not, do a preliminary search prior to the official AE search and save the really broad claims for a non-AE continuation!


  • [Avatar for Gene Quinn]
    Gene Quinn
    August 11, 2009 08:43 pm


    I have heard of situations where Petitions to Make Special were granted, and then examination did not take place for 3+ years.


  • [Avatar for kk]
    August 11, 2009 08:41 pm

    Is there any way that the applicant could be required to certify that a prior art search has been made without opening up the applicant to high liability? Basically, I am wondering if it is possible to meet the PTO halfway. The applicant certifies that a search has been made, perhaps by citing the specific search terms used, etc.. Then, the applicant has the duty to cite relevant prior art found, but without the onerous characterization of that art against the claims.

    Just a thought. Generally, I think that requiring some form of search on the part of the applicant is a reasonable request on the part of the PTO. However, there must be a way to shield the applicant and practitioners from open-ended liability in doing so.

  • [Avatar for breadcrumbs]
    August 11, 2009 04:55 pm


    Are you saying that Petition to make Special were ignored? Were they not given any consideration? Is this known or conjecture, isolated or rampant?

  • [Avatar for Paul F. Morgan]
    Paul F. Morgan
    August 11, 2009 01:07 pm

    Re this new PTO accelerated examination program effective August 2006, it was made subtantially more dangerous and burdensome to applicants by rulemaking by the then PTO management as compared to the equivalent prior PTO MPEP “Petitions to make Special ” process, in spite of the public objections filed during the public comment period.
    The main difference in practice is that so far the PTO claims to actually be expiditing applications under the new PTO accelerated examination program , and often did not with “Petitions to make Special .”