Accelerated Examination is Better Examination

The USPTO’s 12 month accelerated examination program produces higher quality patents in less time and potentially less overall cost than conventional patent examination, or even the new “Track 1” or other accelerated examination processes.  It’s also a high risk process with a large upfront cost due to the need to prepare an “examination support document.”  Anyone considering it for their own inventions should have a thorough discussion with their patent attorney/agent before embarking on it.

I spoke to five patent practitioners (attorneys and agents) who filed successful 12 month accelerated examination cases in 2011 to get their input on how the process went for them and what subjects should be considered by applicants and their patent counsel before embarking on it.  This will give you, our readers, a consensus view on the subject.  Each of these practitioners got their clients’ patents issued in less than six months.  That seemed like an excellent group to get solid guidance from.

The 12 month accelerated examination program was established in 2006. To qualify, applicants must prepare an “examination support document” to be filed with their patent application.  This involves a formal prior art search and an analysis of the prior art pointing out exactly how the prior art is the same and how it is different than what the applicant is claiming.  It’s a very rigorous exercise where anything the applicant admits to in the examination support document can be used in future litigation (i.e. it creates “prosecution history estoppel”).  This prosecution history estoppel is the major reason why most attorneys and agents avoid the 12 month accelerated examination program.  They are concerned about the risk of making admissions in the record that could be used to invalidate the patent later on.

Is it worth it?  Here is the feedback from successful practitioners serving a wide range of clients to help you decide.

Michael Fainberg: Patent Attorney – Arent Fox

Having successfully prosecuted numerous accelerated examination applications, I found the 12 month accelerated examination process quite challenging and interesting.  It’s important to do a lot of preparation before filing your first case.  I believe you can actually produce less total prosecution history using the 12 month accelerated examination process than conventional examination.  In the 12 month process you are much more likely to get an allowance on the first office action.  That means you don’t have to respond to rejections and that reduces the total amount of material you have on record.  Done correctly, the risks are acceptable depending upon the client’s needs.

Before an inventor embarks on the process, however, there are a couple of questions they should consider:

• How quickly is your field changing?  The faster it’s changing, the more you need accelerated examination.
• How much money do you want to spend?  This is an expensive process up front.  Make sure you know the costs.
• Can we keep the invention focused to 20 critical claims?  The more narrow the claims, the more likely we will be successful.

Dan Hussain and Albert Ho: Partners – American Patent Agency

We specialize in getting patents issued as fast as possible.  Almost everything we file is through the accelerated examination program.  Our clients are primarily startups that are funded by investors.  These investors want to see “patent issued” and not just “patent pending”.  It’s one less business risk for the investors to worry about and that leads to more funding for our clients.

Some of the questions startup companies and their attorneys/agents should discuss before filing in the program are:

• Will your investors look favorably on an issued patent?  If it’s important to them, it’s important to you.
• Is your attorney/agent confident in their work?  The examination support document is a major challenge.  If your attorney or agent is uncomfortable with it, it might be best to consider an alternative fast track procedure, like the new Track 1 where you just pay a large filing fee.
• Are you committed to your invention?  The examination support document is a lot of work for the inventor as well as the attorney/agent.  If an issued patent is important to your business plan and your investors, you should consider budgeting both the time and money for an accelerated patent application.  This is generally true in high tech fields like energy, biotech, chemistry, and related fields, and to some extent in software and consumer goods as well.

Alan Flum: solo practitioner – Stone Creek Patents

I specialize in green tech inventions, mostly for small entrepreneurial companies, so I’ve had a chance to compare the difference between the “green tech” accelerated examination program and the “12 month” accelerated examination program.  My impression is that you get a much better examination through the 12 month program.  Before I filed my first 12 month case, I looked through numerous file wrappers of earlier 12 month cases to see how they went.  They were often allowed on the first office action and if there was a rejection, it was a solid rejection.  Green tech cases got looked at quickly, but the number of rejections and quality of the rejections were the same as normally examined patents.

Some of the questions small companies and their attorneys/agents should discuss before filing in the program are:

• What is the age of each inventor? It’s surprising how many times this question isn’t asked.  If an inventor or co-inventor is 65 or older, however, they can get their application made special for free.  It would be a shame to miss that opportunity because an agent or attorney didn’t ask and this is a great alternative to the 12 month accelerated examination program.
• Are you willing to pay extra money up front in exchange for less money overall?  This can be a serious consideration for a small enterprise or even an independent inventor that has a limited IP budget
• Are you willing to put more personal time into the application preparation process?  There is a lot of material for the inventor to review before we file.

Lawrence Aaronson: Partner – McDonnell Boehnen Hulbert & Berghoff LLP

A decision to use the 12 month accelerated examination process requires a careful consideration of the risks and benefits.  An applicant using the process has a much higher likelihood of success but also a much greater estoppel risk stemming from submission of the examination support document.  Our firm has filed a number of 12 month cases that serve as models for our future cases.  From our experience, it seems that examiners appreciate the 12 month process.  Everything they need is laid out for them, so they seem motivated to negotiate allowable claims.

Some of the questions large corporations and their attorneys/agents should discuss before filing in the program are:

• Do you need to build a portfolio of patents quickly?  Strategic use of 12 month accelerated examination can get your portfolio off to a good start.  You can start with narrow claims in a 12 month case and broaden your coverage with continuing applications.
• How do you compare the risks of creating admissions in the record (e.g., estoppel) with the significance of the timing of your patents?  This inquiry is specific to each individual business situation.
• How does the 12 month accelerated examination process fit into your overall budget?  The up-front cost of the process is higher than for a standard utility application, but the accelerated examination process by definition will likely be quicker, so use of the process may help reduce costs of ongoing prosecution.  Can you take credit for the avoided or reduced future costs in your budget?

Conclusion

It was a pleasure interviewing this broad spectrum of highly skilled practitioners.  The 12 month accelerated examination program does have great potential, but it also has significant risks.  I hope you found the above candid observations helpful in making your own best decisions.