The PTO’s New Accelerated Examination Program—Heaven Sent or Pandora’s Box?

In March, the United States Patent and Trademark Office (“PTO”) celebrated the issuance of the first patent under its new accelerated examination program.  This patent issued from an application filed on September 29, 2006.  Implemented in August 2006, the accelerated examination program allows an applicant to dramatically shorten the time an application spends in the examination process.

With backlog prevalent throughout the PTO, patent practitioners and applicants have come to expect two to five years to elapse from the time of filing an application to allowance or final rejection.

Under the accelerated examination program, PTO  policy dictates that a final decision concerning the application will be made in twelve months or less. The potential benefits of obtaining an issued patent one to four years earlier could be significant in certain cases.  One benefit is that the time to exploit the patent is increased because the time for exploitation is twenty years from the date of filing.  Additionally, in many technological areas, the state of the art may change so rapidly that in the intervening years an application is pending, the claimed invention may lose its commercial viability.  The ability to expedite a patent application will allow those involved in developing cutting-edge technology to quickly leverage their IP assets.  Moreover, an issued patent may be of greater value than a pending application when negotiating the terms of a licensing agreement or when seeking investment capital.

However, applicants should weigh the benefits of the accelerated examination program against the potential drawbacks that arise from the requirements of the accelerated examination program.  For example, the PTO requires any applicant filing an application under the accelerated examination program to conduct a pre-examination prior art search of U.S. patents and published applications, foreign patent documents, and non-patent literature.  The applicant must disclose the search logic and databases utilized during the searches and must identify any closely related references.  Furthermore, the PTO requires the applicant to identify where any claim limitations in the application appear in the references disclosed, as well as a statement as to why the claims are patentable over such references.

There is no question that the foregoing requirements will add to the expense of filing an application.  Moreover, complying with the requirements may also open up a Pandora’s box of potential problems in any later litigation concerning a patent filed under the accelerated examination program.  In fact, a litigant seeking to invalidate such a patent will likely first turn to the pre-examination search document and IDS filed by the applicant in an attempt to find evidence of inequitable conduct that would render the patent unenforceable.

Likewise, statements appearing in accelerated examination petition documents in support of patentability may also provide fodder for future assertions of prosecution history estoppel.  As such, wary patent practitioners will walk a fine line between fulfilling the requirements of accelerated examination and unnecessarily opening the door to future attacks.

While the PTO’s new accelerated examination program is replete with the potential for future problems, the advantages of quickly obtaining a patent may outweigh such risks.  Applicants considering the use of the program should consult with experienced patent counsel for assistance in weighing these risks prior to determining whether participation in the program is appropriate under the circumstances.

Zach Hilton is an associate at Carstens & Cahoon, LLP. His primary areas of practice include patent and trademark prosecution, litigation and licensing.

This blog is maintained by Carstens & Cahoon, LLP to inform readers of recent developments in intellectual property. Solely informational in nature, this blog is not intended to create an attorney-client relationship or to be used as a substitute for legal advice or opinions. For more information, please visit www.cclaw.com

By Zach W. Hilton

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