First patent issues from USPTO’s accelerated examination programMarch 15, 2007

On Tuesday, Brother, the company best known for printers and copiers, received the first patent issued based on an application filed under the USPTO’s accelerated examination program. The patent, number 7,188,939, relates to ink cartridges, and resulted from an application filed on September 29, 2006, just over a month after the accelerated examination procedure became available. Many are somewhat leery of the accelerated examination procedure because of its increased requirements and burdens on the applicant. In order to qualify for accelerated examination, an applicant must:

1. Submit the petition and fee (where appropriate)
2. File the request with respect to an application filed under 35 USC 111(a)
3. File the application and all subsequent documents electronically
4. File a complete application complying with 37 CFR 1.51 (i.e., no missing parts)
5. File no more than 3 independent claims and no more than 20 claims total
6. File an application for a single invention or agree to elect without traverse a single invention for examination
7. Agree to an interview with the examiner to discuss any outstanding issues arising in the examination process
8. Conduct a pre-examination search
9. Provide an accelerated examination support document

The most concern from both companies and patent practitioners typically is with regard to the mandatory prior art search and related examination support document. In the support document, the applicant must not only identify all the relevant prior art found in the prior art search, but also, among other things:

• Identify all the limitations in the claims that are disclosed by the reference, specifying where the limitation is disclosed in the cited reference (essentially admitting what is not novel in the application)
• Include a detailed explanation of how each of the claims are patentable over the references cited
• Include a concise statement of the utility of the invention as defined in each of the independent claims
• Show where each limitation of the claims finds support in the written description to satisfy the written description and enablement requirements, and if means-plus-function claims are included, identify the disclosed structure

Many inventors and companies are unwilling to invest the additional time and expense to prepare the examination support document. Also, many are unwilling to “lay their cards on the table” to the degree necessary in the examination support document, fearing it will limit the potential positions that may be taken either later in prosecution or in litigation. The turnaround time for responding to office actions is also much shorter (1 month instead of the usual 3-6 months), which can also present problems. That said, if it is important to get a patent as soon as possible, such as when there are potential infringers, it can be advantageous to get a patent as soon as possible to stop the infringement. Also, because patent term is measured from the filing date, a patent granted under the accelerated examination process will typically have a longer enforceable term, as it must be granted within 1 year of filing (assuming no appeals). However, those that choose this path should be aware of the potential pitfalls, as well as the additional costs associated with it. At least we have now seen that at least one company has successfully navigated the accelerated examination process and ended up with a patent issued in less than six months. Update: the USPTO’s press release on the subject can be found here.