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ACCELERATED
EXAMINATION PROCEDURE REVISITED
The USPTO has
announced the grant of the first
patent under the Accelerated
Examination Procedures. Numerous
commentators have opined (some
strongly) that the advantages of the
procedures are outweighed by
inherent risks taken by the
applicant (or more exactly the
applicant’s attorney).
Much of the concern
has to do with the search and
certification requirement. The
applicant is obligated to perform an
exhaustive search and report the
search results to the examiner.
Omitting a prior art document can
later open up the patent to
invalidity and claims of inequitable
conduct.
Repeating portions of my blog in
June 2006, a significant expansion
of the Accelerated Examination
Procedures is that the applicant
must conduct a search and the search
must include foreign patent
documents and non-patent
literature. This is a broadened
search. As a change, a search
report from a foreign office will
not satisfy the search requirement.
The search must be
directed at the invention claimed or
that may be claimed.
The applicant must
specify the field of the search by
class, subclass, date of search, the
search logic, the name of the files
searched and the databases
searched. The applicant is
required to insert into the petition
affirmation that he/she has a good
faith belief that the
pre-examination search was conducted
in compliance with the stated
requirements.
In addition, the
applicant must include an IDS with
the petition “citing each reference
deemed most closely related to the
subject matter of each claim.”
Further the petition 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.
Also, there must be a
detailed explanation of how each of
the claims are partentable over the
references cited.
The petition support
documents must include a concise
statement of the utility of the
invention as defined by each
independent claim.
The petition support
documents must also show where each
limitation of the claims finds
support under 35 USC 112 (1st
paragraph).
The support documents
must further identify any cited
references that may be disqualified
as prior art under 35 USC 103(c)
amended by the Cooperative Research
and Technology Enhancement (CREATE)
Act.
If the filed
application with support documents
for accelerated examination, is
found lacking in any manner, the
applicant will be give a singe one
month period to cure the
deficiency.
It appears to me that
there will be significant
ramifications regarding the scope of
an allowed patent that is the
product of the accelerated
application. Particularly, the
applicant appears to narrowly define
the scope of the invention and
affirmatively describe the
relationship of the invention and
the prior art.
March 20, 2007
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