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NEW ACCELERATED
EXAMINATION PROCEDURES
The USPTO has a
procedure for accelerated
examination of applications. See
patents petitions to make special. Now a
new program is proposed and
announced by Dennis Crouch of
Patently-O to become effective
August 25, 2006.
The new Accelerated
Examination Procedure is more
onerous than the current program.
Much effort will be required to
place an application in condition
for accelerated examination. The
legal fees associated with
preparation of such an application
may make it prohibitive for many
applicants.
The application is
filed with a petition (and
associated petition fees). Of
course, the normal application fees
must also be paid at the time of
filing. The application and
petition must be filed
electronically.
The claims of the
application must be directed to a
single invention. If review of the
petition reveals that the claims are
not directed to a single invention,
the applicant is obligated to select
without objection (traverse) a
single invention. The applicant is
agreeing up front to agree with the
opinion of the examiner.
The applicant must
also agree to an interview at a time
selected by the examiner. I assume
that the examiner would be
reasonable, but the new procedure
puts him in control.
In a significant
expansion from the present practice,
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 cost of this scope of search may
be prohibitively expensive for most
clients.
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
cited references .
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). (Enablement and
best mode.)
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 given a single 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 must narrowly define
the scope of the invention and
affirmatively describe the
relationship of the invention and
the prior art. It is difficult
to imagine how the
inventor/applicant will achieve
broad patent coverage through this
"accelerated" procedure. Also
the costs of preparing an
application to meet the procedural
requirements will be significantly
greater than for a "normal"
utility application.
Updated August 10, 2006
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