The U.S. Patent and Trademark Office (“USPTO”) has announced that it is implementing a new accelerated examination program in which it hopes to provide patent applicants with a final decision on whether a patent application will be granted or denied within 12 months of the filing date of the application.
Jon Dudas, Under Secretary of Commerce for Intellectual Property, stated that the program should “provide innovators with the early certainty they may need to attract investors or protect their inventions against infringers.” The accelerated examination program is actually a revision of the USPTO’s existing procedures for filing petitions to make special. The new accelerated examination program will apply to petitions to make special filed on or after August 25, 2006.
In order to take advantage of the new accelerated examination program, the following requirements must be met:
- The application must be filed electronically and be accompanied with a petition to make special, with appropriate fees;
- The application must be a non-reissue utility or design patent application;
- The application must be complete and in condition for examination (e.g., all fees must be paid and the executed oath or declaration must be included);
- The application must contain three or fewer independent claims and twenty or fewer total claims. The claims must be directed to a single invention. Dependent claims must not be argued separately from the independent claims;
- Applicant must agree to an interview if requested by the Examiner;
- Applicant must conduct a prior art search;
- Applicant must provide an accelerated examination support document that includes an information disclosure statement, citing each reference deemed most closely related to the subject matter of each of the claims.
- For each cited reference, the accelerated examination support document must identify all the limitations in the claims that are disclosed by the cited reference, and specify where the limitation is disclosed;
- The accelerated examination support document must include a detailed explanation of how each of the claims are patentable over the cited references;
- The accelerated examination support document must explain why the claimed invention is useful (unless it is a design patent application);
- The accelerated examination support document must explain how the written description supports the claimed invention.
The USPTO stresses that the 12-month time frame is a goal, and will be considered achieved when any of the following is issued:
- the mailing of a notice of allowance;
- the mailing of a final Office Action;
- the filing of an RCE; or
- the abandonment of the application. The final disposition might occur later than the 12-month period due to other factors (e.g., an IDS citing new prior art). The USPTO’s failure to meet the 12-month goal is neither petitionable nor appealable.
Other restrictions and limitations apply. For example, applicants are given only a one-month non-extendible statutory period to reply to Office Actions. If an application becomes involved in proceedings outside the normal examination process (e.g., a secrecy order, national security review or an interference proceeding), the PTO will not treat the application as accelerated during those proceedings.
The new accelerated examination program might not be suitable for all patent applicants and it is recommended that applicants review the rules thoroughly.