In response to unrelenting criticism of the “backlog,” the USPTO has announced a new “accelerated examination” program that promises a 12–month final decision on patentability. This creative solution will give applicants the chance to cut in line if they meet certain criteria. To qualify, a patent applicant must:
- File the application electronically with a petition to make special (with fees paid and appropriate declaration);
- Conduct a search of prior art;
- Submit all prior art that is closest to their invention;
- Identify all the limitations in the claims that are disclosed in the submitted references (with pin cites to the references)
- Explain what the prior art teaches and how their invention is different (claim by claim);
- Explicitly discuss how the invention is useful and show how the written description supports the claimed invention;
- Include only 20 claims (3 independent);
- Agree to have an interview with the Examiner; and
- Agree to base claims of patentability only on the independent claims.
The applicant will only be given one-month (non-extendable) to reply to any office action. An applicant may abandon the accelerated application in favor of a continuing application, and the continuing application will not be given special status under the accelerated examination program (unless so requested).
The change in examination requirements will apply to all petitions to make special filed on or after August 25, 2006. Comments concerning petition to make special practice may be sent by email to email@example.com.
According to the PTO, the accelerated examination procedure is designed to give applicants quality patents in less time. In exchange for quick examination, patent examiners will receive more focused and detailed information about the invention and the closest prior art from the applicants. This increased disclosure up-front by applicants will help examiners more quickly make the correct decision about whether a claimed invention deserves a patent.
Caution: The rules and restrictions for this procedure are quite specific (onerous?) and have some potential for loss of rights for your clients. Make sure that you understand the rules completely before signing-up.
Aside: I had heard some rumors that the PTO would be enacting its proposed changes to continuation practice in August of this year. Those do not appear to be true — Rather, that this change appears to be the August change and the new rules are likely around the end of the year.