17 thoughts on “Survey on Prioritized Examination

  1. I would still set the fee based on the number of claims examined

    Has anyone suggested otherwise, Ned?

  2. I would still set the fee based on the number of claims examined. I find it unreasonable that a 200 claim application has the same examination fee as a 1 claim application. I don’t this is an issue between rich and poor. It is a simple fairness issue that is independent of who the applicant is.

  3. s/he deems better

    Oh, I agree – the US examiner always searches anyway and always likes their references better – but that’s not the point of the premise. The premise being (as far as I could tell) a pre-searched app will not proceed at an examination’s usual slow pace (for whatever reason).

    If the pre-search don’t matta to the pace of examination, then it’s a non-sequitur to this thread.

  4. Posted by: ping | Jun 21, 2010 at 11:07 AM

    No. A prior art search will yield a higher quality application that hopefully already overcomes the located prior art. It has been my experience that (1) the located prior art gets cited anyways or (2) the examiner locates other references s/he deems better than the located prior art.

  5. and then examination will proceed at its usual slow pace

    Not making an observation on this, but isn’t the unstated premise here that a prior art search yields a higher quality examination that de facto ensures a quicker (more efficient, higher quality, blah blah blah) examination?

  6. Adding roughly 40% to the cost of 20% of normal applications, or $4000. x 200 applications for $800,000./yr. to a 1000 applications per year filing program of a large company,

    Since you started with percentages, why not leave it in percentages? $800k may sound like a lot to you and me, but really it’s 40% x 20% = a mere 8% of their budget. Which they might not even spend, but decide to recoup by filing 8% fewer applications but focusing on the really important ones. Now, think about the effect on our practice when there’s less money available for us, but clients now want their patents faster.

    If applicants will not pay for a prior art search will they pay for quicker examination?

    I think they will. It’s more intuitive for an applicant to see how quicker examination will get him his patent quicker. A prior art search sounds like it will make things take longer, especially since the search and analysis have to be done prior to filing, and then examination will proceed at its usual slow pace. Patent quality, as I’ve said numerous times, is not something most applicants are good at judging.

    Now, if regular exam didn’t take three years to the first action, it might be easier to make the case for a prior art search. As it stands, quicker exam will get your patent issued before a well-searched application would even get looked at by an examiner, so more efficient prosecution from that point forward is less of a big deal.

  7. A shockingly high percentage of patent applications are filed these days without any prior art search having been done

    Especially shocking to those businesses offering that service.

  8. Deciding whether or not to spend an extra $4000 [or whatever] on an application for faster issuance could have another significant benefit: Making it even more desirable for the application owner to get a pre-filing prior art search to see if the valid claim scope would really be that great. That prior art search will also result in better original claims and specifications, helping both applicants and the PTO. [A shockingly high percentage of patent applications are filed these days without any prior art search having been done.]

  9. Re: “One out of five” ?
    I don’t think so.
    Adding roughly 40% to the cost of 20% of normal applications, or $4000. x 200 applications for $800,000./yr. to a 1000 applications per year filing program of a large company, PLUS their increased costs for deciding in advance WHICH 20% to treat in this category?
    Not even to mention all the individuals, small entities, universities and other applicants that complain that they can barely afford normal applications, even when already being heavily directly subsidized by the much higher USPTO fees charged to others?

  10. Re: “The CLIENT would be better able to answer what percentage of newly filed utility patent applications would they accelerate if the fee for acceleration was $4,000?”
    True, but not only would you be unlikely to get an answer from many MAJOR filers, especially a straight answer [especially in these days of tight budgets], you would also need to ask another vital question and get a straight anwswer to it as well:
    Do you have, or would you be willing to establish and staff, a system capable of making such decisions rapidly on all of your patent applications before, or soon after, they are filed?

  11. Applications whose owners do not pay the fee will take even longer to be examined, maybe an additional year?

  12. Most patent practitioners take direction from a client. The client would be better able to answer what percentage of newly filed utility patent applications would they accelerate if the fee for acceleration was $4,000?.

    Dennis, perhaps you can send an email to the patent decision makers at corporations and requst their response.

  13. Great survey Dennis. I may reduce some of the hyperbole speculation.

    Do another one for deferred examination [group 3] (with its incentives for delayed fee payments, and more time to amend claims, etc.)

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