Guest Post: Accelerated Examination and Prioritized Examination

By: Nicholas Witchey, Ph.D.; Robert D. Fish, Esq.; and the Fish & Associates team

Passage of the Leahy-Smith America Invents Act (AIA) includes many changes to U.S. patent law. This article focuses on one change that might be overlooked: Prioritized Examination ("PE") of patent applications. The PE program allows an applicant to pay an additional $4800 fee ($2800 for small entities) to place an application on a prioritized track where the patent office has a goal to provide final disposition of the application (i.e., final rejection or allowance) within a year on average. Interestingly, the AIA retains the Accelerated Examination ("AE") program established on August 26, 2006, as discussed in MPEP 708.02(a). While the PE program prioritizes an application for prosecution ahead of standard filings, the AE program prioritizes and accelerates the actual prosecution of the application. The prioritized examination and accelerated examination programs co-exist as of September 26, 2011.

We recently had a chance to discuss co-existence of the AE and PE programs with Robert W. Bahr, Acting Associate Commissioner for Patent Examination Policy, during a recent MarcusEvans? IP Law Summit in September, 2011. Mr. Bahr stated there are no current plans to make changes to the AE program to align it with the PE program, or vice versa. He sees both programs as viable examination routes for applicants, and that applicants are expected to make a business decision as to which program should be taken. Therefore, it is up to the applicant to work with their patent practitioners on how best to align patent filing tactics with clients' business objectives.

How do these programs compare and which makes the most sense to use? The AE program and PE program are far from identical and have many differences, which gives rise to possible benefits in aligning patent application filing tactics with a client's business strategy.

One of the major differences is that the PE process does not require a pre-examination search document ("PESD") and an accelerated examination support document ("AESD") whereas these documents are required for the AE program to illustrate how the claims of an AE application are allowable over known related art. Preparation of the PESD and AESD documentation requires significant searching and analysis on part of the practitioner. Following the PE program can save an applicant $10,000 or more over the AE program in searching and analysis costs, but that doesn't necessarily mean the total cost is less expensive over a lifetime of an application's prosecution. Within the AE program, the time spent in searching for related art and in improving/focusing the claims tends to yield stronger claim sets, which contributes to faster allowance possibly within months of being accepted into the AE program. Without such thoroughly analyzed claim sets, an applicant could spend $10,000 and many years going back and forth with the examiner to achieve allowance for an application filed within the PE program.

Other than PESD and AESD considerations, the basic requirements for putting an application on file are the same for AE and PE applications, (e.g., formal drawings, no missing part, correct margins, etc.) except that the AE process allows only 3 independent claims and 20 total claims, while the PE process allows 4 independent claims and 30 total claims subject to excess claim fees. In both cases failure to follow the filing rules will result in the petition being dismissed or denied.

There is also a significant difference in fees. The filing fees of an AE application for a large entity are $1380, which includes $130 in petition fees, $1250 in filing fees, plus any excess page size fees. Corresponding small entity filing fees are $660 plus any excess page size fees. In contrast, the filings fees of a PE application for a large entity are $6480, including $4800 in petition fees, $1250 in filing fees, a $130 processing fee, and a $300 publication fee, plus excess claim and page size fees. The corresponding total for a small entity is $3630, plus excess claims and page size fees. From purely a filing fee point of view, the AE program is less expensive. Micro entity discounts do not apply to a PE application petition fee.

Prosecution is also different. AE turnaround is one month on non-final office actions, and failure to meet that strict time requirement results in abandonment of the application. Within the PE program turnaround is the normal three months. The three month deadlines can be extended as usual, but doing so results in the application falling out of the PE program. Applications that have fallen out of the PE program are placed on an examiner's standard docket. Thus, the AE program returns faster results than the PE program, but also has more severe consequences when the response dates are missed.

There are also some inconsistencies in availability of AE and PE applications. For example, one can file a PE application for a plant, while the AE program can not be used for plant patent applications. At least initially, the PE program is also being limited to 10,000 applications per USPTO fiscal year. There doesn't seem to be a formal limit on the number of AE applications, but there have only been an average of about 800 AE applications filed per year so there is little concern with respect to the USPTO limiting AE submissions.

With the introduction of the AE program, the PE program, and other prosecution tracks, the USPTO appears to be developing a full spectrum of possible approaches for prioritizing patent applications rather than a one-size-fits-all approach. Clients can select a style of examination based on their business needs or available budgets. If a cost-effective immediate feedback is required, the PE program might be a proper path for clients wishing to get prosecution started early. If a strategic set of claims are required, the AE program would likely be the best approach for clients wishing to obtain issued claims quickly. We expect the PE program to likely fill their allocated 10,000 applications per fiscal year quickly. In fact, our office has already started filing application with PE petitions. When the allotted yearly slots are taken, the AE program will remain available.

Our office has substantial experience with the AE program, and, although we are strong advocates of the AE program, we believe that PE program also offers other benefits to clients. Clients now have a greater selection of filing options to meet their business goals or filing budgets. A detailed analysis that one would conduct for an AE application would still have merit when filing an application within the PE program. There may even be cases where an applicant might strategically decide to file an application, or a family of applications, in both programs to obtain an optimized result.

The AIA also allows for changes to other prioritized programs including petitions to make special or important technologies, and patent prosecution highways. These programs can also be leveraged to prioritized examination and offer benefits to clients as well. We encourage readers to explore all the programs currently offered or that will be offered over the next 18 months.

21 thoughts on “Guest Post: Accelerated Examination and Prioritized Examination

  1. It’s good to know that the USPTO’s fast-track programs are back in action. Though I wish the patent reform legislation had ended fee diversion, at least the bill is allowing the USPTO a fee hike, which among other measures will permit the patent office to implement initiatives (like the prioritized programs and the Detroit satellite office) that had been back-burnered.

  2. Under the new First to File regime,there you wait the time required to do the extensive search and prepare the reporting documents before filing an application in order to use the AE route? Have you increased your insurance to cover the chance that a 30 day response deadline is missed to do illness, injury or other form of mayhem?

    I suspect the sanity of anyone who would use AE.

  3. Most particular patent cases – especially the ones not lititgated to conclusion do not merit a blip on my radar screen.

    That is a far cry from the assumption you impart that anyone involved in deciding that these are mere blips cuts corners and ignores knowledge.

    Don’t be an azz.

    This is just like the other “specialty” programs that get a little fanfare and are largely meaningless.

  4. I’m sure you’d be disappointed if you did hear them.

    Why not invite him to lunch?

  5. Hmm, I’d use the Accelerated Examination program if (1) I want to obtain an issued patent within a year and (2) I want the claims of my issued patent to be incredibly strong and reviewed against the most relevant prior art so that they won’t be easily invalidated during litigation.

    Why not just file under the prioritized examination with a solid IDS? Even with the fees it’d cost less than preparing the papers for an old-school AE. As long as you don’t dilly dally with responding to the OA and are reasonable with your claims, the prioritized exam should get you a patent pretty quickly.

    The cons are that the claims are reviewed against the most relevant prior art…so they may be more narrow than what you’d get if you didn’t have a such a thorough search.

    That’s a “con”? Oh, right. I forgot for a moment that invalid claims can be quite “valuable” when they are backed by $$$$ and “enforced” by rabid, ethically-challenged bulldogs.

  6. So few patent cases are litigated to conclusion (based on percentages) that I advise my clients not to worry about the corners I cut and knowledge I ignore.

  7. “Robert W. Bahr, Acting Associate Commissioner for Patent Examination Policy,”

    A man whose views on 101 I would be interested in hearing.

  8. Hmm, I’d use the Accelerated Examination program if (1) I want to obtain an issued patent within a year and (2) I want the claims of my issued patent to be incredibly strong and reviewed against the most relevant prior art so that they won’t be easily invalidated during litigation.

    The cons are that the claims are reviewed against the most relevant prior art…so they may be more narrow than what you’d get if you didn’t have a such a thorough search.

  9. This is total take over for corperations and cival rights violations for the indegent and brightest youthful inventors disgusting. Merits of the invention for producing a valuable marketable invention should be the basis for accelerated examinations not cash in the governments pockets shoving cival rights out the door.

  10. 4,400 AE peitions since 2006 (five years).

    What is the percentage of total submissions that this number represents over the same time period?

    The number is so small as to tell me that this does not merit a blip on my radar screen.

    At all.

  11. Contrary to some early speculation that Fast Track might be filled up quickly, it appears that less than 1,000 Track 1 cases were filed last week. We will see based on this week’s numbers whether this relatively slow start was due to (i) the relatively short time after the announcement, (ii) the fact that the 10,000 filing initial limit was effectively reset this week for FY2012 (last week’s 10,000 filing limit was under FY2011) and so filers were not under as much immediate pressure to get their cases on file, or (iii)that the filing of these type of Fast Track cases will be much more gradual than anticipated.

  12. The USPTO releases AE statistics at the end of the calendar year and does not track or release AE application information beyond review of an AE petition. At the end of 2010, there were just over 4400 AE petitions submitted since 2006, of which just over 1500 applications received NoAs. Unfortunately, we haven’t been able to find a way to identify the 1500 applications and the USPTO has not offered any insights after our requests, so we work from our office’s statistics.

    Our sole office has filed over 50 AE petitions to date and continues to file more. Our average time for allowance (date of filing the application and petition to date of NoA) is 10 months for applications making it through to issuance as a patent. Our office record is 27 days. Yes, there is a fairly long tail to the distribution. So, we feel we have sufficient experience and statistics with respect to AE applications to make the comparison, especially in view the PE program represents a a “standard” utility application without a full fledge a priori analysis.

  13. we are strong advocates of the AE program

    Is anyone else here a fan of the accelerated examination program? In what situations do you use it?

    I have never used it and have never advised a client to use it. I find it hard to justify the risks posed by the required search and examination support documents.

  14. yield stronger claim sets, which contributes to faster allowance possibly within months of being accepted into the AE program. Without such thoroughly analyzed claim sets, an applicant could spend $10,000 and many years going back and forth

    How big is the data set used to make these timing comparisons? Isn’t it a bit too early to draw any conclusions about the process time on either, much less be drawing conclusions on both and comparing the two?

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