Accelerated Examination: PTO Training Session

HerbThe PTO has established an extensive set of new rules for accelerated examination and the associated petition to make special (PTMS).  The new rules require much more from the applicant, but also lead to “a final decision by the examiner within 12 months from the application filing date.”

On Thursday, November 2nd at 1:00 Chicago Time, the PTO will hold a one-hour live web-cast to provide information on the process and its “benefits.”

  • Sign up for the webcast: here.
  • More info on the new PTMS regime: here [patently-o] and here [USPTO].
  • Russ Krajec will not be filing for accelerated examination: here.

14 thoughts on “Accelerated Examination: PTO Training Session

  1. 14

    What makes me worried is not whether or not I will win a lawsuit for inequitable conduct, but only being named in a suit. That might be enough to make an attorney, especially a solo one, uninsurable, let alone the headache.

  2. 13

    I don’t know that the petition for the accelerated exam will be much more detailed than a petition to make special based on a search used to be, and I have written quite a few of those.

    Some companies have always filed these on a regular basis in the past, and are obviously not overly concerned about either estoppel or inequitable conduct implications. I know of two quite large companies (one domestic, one Japanese) who have made that their standard procedure. Whether they will continue is an interesting question, but I expect they will.

    However, a one month non-extendible period for each response is very onerous. With foreign clients who are represented through foreign associates it will be almost impossible.

    About the only way to comply in such cases will be to send the client a draft response saying you will file it absent their instruction to do otherwise, but knowing very well that you may have filed the response even before the inventor reads the office action.

  3. 11

    It is hard for me to imagine taking the risk associated with this accelerated examination procedure. Putting all of your eggs in one basket for one independent claim and no right to a continuation – that is asking quite a lot. I don’t know that I know anyone who is a good enough claim drafter to assure certainty that an invention is fully protected with one independent claim. Those of you who have practiced a while will probably remember being taught that Means + function was the broadest possible way to claim. Then the law evolved and M+F fell quite out of favor. Now it seems clearer (for the moment) that the best idea is to have elemental language as well as M+F, and we haven’t even talked about method versus apparatus, etc. One independent claim – I think not in my practice.

    The proposed new IDS rules are also onerous. Anyone in this business should know that the less you put on the record the better. To have to characterize your claim distinctions over each reference you submit or limit the number of references you disclose, update your discussion of distinctions over the references, etc. is a formula for trouble.

    I’ll certainly not file for the accelerated exam, and I’ll be doing my best to figure out how to avoid as many of the pitfalls of the new IDS rules as I can. The IDS rules may backfire on the PTO and force us to recommend against any search prior to filing- or limit searchers to returning, say, 10 or less references to try to assure that we don’t run into problems. It is certain that my fees for filing an IDS will be going up drastically.

    Sorry my comments are terse – hope you get the meat of my position, but I am in a bit too much of a hurry today to wordsmith the comments to perfection.

  4. 10

    More problematic is that an inventor/assignee loses the right to file a continuation application for broader claims. If you pay money for an accelerated examination, one should not lose anything more than that.

  5. 9

    Having been on the “HOT SEAT”, things will not really change. Who ever said being a patent attorney was an easy job. Counsel for a likely infringer routinely set-up the attorney handling the prosecution.

  6. 8

    I hope they only docket these accelerated cases to primary examiners otherwise there could be some unnecessary delays due to the examiner being too inexperienced or unable to get approval to allow a case from a primary and the junior examiner ends up making off the wall rejections.

    The first scenerio isn’t too bad since the examiner would hopefully gain more experience as he/she prosecutes more cases. The second could be troublesome for claims that are broad and at first glance seems simple to find references for–until you actually do the search yourself. I’ve talked to a few examiners who have admitted to there being cases in their docket like this where they’ve talked to a few primaries and though no one has any suggestion on art that could be used to reject the claims, no one is willing to “pull the trigger” and say, “ok, allow it”.

  7. 7

    Burying (at the federal circuit) is the Molins v. Textron case, which said that burying may be evidence of bad faith. In any event, no burying was found.

    Molins refers to the district court case of Pen Yan Boats.

    Sorry, I do not have the cites.

  8. 6

    SF,

    I agree with your first comment. However, I seem to recall the CAFC panels more recently taking people to task about stabs at inequitable conduct.

    An interesting question is what is the balance between providing “the most relevant” references and “burying” the Examiner with (probably duplicative) references. Although in general anyone taking this path may want to be overinclusive, it seems to be a tightrope.

    Any good litigator should be able to make an argument if the applicant misses something or if includes too many references — this occurs in essentially every litigation. The question becomes one of intent, which seems to be harder to prove if the references have actually supplied to the Examiner.

    In any case, it will be interesting to see what happens when the first couple of these applications are litigated.

  9. 5

    Tony wrote, “If you document your search and try to explain the relevance of the references you have found, missing a sentence buried somewhere does not seem to me to rise to the level of intent to deceive.”

    The problem is that judges and juries view these events in hindsight, and good litigators can spin unintentional mistakes into deliberate omissions and misrepresentations.

    Tony wrote, “You also have to assume that the Examiner will still do his/her job (perform a search and scrutinize any close references).”

    That raises an interesting issue: Can statements about references’ disclosures be material when the examiner is free to review all of them? For some reason, I seem to recall there was at least one inequitable conduct decision in which an Applicant “buried” a reference among several others. Does anyone remember that decision?

    Tony wrote, “I predict that the practitioners who take this path will do a search, review the material and make statements like ‘Applicant believes that reference xxx neither discloses nor makes obvious [insert claim language].'”

    I doubt that asserting an applicant’s belief about a reference (in contrast to definitive statements about the reference) will provide additional protection against inequitable conduct allegations or findings of inequitable conduct.

  10. 4

    At the AIPLA meeting last week, the Committee on Relations with the PTO – Patent (myself included) got all over the PTO representative about the proposed IDS rules for submitting more than 20 references, which are for all practical purposes the same as those for the accelerated examination. The PTO does not care about what happens at the litigation stage, all they want to do is ease their own burden.

    Basically, the PTO leaves it to the CAFC to determine how to treat “errors” in explaining cited references. Everyone tried to tell the PTO that these rules would be a disaster in litigation but they would not listen.

  11. 3

    Tony,

    While your comments are entirely reasonable and logical, I doubt practitioners will take the chance. I know I will not file one of these.

  12. 1

    I do not quite believe Russ’s dire predictions. To establish inequitable conduct, as Russ points out, you need 1) a failure to disclose information material to patentability and 2) an intent to deceive or mislead the PTO.

    If you document your search and try to explain the relevance of the references you have found, missing a sentence buried somewhere does not seem to me to rise to the level of intent to deceive.

    You also have to assume that the Examiner will still do his/her job (perform a search and scrutinize any close references). If both the practitioner and the Examiner come up with the same (major) references and neither find that one 102 sentence, then why should a court find intent to deceive?

    I predict that the practitioners who take this path will do a search, review the material and make statements like “Applicant believes that reference xxx neither discloses nor makes obvious [insert claim language].”

    While accelerated examination seems like a nice idea, I am not sure how useful it will be on average.

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