Accelerated Examination of Patent Applications
by Michael A. Petrocelli

The United States Patent and Trademark Office (USPTO) allows for advancing an application out of turn for examination if the applicant files a grantable petition to make special under the Accelerated Examination (AE) Program1. The AE program provides applicants who desire a more rapid patent process a final patentability decision by the examiner within twelve months. Therefore, an Accelerated Examination provides an option for a company or individual inventor to hasten the conclusion of the examination process and receive a final patentability decision within one year. For example, the resolution of a patent application within a year may allow an applicant to more quickly evaluate the strength of pending applications, or more rapidly build a patent portfolio in a particular field of art.

In order for the PTO to meet the twelve month goal, an applicant is required to provide additional information with the petition for AE, and comply with revised procedures throughout the examination process to assist the examiner in expeditiously arriving at a final disposition. In exchange for a quick examination, examiners receive detailed information about the invention and the closest prior art from the applicants.

Therefore, the application is required to be filed with a petition to make special, and the application must contain three or fewer independent claims and 20 or fewer total claims. The claims must be directed to a single invention, and the application must not contain any multiple dependent claims. Further, the applicant must provide a statement that the applicant will agree to make an election without traverse in a telephonic interview. The AE application further requires a statement that a pre-examination search was conducted, and must include an identification of the field of search by U.S. class and subclass and the date of the search. For database searches, the statement must include the search logic or chemical structure or sequence used as a query, the name of the file or files searched, the database service, and the date of the search.

The AE application further requires an accelerated examination support document (ESD). The accelerated examination support document must include an information disclosure statement (IDS) citing each reference deemed most closely related to the subject matter of each claim. The support document further includes an identification of where each limitation disclosed in the references is found, and a detailed explanation of how each claim is patentable over the reference(s). Additionally, the support document includes a concise statement of utility of the invention, a showing of support for each claim limitation in the specification and any parent application, including any means-plus-function limitations. Lastly, the support document must include an identification of any cited references that may be disqualified as prior art under 35 U.S.C. 103(c).

After the application is granted special status, the application is assigned to an examiner (e.g., within 2 weeks of petition decision). The examiner conducts a complete prior art search. Prior to mailing a first Office Action rejecting claims, a telephone interview is conducted, unless an interview is deemed unlikely to overcome the rejection, and a conference will be conducted in the USPTO to ensure the viability of the rejection(s).

Applicant should be aware that when an Office Action is issued, the Office Action will have a short period for reply, one-month (or 30 days) for any action, other than a final rejection or allowance. This is in contrast to the three month response time for non-AE applications. No extensions of time under § 1.136(a) are permitted, however, extensions of time are available under § 1.136(b).

The mailing of a final rejection is considered the final disposition for purposes of the Office's twelve month goal. In order for the application to be forwarded to the Board of Patent Appeals and Interference for a decision, applicant must promptly file the notice of appeal, appeal brief, and appeal fees, and not request a pre-appeal brief conference (such conference would already have been conducted).

Thus, the Patent Office considers the 12-month goal to be successfully achieved when one of the following final dispositions occur: Notice of Allowance; Final Office Action; Notice of Appeal; Request for Continued Examination (RCE); and Abandonment.

It is important to note that plant applications, international applications including applications entering the national stage under 35 U.S.C. 371, and reissue applications, are not eligible for the AE program.

1 USPTO website, subsection entitled, "Accelerated Examination." See, "Revised Accelerated Examination Program and Petition to Make Special Procedures," PowerPointTM presentation.

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