I sat through most of* the USPTO Webinar earlier today regarding Accelerated Examination. These are my notes/summary.
The USPTO is pushing for “final decision” (allowance, final rejection, appeal, RCE) within 12 months. To accomplish that they will require patent attorneys to provide better information, do more telephone interviews, etc. All in an effort to speed the process up.
The Applicant (YOU) must:
- file all documents via EFS-Web
- pay additional fees
- file complete applications (no missing parts)
- follow specific procedures (easiest way to understand these proceedures is to look at the form you’ll need to file: USPTO SB28).
- I’ll summarize Form 28 here for you:
- File less than 20 claims, 3 or less independents, no multiple dependents.
- Agree not to separately argue patentability of a dependent claim during any appeal
- All claims directed to a single invention
- Agree to phone interviews.
- Agree to not traverse restriction requirements.
- Do a patent search
- File an IDS that, for each reference cited, identifies all of the limitations of the claims that are disclosed by the reference specifying where the limitation is disclosed in the reference.
- Provide a detailed explanation of how the invention is patentable over the prior art.
- Supply a concise statement of the utility.
- Show where every element in the claims is supported by the specification and in any applications you claim priority from.
- Note: Form indicates that they expect it will take TWELVE hours to complete the form.
- That number is going to greatly vary depending on the case, the art, and the prior art cited.
- I can’t see how this is going to be a way of saving costs by speeding up the process. In my opinion it will likely cost considerably more to prosecute such an application. Time will tell, I suppose.
The program has been “LIVE” since August 25, 2006 and only 51 applications have been filed under it.
When a case is filed under it, it jumps to the top of the Examiner’s pile (everyone else’s cases get bumped back later).
UPDATE: A link to the webinar presentation: http://websurveyor.com/downloa
*we had an office emergency: somehow a squirrel got loose in our office. Oh the benefits of working in an Idaho patent firm.
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Compare the EPO’s ‘PACE’ procedure for requesting accelerated examination. http://www.european-patent-office.org/epo/president/e/2001_10_01_e.htm
Essentially, just write in and say “Please accelerate the search and examination of my application.” Preferably it can be done by sending in this form:
http://www.european-patent-office.org/epo/formul/epc/1005_e.pdf
To be fair, you’ll still get the quickest results if you cooperate with the Examiner to get his/her goodwill. Answer objections quickly, and put your application in good order before examination. (E.g. don’t file US-style multiple independent claims that don’t meet European formal requirements and that will provoke an objection separate from any patentability issue.)