Pro-Accellerated Examination Insight from a Reader
November 6, 2006 on 8:41 am | In USPTO |I recently wrote three posts (1, 2, 3) on Accelerated Examination (AE), including one post that included the opinions of two practitioners on why they didn’t think it was a good idea.
Although I didn’t formally give my opinion, you can sense my apprehension/skepticism. I can see how AE could be useful, but can’t imagine many cases/situations justify the risk or cost involved. As such, I found the prospects of the process disappointing…I thought AE would be a cure (magic bullet) for pendency problems. Alas.
Steve Guttman, the Director of Intellectual Property at Autodesk read my post series (and their “Con” leanings) and sent me an email (posted here with permission) adding some additional insight:
In my opinion, this is a classic example of the “missing-the-forest-for-the-trees” phenomenon that I’ve seen quite a few lawyers fall victim to. Yes, this new procedure will be more expensive and more burdensome than a traditional application. Yes, by characterizing the claims and the prior art, you (arguably) provide a potential litigant with ammunition that can be used in court. And, yes, because you’re obligated to do this prior art searching, you are more exposed to inequitable conduct claims than if you didn’t (although, this seems to be a staple of most patent litigations in any case).
But, not a single person has brought up the business benefit that an issued patent could have for a company compared to a pending application. A pending application has little perceived value; an issued app, substantial. What should drive the decision to use the accelerated procedure are the business risks and benefits—period. I can drive cross-licensing discussions with an issued patent. I can protect key product features. If I’m a startup—an issued patent could help me get funding, or force a competitor to design around/forgo important product elements. The difference between a 1-year pendency and 5-year could be enormous.
As for the risks—I think they have been overstated. An issued patent is assumed to be valid—whether it was granted through accelerated examination or not. I would argue that a litigant is going to have to go to as much work and accrue nearly as much expense to prove such a patent invalid, whether it was granted through accelerated exam or not. You will go to court and spend several million dollars. And, quite honestly, I don’t think it’s any easier to convince an Eastern Texas jury that a patent isn’t valid because your accelerated prior art search wasn’t comprehensive, than it is to use any other argument. (In fact, complex arguments don’t tend to work well in that geography)
Personally, I don’t have any immediate plans to use the accelerated procedure. We have a decent sized portfolio, and have a good pipeline of applications filed and in process. Do I consider this to be an arrow in my quiver—a tool to be used? Absolutely. I would be surprised if there weren’t an occasion where the business benefits of a 1-year pendency would be substantial.
I would encourage your readers to consider their clients best interests instead of the perceived incremental risks. Instead of dismissing the procedure out-of-hand—see if you can understand, and recommend to your clients under what circumstances accelerated exam may make sense.
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