Patent Process Too Slow? PTO Implements New Program for Expedited Examination

By Nicholas A. Keppel

The U.S. Patent and Trademark Office (PTO) has recently implemented an accelerated examination program with the goal of achieving a final decision by the Examiner within 12 months from the filing date of an application. The accelerated examination program is timely considering that average patent pendency in 2005 routinely exceeds 24 months and, for some computer related patent applications, approaches four years.¹ The trend is toward increasing pendency with each passing year.

Petitioning for accelerated examination under the new program is not as simple as paying a fee, although a fee is required.² A patent applicant who wishes to take advantage of the accelerated examination program must plan ahead before filing and will be required to take an active role in the examination of the application. Below are some of the requirements of the accelerated examination program.

The petition must be filed electronically with a completed application. To be complete, the application must be filed together with the basic filing fee, search fee, examination fee, and an oath or declaration. With the petition, the applicant must provide a statement of the utility of the invention and show where each claim limitation finds written description support in the specification.

The applicant must limit the number of claims to 3 or fewer independent claims and 20 or fewer claims total. The claims must be directed to a single invention. Accordingly, the claims should be directed solely to a process or solely to a composition. The applicant must also expressly agree to elect, without traverse, a group of claims if the Office finds that the claims are not directed to a single invention.

With the petition, the applicant must provide a statement that a preexamination search was conducted. Additionally, the applicant must, pursuant to the preexamination search, provide to the PTO information regarding United States class/subclasses searched, databases searched, the search logic, the names of files searched, and the date of the search. The applicant must also provide an information disclosure statement citing each reference deemed most closely related to the subject matter of each of the independent claims. Further, the applicant must identify where the limitations of the claims are disclosed in the cited references. The applicant must also provide a detailed explanation of how each claim is patentable over the references cited.

Patent applicants may take advantage of the accelerated examination program starting on August 25, 2006.

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¹ Source: http://www.uspto.gov/web/offices/com/annual/2005/060404_table4.html.

² The requirements for the Petition to Make Special Under Accelerated Examination Program are found in form PTO/SB/28 available at http://www.uspto.gov/web/forms/index.html#patent.