Earlier this month I wrote about the United States Patent and Trademark Office’s new accelerated examination procedure for patent applications. Turns out, there are more than a few drawbacks to the new procedure. As noted in the Patently-O blog, the accelerated examination rules can significantly increase your clientÂ?s up-front costs, and may even cause your client to lose certain rights.
There are several reasons a reasonable patent attorney might think twice before filing for an accelerated examination procedure. In addition to being expensive, the new accelerated examination procedure requires you to:
10. File patent application electronically in condition for examination, along with the petition to make special (with all fees paid and appropriate declaration);
9. Conduct a search of, and submit all relevant, prior art (including expensive to search foreign references and non-patent material);
8. Identify where limitations in the claims are disclosed in the submitted references (with citation to the references);
7. Explain prior art teaching and how applicant’s claims are different;
6. Explain the usefulness of the invention and how the written description supports the claimed invention;
5. Include a max of 20 claims (3 independent);
4. Agree to base claims of patentability only on the independent claims;
3. Respond to Office Actions within one month or risk abandonment;
2. There is no way to withdraw from special status. Once you commit to it you are bound by the special rules;
1. Not amend any claims outside the scope of the initial search, increase the allotted number of claims or direct claims to non-elected inventions without an updated accelerated examination.