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May 17, 2007

Self-Destructive Examination

The USPTO's accelerated examination program has inherent drawbacks. Experience has shown it to be execrable, requiring excruciating planning.

When filing for an accelerated examination (AE), all relevant prior art to the claims must be provided in a Preexamination Search Document (PSD). If the examiner determines that any claims have not been adequately searched, the application will be thrown out of AE. No amendment of the claims is allowed in such a circumstance. The only possible response, reviving the application in AE, is dismissing the errant claims. So, all the claim limitation must be known prior to the patentability search. Regardless, prior art not found for AE raises the specter of inequitable conduct, as the applicant has an obligation to thoroughly search the prior art. The patent office has acknowledged this as a problem.

An Accelerated Examination Support Document (AESD) must also be submitted in the Petition to Make Special. The AESD cites support in the specification for each claim limitation. AESD is, in essence, section (v), the summary, of an appeal brief. If the AESD falls short; for example, failing to cite at least one figure reference numeral, the office may dismiss the AE request.

The AESD must also cite the inventive step over the "most closely" related prior art. The prosecutor is thus prima facie creating estoppel, providing from the get-go material that surely provides focal points in litigation to more narrowly construe the claims. Preserving doctrine of equivalents hence becomes somewhat problematic using AE.

A terminal disclosure is required if there is a co-pending application with different claims, else suffer the boot from AE.

All claims must go to a single invention; restriction requirements are liberally applied under the AE program. Likely to provoke a restriction requirement: 1) an application with both method and apparatus claims; and 2) independent claims that are supported by different figures.

Prior to an office action, an interview may be arranged, prompted by the examiner. While the examiner then provides an initial interview summary, the applicant must then reply with a supplement, compliant with MPEP ยง713.04, within 30 days of the mailing date of the examiner's interview summary. An examiner is not required to conduct an interview, and won't if of the persuasion that the claims are not allowable.

If, in reply to an office action, an independent claim is narrowed by addition of a limitation, a supplemental AESD must be filed. Broadening claim scope is out of the question. If the original search did not cover the added limitation, a new prior art search may be required. In other words, the applicant should plan for, and conduct a prior art search for, every possible claim limitation. The office action reply had better include an explanation as to any added limitations being covered in the original prior art search.

Reply to office actions under AE are one month, not the normal three. Instances have occurred where the office action summary sheet mistakely indicated three months, but that's not likely to be accepted as an excuse.

Prosecutors may consider AE to be manageable, but, looking ahead to patent enforceability, AE is likely nothing but a serious mistake.

Posted by Patent Hawk at May 17, 2007 12:00 AM | Prosecution

Comments

Interesting analysis of AE pitfalls...what makes you say that including both apparatus and method claims is "likely to provoke a restriction requirement"?

Posted by: Jen C. at December 10, 2007 1:14 PM