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September 20, 2008

Accel Excels

Having recently completed an Accelerated Examination filing, I am convinced that this is the way to go, especially under ideal circumstances. Accelerated Examination (AE) has taken quite a lashing on this blog, with one muffin-head professing: "Forget accelerated examination. Accelerated examination is an act of desperation for both the patent office and applicant." Personally, I am left rather touchy-feely about its prospects.

The AE process itself is very doable, especially for applications in technology areas with limited prior art and fairly straight-forward inventions. The meat of an AE application boils down to the AE support document, which must detail the closest prior art for each claim limitation, provide a statement of patentability for each claim, and provide specification support for each claimed feature.

AE definitely involves significant additional work over a traditional application, but the payoff is big as well. The goal of the PTO is to reach final rejection or allowance within 12 months of filing. Additionally, an application granted under the accelerated examination program arguably results in a patent more robust than one taking the plain-Jane approach. Here's why: the additional time spent by an applicant before filing the application leads to claims that are well drafted, easily construed, and patentably distinguishable over the prior art. So, even when handed to an examiner that is less than competent, the odds of securing enforceable claims are greatly improved.

When discussing AE, the focus always drifts toward increased chance of inequitable conduct and problems in future litigation. While these are admittedly inherent issues buried within the AE support document, they do not necessarily outweigh the benefits. Nor, if the work is properly done, is inequitable conduct any more likely. After all, the applicant specifies the databases searched. The only inequitable conduct liability is failing to cite highly relevant art that should have been seen within the parameters of search. Which is to say that AE places responsibility firmly in the applicant's/prosecutor's lap. AE would be anathema for production-line prosecution shops. Which is to say that AE is a statement of quality for those prosecutors up for it.

Cost to applicant is also a topic of concern in AE, yet there is the potential for patentees to actually save money in the long run. Accelerated Examination can act as a filter, blocking applications for non-novel and obvious inventions from ever being filed. The extensive time put into prior art search and possible claim construction yields a better picture of what to expect during examination, before the application is even filed. A little extra money up front could yield savings holistically with the patenting process.

Looking at total lifecycle, the positive benefit/cost of AE could be considerable. There is no discounting the prospect of an AE patent as gold-plated, imminently enforceable, if not bulletproof. An AE patent is less likely to suffer reexamination, and thus more likely to drive an infringer to settle.

The praise for AE is adulterated. For applications in areas with lots of prior art, where the prior art is not easily winnowed, AE is practically untenable. The prior art sifting task would be onerously expensive. Further, AE beckons prior art search excellence. An indifferent searcher is a formula for AE disaster.

There has been discussion within the PTO of implementing AE-support-document-like-requirements across the board for all new applications; an idea that has been met with harsh criticism. But there is a flipside.

In an AE regime, the current reject, reject, reject mentality of the examiner corps would subside, due to the reduced pressure on examiners to find the best prior art; this reduced pressure stemming from the significant amount of prior art search already performed by applicant. Reduced pressure on examiners would lead to improved retention. Examiners that previously left due to feelings of insignificance resulting from their lack of freedom to actually make patentability decisions, would now have reason to stay. The decreased attrition would naturally lead to decreased pendency.

A voluntary AE program, as now, is a sensible balance. Making patenting so expensive with requisite AE search would truly turn patents into the sport of kings.

Accelerated Examination is a new program. Despite the potential for intrinsic problems, AE is a viable option, with the possibility of benefits far outweighing the additional time, expense, and risk. Time will tell if the AE cachet gives a sheen to enforcement that merits gold-plating patents with a front-loaded prosecution payout.

Previous Patent Prospector coverage: June 27, 2006; November 2, 2006; May 17, 2007; September 14, 2007.

Posted by Mr. Platinum at September 20, 2008 1:27 PM | Prosecution

Comments

Gold-plating. Ha, ha, ha,...

The best prior art for EACH LIMITATION!!! Ha, ha, ha.

Man, if you sign a declaration saying you're presenting the best art for each limitation of each claim, you're sticking a gun in your mouth.

"An AE patent is less likely to suffer reexamination, and thus more likely to drive an infringer to settle." Ha, ha, ha ...

Rarely does one see such certainty of foresight, least of all regarding patent litigation. This is almost as good as McCain concluding that the fundamentals are basically sound.

Posted by: Babel Boy at September 22, 2008 8:12 AM

I agree with what you say about it being a good option with the potential to save costs and to drastically reduce the overclaiming plague that has overwhelmed the system of late as well as the symptoms of said plague. One thing I do however have to disagree with you on is that

"Making patenting so expensive with requisite AE search would truly turn patents into the sport of kings."

is not quite true. It seems to me that anyone with a free afternoon or two can search the prior art to the best of their ability and write up what they see and what they don't see. One does not have to have the attorney do everything. Could this lead to problems down the line for patents that have pro se parts to them? Yes. Could the pro se's do a good job and not mess up? Yes. Is the world perfect? No.

Posted by: random at September 22, 2008 2:32 PM

Platinum writes -

"Despite the potential for intrinsic problems, AE is a viable option, with the possibility of benefits far outweighing the additional time, expense, and risk."

The only circumstance I can think of where this would be true is where (a) you have an identified infringer who is going straight down the middle of the disclosure, a near-direct copy, (b) you need to enforce immediately, (c) you're willing to sharply attenuate the strength of the patent against future infringers who would either infringe only by equivalants or by "just barely" literal, and (d) you lavish the time on the ESD to make sure that it is absolutely perfect, neither over- nor under-stating anything, with perfect foresight of - or perfect ability to dodge - what accused infringers will argue in the future.

The test of accelerated exam is not whether patents issue in a year, it's whether those patents can be enforced. That's a test that will take some time.

Posted by: David Boundy at September 23, 2008 7:28 AM

random, David,

Thanks for the comments.

random: "...anyone with a free afternoon or two can search the prior art to the best of their ability and write up what they see and what they don't see.”

Two points on that:
1) Everything takes longer than you hope except sex.
2) It grossly under-estimates the effort of AE. AE is practical only for circumscribed art areas.

An ordinary patent agent/attorney prosecutor would as likely as not damage the enforceability of a patent using AE, as most don’t have litigation experience, and so may inappropriately box the claim construction without realizing it.

AE patent prosecution is not nearly as easy a game as you make it seem, random.

AE is a lot of work. No two ways about it. And risky.

David made some very good points.

Posted by: Patent Hawk at September 23, 2008 9:35 AM