Recently the USPTO has begun to hint one of the avenues of patent examination may be due for a change, the Accelerated Examination process. Initially billed as something that would help streamline and expedite the patent examination process, Accelerated Examination is slowly losing favor with the public as the patent environment continues to evolve. The USPTO has signaled it will soon take public comments as to whether the Accelerated Examination process should continue to exist altogether.
The process of Accelerated Examination was essentially having the patent applicant do some of the heavy lifting of the patent examination process for the examiner. The applicant needed to file the patent application with pre-examination search documents along with an examination support document (ESD), which is supposed to detail all US, and foreign patent documents having to do with the claimed invention. Essentially, the patent applicant would have to submit their own research into prior art that could potentially limit claims in the patent. At first glance this process seemed to be serving its intended purpose. Average wait time before first action in an Accelerated Examination case was just 4.9 months, compared to an average of 18.4 months in all other cases. However in practice this process was not as beneficial as it seemed.
One of the major issues with the Accelerated Examination process was the ESD. The search results and research into prior art could be used against the patent holder after the patent had been granted as ammunition to contest its validity. Patent applicants pursuing this process were essentially asked to submit their own costly and labor-intensive prior art searches that could then be used against them by a patent challenger.
A second reason why this process fell out of favor with the public was the high rate at which the USPTO refused to accept the ESD’s offered by applicants. Despite enlisting expensive search firms, and devoting large amounts of capital to drafting the ESD’s, the standards which the USTPO required ESD’s to meet were incredibly difficult for applicants to satisfy. This means that after all of the expense, and effort of this self-examination process, an applicant could still hit a dead-end with the USPTO rejecting the ESD’s for not meeting their criteria.
Finally, since September 2011, a faster and easier avenue of expedited examination was available, “Prioritized Examination” or “Track One”. Prioritized Examination patents do not require an ESD, however in their place is a hefty fee. This ranges from $4,000-$1,000 depending on the size of the entity applying. In contrast, the fees for Accelerated Examination are between $140-$35 depending on size of entity applying. Prioritized examinations also have a faster average time before first action, at an average of 3.9 months.