Speedy Patent Prosecution, Part Two: Accelerated Examination

The previous post in this series covered Track One prioritized examination, a USPTO program with a substantial fee, but no additional preparation required for the application. This post details a very different method of speedy prosecution: the Accelerated Examination Program.

Like Track One, the Accelerated Examination Program has a stated goal of completing examination within 12 months of filing. But the similarities end there. Accelerated Examination has only a small fee, but a significant preparatory burden that entails its own attorney or agent fees.

The key to accelerated examination is the “examination support document.” This is a formal prior art search and analysis, created by the applicant, explaining exactly the similarities and differences between the invention and all prior art. The preparation of this document is rigorous and entails significant costs in time, effort, and legal fees. Additionally, anything to which the applicant admits in the examination support document can be used in future litigation to invalidate the patent.

Applicants must file a “petition to make special” for a fee of $130. The fee is waived if the invention has certain applications or if the inventor is over age of 65 or has an advanced illness. Qualifying applications will have no more than three independent claims and twenty total claims, and must not contain claims having multiple dependencies.

The cost and risk of preparing the examination support document may be daunting, but the reward may be an issued patent in one year or less – sometimes significantly less. Moreover, a fair number of applications on accelerated examination get an allowance on the first office action issued from the USPTO. This can, in fact, outweigh the examination support document in terms of the total amount of prosecution history put on record.

The next post will explain a USPTO pilot program that, like Accelerated Examination, requires additional work on the part of the inventor early in the process, but which has no USPTO fees at all.

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