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February 07, 2017

Comments

Is there any incentive to use Accelerated Examination?

Accelerated Examination (AE):
1) Limits claims to 3 or fewer independent claims and no more than 20 claims,
2) Requires applicant to agree to an examiner interview,
3) Requires from the applicant a pre-examination search including an identification of the field of search by United States class and subclass and the date of the search, where applicable, and for database searches, the search logic or chemical structure sequence used as a query, the name of the file or files search and the database service, and the date of the search.
a. The search must involve US patents and patent application publications, foreign patent documents, and non-patent literature (http://cardinal-ip.com/search-services/accelerated-examination/) to be submitted in an information disclosure statement (IDS),
b. An identification of all the limitations of the claims that are disclosed by the reference specifying where the limitation is disclosed in the cited reference,
c. A detailed explanation of how each of the claims are patentable over the references cited,
d. A concise statement of the utility of the invention as defined in each of the independent claims,
e. An identification of any cited references that may be disqualified as prior art,
f. A showing of where each limitation of the claims finds support under the first paragraph of 35 USC 112 in the written description of the specification.
4. Petition Fee is $ 140.00

Prioritized Examination (PE)
Prioritized Examination (Track One) request can be filed with original nonprovisional utility and plant patent applications (continuation, continuation-in-part, and divisional applications) filed under 35 U.S.C. 111(a), having no more than 4 independent claims, 30 total claims, and no multiple dependent claims, are eligible for prioritized examination (Track One). The term “original application” includes both first filings and continuing applications; see MPEP 201.04(a). Thus, continuation, continuation-in-part, and divisional applications are eligible for prioritized examination, but reissue applications are not.
The fee is 4,000.00.

The fee difference is $ 3,860. However, Accelerated Examination involves the cost of a professional search and documentation.

The accelerated examination program was ill-conceived. Not only does it impose an additional burden on the applicant (conducting a search, limiting the number of claims, and explaining the relevance of the search results to the claims), but it effectively places a big "challenge this patent for inequitable conduct" sign on any patent that issues: an adverse party will assert that the search was deficient and/or the applicant misled the office about the relevance of the search results. If you can just pay the office a similar amount of money to examine the case quickly, without creating the inequitable conduct exposure, why would you go through accelerated examination?

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