By Donald Zuhn --
Last month, the U.S. Patent and Trademark Office published a notice in the Federal Register (82 Fed. Reg. 3758) requesting comments from stakeholders regarding whether the accelerated examination program should be retained or discontinued. The Office notes that while the accelerated examination program, which was implemented in August 2006, was once relatively popular, fewer than 250 applications were accepted into the program annually between 2012 and 2015. As a result, the Office is now seeking stakeholder feedback as to whether the program provides a sufficient benefit to the public to justify the cost of implementation.
Part of the decrease in the popularity of the accelerated examination program may be due to the creation in September 2011 of the prioritized examination ("Track One") program under the Leahy-Smith America Invents Act. In contrast with the accelerated examination program, where applicants must file a petition to make special and perform a pre-examination search, the Track One program requires that applicants simply pay an additional fee to advance an application out of turn. According to the Office's notice, since the Track One program was implemented, the number of annual requests has approached 10,000.
The notice also suggests that the drop in accelerated examination requests may be attributable in part to a recent decrease in overall first action pendency. From FY 2006 to FY 2011, when the accelerated examination program was the only option available, average first action pendency increased from 22.6 months to 28.0 months (the latter being an 11-year high), but from FY 2012 to FY 2016, first action pendency decreased from 21.9 months to 16.2 months (the latter being an 11-year low). In addition, average total pendency increased from 31.1 months in FY 2006 to an 11-year high of 35.3 months in FY 2010, and then decreased from 33.7 months in FY 2011 to an 11-year low of 25.3 months in 2016. Average first action pendency (blue line) and average total pendency (orange line) from FY 2006 through FY 2016 are shown in the chart below (click on chart to expand).
In the notice, the Office suggests that "[a] lower first action pendency and lower accelerated examination numbers seem to indicate that applicants have less need for as many programs that expedite patent examination." Comments regarding the retention or discontinuation of the accelerated examination program can be submitted by e-mail to AEcomments2016@ uspto.gov, or by regular mail addressed to: Mail Stop Comments—Patents, Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313–1450, marked to the attention of Pinchus Laufer, Senior Legal Advisor, Office of Patent Legal Administration, Office of the Deputy Commissioner for Patent Examination Policy. Comments must be received by the Office by March 13, 2017 to be ensured of consideration.