Accelerated Examination Search in 2006, the United States Patent and Trademark Office (USPTO) launched accelerated examination program of patent applications that guarantee a decision within 12 months from the date of the application’s filing. Though this comes at an extra cost, however many attorneys/agents are now suggesting the inventors to avail this facility.
To qualify, the applicant needs to submit an “examination support document”, which is generally filed at the time of filing the patent application. The examination support document can be prepared by first conducting a formal prior art search. Further, a detailed analysis of the found prior-art references needs to be there. The analysis should include arguments as to how the cited references are different from the claims of the present patent application.
One must be careful with framing the arguments as applicant’s admissions creates “prosecution history estoppel”, which could be used against him/her in future litigation and contentious matters. The best strategy may be to focus only on key-features of the present inventions and describing how these features overcome the limitations of the prior-art.
Accelerated Examination Search decide whether to go through this route or not, one must consider:
- The examination support document usually requires a lot of work from the inventor as well as the attorney/agent. So the spent hours must be figured out in the overall cost of the patent.
- There are other alternative fast-track procedures which may be used, but those usually involve even higher costs.
- If the claims of the present patent application are narrow, then it makes more sense to use the procedure of accelerated examination search, as it would be easier to frame arguments for overcoming the prior-art.