Expediting Patent Applications: US

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We recently discussed options for speeding up grant of a European patent. As we mentioned, reasons to expedite grant include the existence of a potential infringer, or the need to obtain grant to enable licensing or sale.

Today, we’ll take a look at what options are available in the U.S.

Accelerated Examination Program
At first glance, this sounds like a great option. You may pay a small fee (or no fee if your invention is directed to environmental quality, development or conservation of energy resources, or counter terrorism) and prosecution will generally be completed within 12 months.

There are, however, some very significant restrictions. The quid pro quo for quick prosecution is that you get to do most of the work that would otherwise be done by the examiner. That means:

  • Showing how each feature of every claim is supported in the specification.
  • Performing a search on each and very claim. This doesn’t mean just presenting a few documents, either. You have to submit full details of your search statements.
  • Explaining how each claim is allowable over the documents uncovered by the search.

Quite aside from the effort (and cost, given most applicants will use a patent attorney), there are significant concerns among many applicants that being required to be your own searcher and examiner represents a conflict of interest. You’re basically being asked to characterize your invention’s relationship with the prior art – something that is generally avoided by applicants as far as possible to avoid potential estoppel issues (“estoppel” in this context is the legal principle under which asserting something at one stage prevents you from arguing the opposite later. “File wrapper estoppel” means that if you say something on the written record during patent prosecution before the EPO, you will be prevented from asserting anything contradictory later, including during litigation, for example).

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