How is Accelerated Examination Research Used?
The goal of decreased pendency and increased efficiency at the USPTO has resulted in procedural changes based on burden-sharing, particularly with regard to research.
The best example of industry impact of these changes is the Petition for Accelerated Examination, replacing the Petition to Make Special.
This new Petition will be the template for the USPTO’s future efficiency initiatives.
Accelerated Examination filing has been used for both legal and business decisions, growing in benefit as its processes become more familiar to the USPTO and practitioners.
How is Accelerated Examination Research Conducted?
The initial search consists of an extended novelty search including both patent and non-patent literature, where the search strategy is reported using a Pre-Examination Search Document. The Pre-Examination Search Document requires little modification by the client prior to submission.
The search is based on both a classification search as well as a keyword search of patent and non-patent literature. The art of Conducting this research is based on selecting the keywords from the specification and claims. It is important to have consistent and well crafted keyword search strategies across all keyword searching.
Due to the close relationship between the keyword search strategy and the application as filed, we strongly recommend an update to the initial search based on any changes made to the disclosure and/or claims. Keywords or concepts added to the application after the initial search are routinely noted by the Examiner during review of the Petition.
We then review the concerns expressed by the Examiner and modify the search accordingly, supplying a modified search report and new Pre-Examination Search Document.
The dismissal of a Petition is as common as a first office action rejection. Express Search includes an update to the Petition at no additional charge.
Finally the Examiner may require the Pre-Examination Search Document be updated prior to the patent’s allowance, which Express Search will update at the direction of the client for an additional authorization.
Who Benefits from Accelerated Examination Research?
A growing number of companies are pushing for Counsel to file Accelerated Examination Petitions in order to avoid the estimated six year examination backlog in some art units.
Clients who benefit most from this research typically have both legal and business motivations, wherein it is a part of a larger corporate portfolio strategy.
Critical applications may be filed normally and subsequently moved to the head of the queue through Accelerated Examination when business conditions require immediate protection.
Many clients file several smaller applications with Accelerated Examination Petitions in lieu of a larger single application with many claims. Under this strategy, a portion of the Accelerated Examination Petitions may be accepted ensuring some coverage for the technology within the first year of filing.
Search Results Include:
- Pre-Examination Search Document (including field of search and search strategies)
- Opinion-free comments
- Keyword searchable patents
- Current PAIR assignments
- Current INPADOC patent family and legal status
- Electronic results for easy storage and sharing
- Free shipping and free
- electronic patent copies
- Free research estimate