Today, the USPTO published a notice updating the accelerated examination program and noting that the USPTO plans to publish a request for comments to seek public input on whether there is value in retaining the program. Back in 2006, the USPTO introduced the accelerated examination program to allow for expedited prosecution if an applicant performed a pre-examination search and provided various information in an Accelerated Examination Support Document. The accelerated examination program predates the AIA and various rule changes, and this update brings the accelerated examination program up to date.
The accelerated examination program has had relatively low usage since the passage of the AIA. One reason applicants tend to avoid the accelerated examination program is because it requires the applicant to create an extensive record—a record that could create issues in later litigation or post-grant trials. For example, even under the updated requirements, an applicant must identify "where each limitation of the claims finds support under 35 U.S.C. § 112(a) in the written description of the specification" (81 FR 54566, col. 2), "[f]or each reference cited . . . all the limitations in the claims that are disclosed by the reference" (71 FR 36325, col. 1), and "a detailed explanation of how each of the claims are patentable over the references cited" (71 FR 36325, col. 1). Those disclosures in the support document could be cited by an IPR petitioner to support arguments that certain limitations are disclosed in the prior art, or to hold a patent owner to a specific claim construction. Accordingly, the accelerated examination program is rarely used today.
In contrast, the prioritized examination program created by the AIA—typically referred to as "Track 1"—provides for expedited examination without the burdensome search and support document requirements. Track 1 allows an applicant to pay a fee for prioritized examination. While it places some restrictions on expedited applications (e.g., they cannot include more than 30 total claims), it does not risk creating a record that could hurt a patent owner in later litigation or post-grant trials.
In sum, while the update modernizes the program, applicants that use the accelerated examination program risk creating a record that could be used against them in post-grant trials or litigation. In most cases, patent applicants would be better served by taking the "Track 1" route to speed up examination.
This article is presented for informational purposes only and is not intended to constitute legal advice.
