Protecting the intellectual property in a product or service offering is critical to maintaining a market advantage. This is particularly true for products, such as consumer goods, electronics, medical devices, etc. whose design and function can be understood from simple use and observation of the product. Such products lose most of their trade secret protection once they become publicly available. At that point a business must rely on patent rights to prevent competitors from copying key structural and/or functional aspects of the product. However, the task of obtaining patent protection in the span of time between idea conception and product launch has become an increasingly daunting task for most patent applicants. With shortened product design cycles in many technologies and an increasing backlog of unexamined patent applications before United States Patent & Trademark Office (USPTO), many corporations and businesses have had to wait years after the launch of their bestselling products before patents protecting the same have issued. Such is the dilemma facing inventors, small businesses and corporations currently seeking patent protection from the United States Patent & Trademark Office (USPTO). The wait for examination is even more acute for patent applications dealing with software, electronics, business methods, telecommunications, and medical device technologies, where wait times of 4-5 years are common. Although an applicant can represent a product as patent pending once the patent application has been filed, patent rights cannot be enforced until the patent issues.
There is an alternative to all that waiting. The USPTO’s Accelerated Examination (AE) process offers an opportunity to anyone who doesn't want to wait several years before their patent rights become enforceable. Started approximately two years ago, the AE process has been gaining popularity. The premise of the AE process is simple. The inventor and his or her attorney not only prepare the patent application, but also perform a preliminary or self-examination of the application, essentially performing the patent examiner’s role ahead of time. Such self-examination requires the attorney to go through the same evaluation protocol as the patent examiner, including searching for similar prior patents and analyzing how obvious the invention is in light of similar prior patents from the same or related technical fields. The results of the self-examination are then presented to the USPTO in the form of a petition at the time of application filing. The petition is initially examined for compliance to ensure that the patentability search performed by the applicant was of proper scope and that the analysis adequately establishes grounds for patentability under the current patent laws.
Once accepted into the AE process, the application gets the immediate attention of a patent examiner who reviews the self-examination materials, including the search results and the applicant's support for patentability. From there the process moves rather quickly with much of the normally written correspondence between the patent examiner and the applicant’s attorney being replaced with one or more telephone interviews. If allowable subject matter cannot be initially agreed upon between the patent examiner and the attorney, the patent examiner will issue a single written office action. The applicant must respond to the office action within one month, placing the application in allowable condition, otherwise the examination process terminates and the application is rejected.
According to USPTO statistics, the average length of time from the acceptance of an application into the AE process until a notice of allowance is approximately ten months. However the time can be significantly shorter. Recently, one Burns & Levinson client with an innovative mechanical device received an initial call from the assigned patent examiner indicating allowable subject matter only two days after the application was accepted into the AE process, with an end-to-end process from application filing until patent issuance of less than six months.
Preliminary statistics from the USPTO indicate that the rate of patent issuance is significantly higher (approximately 85%) for applications accepted into the AE process than for applications examined under the normal process (currently below 50%). This statistic is due, in part, to the much greater understanding of the prior art which the applicant's attorney gains during the self-examination process. It comes as no surprise that corporations looking to rapidly grow their patent portfolios can utilize the AE process to their advantage, particularly those in highly litigious technical fields or those with pioneering technologies. IBM Corp., the number one patent grantee of US patents year after year, has filed approximately 90% of all accelerated examination to date.
The total costs associated with obtaining a patent utilizing the AE process are approximately same as the total costs for obtaining a patent using traditional examination, with one caveat. Those costs are expended in a much shorter period of time, typically less than one year. However, the allure of rapidly obtaining patent protection and the advantage of enforcing patent rights now, instead of several years in the future, outweighs such inconvenience for most patentees.