Is This the Beginning of the End for Accelerated Examination?

In its August 16th Notice identifying a number of updates to the accelerated examination (AE) program, the USPTO announced that it also plans to seek public input on whether it should continue to offer the AE program at all. Under the AE program, which was implemented in 2006, an application will be advanced out of turn for examination if the applicant files a petition to make special with an appropriate showing. This showing requires the applicant to meet several conditions, including: (1) conducing a pre-examination search; (2) providing an accelerated examination support document (AESD); and (3) ensuring the application is complete under 37 C.F.R. § 1.51 at the time of filing. Citing the relatively low usage of the AE program since the implementation of Track I (the Notice reports that the USPTO has received fewer than 200 AE requests annually since 2011), the USPTO indicated that it plans to publish a request for comments on whether there is any value in retaining the AE program in view of the more popular Track I program.

The Notice also announced a number of updates to the AE program to reflect the changes in the law and examination practice that accompanied the America Invents Act (AIA), the Patent Law Treaties Implementation Act implementing the provisions of the Patent Law Treaty, and the USPTO’s adoption of the Cooperative Patent Classification System (CPC). These amendments:

1. Update the requirements for the pre-examination search and accompanying AESD to:
   1. Include the relevant classification group(s)/subgroup(s) of the CPC, rather than the class(es)/subclass(es) of the prior U.S. Patent Classification System; and
   2. Identify whether any of the cited prior art may be disqualified under 35 U.S.C. § 102(b)(2)(C) if the application is subject to examination under AIA §§ 102 and 103 (pre-AIA applications must still identify whether any of the cited references are disqualified under pre-AIA 35 U.S.C. 103(c)).
2. Extend the shortened statutory period (SSP) for responding to Office Actions to two months.
3. Permit extensions of the SSP for responding to Office Actions, which will result in the application being taken out of the AE program.
4. Preclude petitions under 37 C.F.R. § 1.46(b)(2) to designate a person with sufficient proprietary interest as the applicant, and petitions under 37 C.F.R. § 1.78 to accept a delayed benefit claim.
5. Require that all priority claims are made in an Application Data Sheet under 37 C.F.R. § 1.76.
6. Require that all AE applications are filed through EFS-Web.
7. Require a compliant oath, declaration, or substitute statement upon filing, despite the fact that an executed oath or declaration is no longer a condition for examination under the AIA.

Visit the USPTO's website for more information on the accelerated examination program.