This article was originally published by Patent Strategy & Management, March 2008.
In August 2006, the U.S. Patent and Trademark Office ("USPTO") launched an Accelerated Exam system promising significantly reduced prosecution times. Despite the lure of expedited patents, after 18 months, the Accelerated Exam procedure has been little used while receiving criticism from patent practitioners. This article explores the advantages achieved by using the Accelerated Exam procedure as a pre-litigation strategy. By filing claims tailored to the infringing device under the Accelerated Exam procedure, an applicant can get the infringer in court more quickly, strengthen its validity position, and potentially reduce litigation costs.
The filing requirements for an Accelerated Exam patent application are arduous. Among those most discussed in the patent community are a limit on the number of claims, a pre-examination search requirement, and an accelerated examination support document. Patent practitioners have opined that these requirements create an unjustifiable option when balancing risk and cost against potential benefit. In the context of obtaining a patent focused on enforcement against an identified party, the accelerated exam procedure provides an alternative for quickly obtaining claims that may be tailored to the infringer and easier to defend.
The Requirements
The Accelerated Exam rules set a claim limit for applications of three or fewer independent claims and 20 or fewer total claims, all directed to a single invention. If the USPTO determines that the claims presented are not directed to a single invention, the applicant must make an election without traverse in a telephonic interview.
The pre-examination search requirement sets forth that, at the time of filing, the applicant must provide a statement that a pre-examination search was conducted, including an identification of the field of search by U.S. class and subclass. The preexamination search must involve a search of U.S. patents and patent application publications, foreign patent documents, and non-patent literature. The pre-examination search must be directed to the claimed invention and must encompass all features of the claims.
At the time of filing, the applicant must provide an accelerated examination support document ("ESD") including an information disclosure statement citing each reference deemed most closely related to the subject matter of each of the claims. For each reference cited, an identification of all limitations in the claims disclosed by the reference and specifying where the limitation is disclosed in the cited reference must be made. The ESD must include a detailed explanation of how each claim is patentable over the references cited. The ESD further must include a concise statement of the utility of the invention as defined in each of the independent claims and a showing where each limitation of the claims finds support in the written description of the specification.
The Requirements — Interpreted For Litigation
Claim Limit
Patent attorneys have chafed at the accelerated exam claim limit as permitting too few claims and forcing election of a single embodiment. In a pre-litigation scenario, when a possible infringer has been identified, the applicant is in a unique position to know the device or method for which coverage is desired. Thus, the applicant can narrowly craft claims to cover the infringing device or method. Three independent claims and 20 total claims provide ample opportunity to claim such identified device or method.
Pre-examination Search
In enforcing a patent, a patent holder is typically concerned about potential validity challenges that may be raised by a defendant. The search requirement provides an opportunity for the patent holder to have prior art from a number of sources considered by the patent examiner prior to issuance. In litigation, a defendant typically performs an exhaustive search to identify prior art that is closer than that cited in prosecution of the patent in an attempt to invalidate the patent. Consequently, by performing the required prior art searches during an accelerated exam, the applicant makes it less likely that a defendant can find prior art that is not cumulative of art that was cited in the pre-examination search or by the patent examiner and that is closer to the claims than the art considered. Further, while some cost is moved to prosecution of the patent, this cost may reduce the amount of work that would need to be done during litigation in defending a validity challenge.
Examination Support Document
The ESD is an opportunity for the patent holder to articulate its theory of validity to the Patent Office with regard to all the cited art. This procedure provides the patent holder with evidence that the patent examiner agreed with this theory, which will (at least in part) be used during the litigation. Two complaints with respect to ESDs are the prosecution history that is created and the cost involved. During standard patent prosecution, patent practitioners frequently are forced to discuss the patentability of claims relative to the prior art and carefully craft arguments to avoid creating undesirable prosecution history. While claim mapping adds a layer to the arguments typically made during prosecution, care can be taken by a skilled patent practitioner to minimize prosecution history effects of the mapping. The cost involved in preparing an ESD is likely to be substantial. However, like the cost of a pre-exam search, this cost is one that is likely to be accrued during pre-litigation. Development of claims charts by both the plaintiff and defendant in patent litigation is standard practice. While expensive during prosecution, there is a good chance this cost would have been accrued during litigation. Thus, the cost is moved from pre-litigation to prosecution and may not be an added expense. Further, it is possible that a judge, during litigation of the patent, may be impressed by the work done by the applicant in obtaining a patent.
Conclusion
Using the accelerated exam procedure, an applicant can have a patent ready to take to court very quickly (within 12 months). Because of the search and examination conducted during the accelerated exam procedure, a potential defendant should have more difficulty challenging the validity of the patent. In particular, a court should be impressed by the amount of work done by both the applicant and the Patent Office to ensure that the issued claims are patentable over cited art. Thus, while more expensive than standard prosecution, this procedure creates work product that likely would need to be produced during litigation and creates a patent that is more likely to be viewed favorably by the court and/or weaken a defendant’s case.
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