obvIPat - Obviously Patentable

The blog for inventors, in-house counsel, & entrepreneurs.

Patent It Without The Wait: Part 2

by Bruce Jobse

Notwithstanding Undersecretary of Commerce and U.S. Patent and Trademark Office Director David Kappos’s recent announcement of a proposed Three Patent Processing Track system for patent examinations, we are continuing with the second part of our two-part post on the USPTO’s current Accelerated Examination (AE) option.

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 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 can not 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.

As you can see, this process can be extremely powerful for quickly increasing the IP asset value of a business entity.  So if you are currently contemplating a major new product launch, an initial public offering, another round of financing, a major licensing effort, the sale of a product line or business, or litigation against a competitor, and one of your key innovations is not yet protected, patent it now without the wait!

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