First Round of Accelerated Examination Applications…100% denied?
January 29, 2007 on 1:41 pm | In USPTO |I previously blogged on "Accelerated Examination." Without giving my opinion, it was clear from the post that I had my doubts in the usefulness of the procedure. Those doubts were reinforced when Greg Aharonian’s (in his free newsletter PATNEWS (it is worth subscribing to)) recently printed an email from an anon reader regarding Accelerated Examination. Part of that email noted that:
The first batch have been returned - With Absolutely No Applications Approved. If this does not peg your crap-o-meter, the majority of the rejections by the SPRE corps can be classed as fowl defecation, by far the most egregious grounds is couched in the best language of the novel "Catch-22" that would make Joseph Heller proud.
Briefly stated, one of the conditions is to include a statement, made based on a Good Faith Belief, that a pre-examination search in compliance with the following requirements, was conducted, including an identification of the field of search by United States class and subclass, where applicable. "Sanitized" to avoid retaliation, the rejection stated in part that,
"…the petition lacks an indication of a pre-examination search that encompasses all of the features of the claims. Specifically, with respect to the classification search, in addition to searching class 123, subclass 234 (which is the class and subclass where the application will be classified), subclasses 7, 8, 9, 10, 11, 12 and 13 are necessary subclasses to be searched. In addition, class 345, subclasses 10 and 11, as well as class 456, subclasses 222, 333, 444.4, 555.5 and 666 are required areas of search."
See the Catch-22?
Class/subclass are assigned AFTER the preliminary search. You need a crystal ball to know which class/subclass will be assigned. If you honestly guess wrong (not to hard given the poor design of many PTO classes), they reject your Special application.
Wow. Add another item to my "why I won’t recommend AE" list.
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2 Comments
Sorry, the comment form is closed at this time.
In my art, our pendency to first action is 12-18 months and once I was docketed a case that had a petition to make special. The SPREs had denied the petition so I did the case in regular order. I wasted about an hour of my time considering the search report and its off-topic references. Petitions to make special only waste the examiner’s and the applicant’s time.
Comment by Examiner A — January 29, 2007 #
I don’t believe that the petitions are a waste of anyone’s time if they are done correctly and in accordance with the sample templates provided by the USPTO. In addition, the examiner can tell, quite readily, when a search is conducted in the abscensce of a drafted set of claims. I don’t think practitioners, across the board, are submitting petitions that adhere to the basic guidelines. The search should be as broad as possible, with each and every subclass listed in the search field.
Comment by shane davis — January 30, 2007 #