As I mentioned in a February 18, 2017 blog post, USPTO has proposed to scrap the Accelerated Exam (AE) program (see the January 12, 2017 Federal Register notice). There’s an oddity about how the USPTO went about implementing AE in the first place that means that scrapping AE would have a peculiar consequence, namely to bring back three ways of making applications “special” that had been unavailable (from a practical point of view) for the past decade. I will explain. As best I can see, nobody at the USPTO, nor any of the handful of commenters in response to this Federal Register notice, has thought about this peculiarity.
When I was first in practice, there were many ways to get an application made “special”. For example as an inventor you could get an application made “special” by stating that you have a would-be investor who has made the investment contingent upon getting a granted patent on your invention. As a second example you could get an application made “special” by showing that at least one of the co-inventors was 65 years of age or older. As a third example you could get an application made “special” by showing that at least one inventor was in poor health.
Some twenty years ago the USPTO did a rulemaking that fiddled with the list of permitted reasons to get your application made “special”. No longer was the “would-be investor” a ticket for getting “special” status. But some new reasons got added the list. Under then-revised 37 CFR § 1.102 you could get your application made “special” if the invention was directed to environmental quality, the development or conservation of energy resources, or countering terrorism (or if you had an inventor who was old or in poor health).
Then about ten years ago, the USPTO basically eliminated the ability to make an application “special” for environmental quality, energy conservation, or countering terrorism. The USPTO did this in a very peculiar way, gutting the last part of Rule 102 by means of a mere MPEP change. The USPTO revised MPEP § 708 to implement Accelerated Exam. AE, it will be recalled, was the poorly designed program that called for the practitioner to carry out a worldwide search of prior art (the “AE Search”), and then called for the practitioner to certify that no relevant prior art had been overlooked in the search (the “Practitioner’s AE Search Certification”). The AE program further called for the practitioner to write the first Office Action for the Examiner, explaining why the invention was not patentable, and then to state why the practitioner was mistaken in that explanation and that the invention was patentable after all (the “Practitioner’s AE Support Document” or AESD).
As I discussed in an August 13, 2015 blog post, in my view it was tantamount to malpractice for a practitioner to get involved in an AE request. Many other practitioners seemed to agree; in the ten years that AE has been available, only a few hundred AE requests ever got filed per year.
AE was the brainchild of then-Director Jon Dudas. The path that Director Dudas chose to implement AE was not rulemaking. Director Dudas implemented AE by means of mere revision of the MPEP. The AE language in the MPEP (which is still there as of today) sets forth the various procedural requirements for AE, including the AE Search, the Practitioner’s AE Search Certification, and the Practitioner’s AE Support Document. The AE language in the MPEP then says (this is the peculiar part) that the only significance of environmental quality, energy conservation, or countering terrorism aspects of the invention is that you could get a free pass on the $140 AE government fee if you could show a link to environmental quality, energy conservation, or countering terrorism in your invention.
So what is in play now? To recap, on January 12, 2017 the USPTO published a Federal Register notice proposing to scrap AE. But the Federal Register notice was not a Notice of Proposed Rulemaking under the Administrative Procedure Act. It contained no proposed new Rule. The FR notice merely requested comments on scrapping AE. The FR notice merely proposed revision of the MPEP.
One odd consequence of the the way that Director Dudas implemented AE is that the proposed scrapping of AE would not count as eliminating a rule under President Trump’s two-for-one executive order that requires an agency to eliminate two rules as a precondition for implementing a new rule. Director Dudas did not add a rule to implement AE and thus the scrapping of AE would not count as eliminating a rule.
But a second odd consequence of the way that Director Dudas implemented AE is that if AE is scrapped, the second part of Rule 102 (the part about environmental quality, energy conservation, or countering terrorism) will still be there. As I say, the January 12, 2017 Federal Register Notice is not an NPR (notice of proposed rulemaking). The Notice does not contain any proposed new rule. So the part of Rule 102 that says you can get your application made “special” if you show a connection to environmental quality, energy conservation, or countering terrorism will still be there.
If you read the the January 12, 2017 Federal Register Notice, you will find no hint or suggestion that anybody at the USPTO thought about this. It looks like the USPTO only thought about scrapping AE and gave no thought about the fact that Rule 102 would still say what it says about making applications “special” if there is a connection to environmental quality, energy conservation, or countering terrorism.
A mere five comments were filed in response to this Federal Register Notice. And there is likewise no hint or suggestion that any of the commenters thought about this second-part-of-Rule-102 aspect of the proposed scrapping of AE. Let’s take a brief look at the five comments.
The first comment is from the American Intellectual Property Law Association. The comment correctly highlights the burdensome Accelerated Examination Support Document (AESD) as a reason why very few AE requests have been filed, and supports the scrapping of AE.
The second comment (which is from a patent practitioner) addresses itself to “Commissioner Lee” (she is “Director Lee” or “Under Secretary Lee”). The commenter seems to get Track I mixed up with AE. It will be recalled that Track I (also called “expedited examination”) gets a case examined fast merely upon payment of a big fee ($4000, smaller for small or micro entities) and upon satisfaction of a few other formal requirements. The commenter says it is important for an applicant to have the option of “paying for acceleration” and my best guess is that the commenter was thinking of “expedited examination” rather than “accelerated examination”. The second comment “humbly beseeches” the USPTO “to keep this wonderful program” but my best guess is that the “wonderful program” that the commenter seeks to preserve is “expedited examination”, not “accelerated examination”.
The third comment (which is from a patent practitioner) complains about the many drawbacks of AE and points out (correctly) that a large fraction of AE requests are dismissed due to failure to comply with the (admittedly onerous) requirements of AE. The practitioner then compliments by name a Marianne Seidel who is said to “conduct timely and fair reviews” and compliments by name a Bennet Celsa who is said to be “extremely helpful in many instances”. The commenter does not support the scrapping of AE but asks that the USPTO grant more of the AE requests rather than dismissing them.
The fourth comment (which is from a patent practitioner) mistakenly understands the proposed change as an elimination of the ability to get an application “special” based upon the age of the inventor.
The fifth comment is from IBM. It suggests that USPTO preserve AE, and also suggests that USPTO make changes so that not such a large fraction of AE requests are dismissed.
I can see how, in a strange way, some entities might actually prefer that AE continue to be available. An entity that frequently gets sued for alleged patent infringement, for example, might like it if in future years some fraction of the asserted patents were AE patents, for the simple reason that an AE patent is likely to be much easier to invalidate than a non-AE patent. Preserving AE would improve the chances that a particular asserted patent would be easier to invalidate, since the patent owner might have made use of AE. Saying it differently, scrapping AE would reduce the chances that a particular asserted patent would be easy to invalidate, since the patent owner should have been denied the opportunity to use AE.
The commenters that did not support scrapping AE did not support retaining AE the way it is now. They only supported retaining AE if USPTO were to go to a lot of trouble to change AE so that it was easier to use and did not result in so many dismissed AE requests. I think it is vanishingly unlikely that USPTO would choose to go to such trouble to try to salvage the little-used AE program.
My prediction is that USPTO will follow through on its proposed scrapping of AE. As mentioned above, this change does not require rulemaking, but merely requires revision of the MPEP.
But the scrapping of the AE language from the MPEP (if indeed it happens) will leave the second part of Rule 102 in place. As far as I can see, USPTO would then have no choice but to resume letting applicants gain “special” status by showing a connection to environmental quality, energy conservation, or countering terrorism. As I say, I cannot see any hint or suggestion that the USPTO itself, or any of the five commenters, thought about this.