The USPTO has a new Accelerated Examination Program that promises an issued patent within 12 months. This program has a couple essential elements. The first element is that the applicant must perform a thorough search prior to applying for the patent. The second element is that the applicant can only have three independent claims.
The biggest weakness in this program is the requirement of a search and the thoroughness of the search. The search must be quite broad and will likely require screening of a thousand or more patents. Any of those thousand patents could contain a hidden paragraph that discloses the invention and would be a 102 rejection. No client has enough money to pay for a complete and thorough reading of all those patents, so the search is never complete, even in the subclasses that are searched.
When the patent is litigated, or even due diligence performed when a license or sale is contemplated, another search will be performed. But the second search may have an almost limitless budget and can be much more thorough. Those hidden problem paragraphs tucked away in some dusty patent will then be uncovered and the patent may be invalidated.
Any patent that issues from this program will be attacked by all the normal channels, but there is a huge door through which the patent may be rendered invalid: an assertion that through inequitable conduct on the part of the person doing the search, the patent should be invalid in its entirety. If there is enough money at stake in a patent lawsuit, no good litigator will go forward without asserting the claim of inequitable conduct.
Patent applicants owe a duty of candor, good faith and honesty to the United States Patent and Trademark Office (PTO). A breach of this duty may constitute inequitable conduct which can arise from a failure to disclose information material to patentability, coupled with an intent to deceive or mislead the PTO. Inequitable conduct includes affirmative misrepresentations of a material fact, failure to disclose material information, or submission of false material information, coupled with an intent to deceive. Purdue Pharma L.P. v. Endo Pharms., Inc., 410 F.3d 690, 2005 U.S. App. LEXIS 10416 (Fed. Cir., June 7, 2005, Decided)
I was not able to quickly find cases where intent to deceive was found on the part of the practitioner, but whether the attorney or agent will win in a lawsuit is really irrelevant. The cost and pain of a lawsuit is just not worth the risk. The practitioner’s entire livelihood is put at risk for a client’s desire to get a patent quickly. And the practitioner will have great difficulty finding malpractice insurance for the rest of his or her career.
The bottom line is that patent practitioners who attempt this accelerated prosecution are putting an enormous amount at risk. Every attorney with whom I have discussed this issue has agreed that no sane practitioner will ever attempt this process.
Every practitioner is obligated to discuss this avenue with a client, but no one with a malpractice premium to pay will ever take the case. Inventors who chose this prosecution strategy will do so at a tremendous risk that their patent may be quickly and easily invalidated by doing a more thorough search at a later time.
I applaud the USPTO for attempting some change. New prosecution options are always welcome. However, my bet is that there will be a few attempts at this program, but when the first patent is litigated and found invalid, there will be far fewer people even considering the program.
As an inventor, patent holder, and patent practitioner, I want every patent to be as thoroughly and comprehensively searched, evaluated, and run through the proverbial wringer before the patent issues. I do not want a cheap, quick patent that cannot be enforced against anyone.
