The Accelerated Patent Examination process is not for everyone. However, for those in the technology and manufacturing sectors, who intend to introduce or produce new products every 12-14 months, this process can add great value to the worth of your product. While there are cons to the Accelerated Patent process, Berenato & White works closely with clients to mitigate or eliminate them when it makes sense for a client to pursue accelerated patent examination.

Here’s a brief overview of the pros and cons of accelerated patent examination:

Pros

• Early certainty that a patent brings to protect your company's inventions.
• Help attract and retain investors by increasing the asset value of your company’s inventions.
• Can strengthen your company’s offensive and defensive position in your market space.
• Proactively addresses the tremendous backlog of patent applications at the US Patent and Trademark Office (USPTO), which can translate into years’ worth of saved time and money.
• Can synchronize patent rights formation with product development and introduction.
• Patent protection can come in as little as six months, along with greater certainty of prosecution cost and outcome.
• An applicant seeking examination without special status may end up having to comply with many of the more burdensome procedures involved in an accelerated patent without the benefits.

Cons

• There can be strict procedural and substantive requirements and litigation risks, which need to be considered and weighed against the potential benefits.
• Only non-reissue utility or design applications filed under 35 U.S.C. [section] 111(a) on or after August 25, 2006 are eligible.
• 12-month turnaround time of accelerated patent is not a guarantee.
• The expedited goal of 12 months applies only if the applicant files a grantable petition to make special.
• An applicant under the accelerated examination program is required to conduct a search of the prior art, submit all prior art that is closest to the invention, and explain what the prior art teaches and how the invention is different.
• An applicant must be able to explain how the invention is useful and must show how the written description supports the claimed invention.
• Accelerated patent process limits the number of claims in each application, and the claims must be directed to a single invention.
• The program shortens the time for responding to most USPTO communications and no extensions are permitted.
• There is no provision for withdrawal from special status once granted.
• Accelerated examination limits the number of claims to 20, with a maximum of three independent claims