Yesterday I blogged about what it might cost to get a US patent fast by means of Track I. Today I offer a few thoughts about what it might cost to get a US patent fast by means of AE (Accelerated Examination).
Getting a case into the AE program is a lot of work.
A first requirement for AE is that the practitioner needs to carry out an AE search. What is an AE search? An AE search is (paraphrasing slightly) a search everywhere in the world, in every database, including all patent databases and all non-patent literature databases, carried out so diligently that the practitioner is able to file a signed statement with the USPTO stating that no reference pertinent to patentability has been overlooked.
USPTO people have been quoted as saying that the search carried out by an ordinary USPTO examiner in an ordinary US application would not satisfy all of the requirements of an AE search.
Ten years later, when the AE patent is being litigated, it is safe to assume that the signer of that statement will be deposed at length. It is also safe to assume that the adversary will have little difficulty uncovering real or imagined lapses in the quality of the AE search, and will have no difficulty at litigation time finding myriad references that are argued to be pertinent to patentability and that were not found in the AE search.
Returning to the requirements for AE. The practitioner is also required to prepare and file an AESD (Accelerated Examination Support Document). For the AESD, the practitioner is required essentially to write the first Office Action for the Examiner. This portion of the AESD identifies the references from the AE search that the practitioner feels are most relevant, and applies those references against all of the claims, with an element-by-element exegesis of each claim, explaining why the invention is not patentable.
The next part of the AESD which the practitioner must prepare is a rebuttal of every point that the practitioner made in the first part of the AESD.
Simply put, in the first part of the AESD, the practitioner must explain in detail exactly why the invention is unpatentable, and then in the second part of the AESD, the practitioner must explain in detail why the practitioner was mistaken when the practitioner said the invention was unpatentable.
Ten years from now in litigation, it is safe to assume that the adversary will find many real or imagined flaws in the AESD. The author of the AESD will be deposed at length about the document and why it did or did not present this argument or that argument. It will be urged that the practitioner held back and did not really present the strongest arguments for unpatentability but only presented weaker arguments. It will be urged that in the rebuttal portion of the AESD, the practitioner misled the Examiner when explaining why the invention really was patentable.
At litigation time, it would not be at all surprising if the adversary were to succeed in invalidating some or all claims of an AE patent. Were this to happen, it would not be at all surprising if the client were to try to blame the practitioner for having recommended AE in the first place.
AE imposes many other burdens on the applicant and on the practitioner. To use AE, the application is limited to three independent claims and twenty total claims, with no MDCs (multiple dependent claims). To use AE, the application must be “complete”, meaning that it will not give rise to a notice of missing parts, notice of incomplete application, notice of omitted items, etc.
To use AE, the applicant must promise in advance not to traverse any restriction requirement, no matter how unjustified it might be. The applicant must promise in advance that if the applicant appeals, the applicant will not separately argue patentability of any claim. Said differently, the applicant will have to concede that the claims stand and fall together.
My feeling is that for an AE case,the AE search and AESD would surely run up a bill of at least ten thousand dollars, and for subject matter of some technical complexity the bill would add up to at least twenty thousand dollars. It also seems to me that in addition to a bill for the time spent preparing these documents, a practitioner would be smart to increase the bill so that enough money is collected to reflect the increased risk of later being accused of malpractice.
What I am talking about is the increased cost for the use of AE. That is over and above the ordinary cost to prepare a patent application and to get it filed with the USPTO.
What do you think an AE case should cost? Please post a comment.