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Call it the Patent Express. Or the Patent Application Superhighway. Or perhaps the Fast Train to Patentville. Whatever you call it, the U.S. Patent and Trademark Office has approved the first patent under a new program designed to evaluate patent applications in a year or less. Given that it can normally take several years for the PTO to process a patent application, the agency’s “accelerated examination” program would seem to be a hugely positive step. Many Silicon Valley patent attorneys, however, have some reservations about jumping aboard. “My initial reaction is that this is actually a little bit of excitement staged by the patent office in an attempt to woo the public,” says Linda Thayer, a partner and patent attorney at Finnegan, Henderson, Farabow, Garrett & Dunner. “I think it’s a big to-do about not much at this point. We’re very skeptical.” The PTO’s accelerated examination program, which launched nearly a year ago, asks patent prosecutors who file applications to take on some of the duties normally assigned to patent office examiners. Applicants are required to conduct a prior art search to see whether existing patents may already cover their invention. They also must state specifically why their invention is different and useful. Applicants must participate in interviews with patent examiners to hash out any questions or misunderstandings. The program gives applicants a chance to “come in with a well-prepared application and give the examiner the best prior art. We would, in turn, advance them to the head of the line,” says Peggy Focarino, PTO’s deputy commissioner for patent operations. The program’s first patent, announced earlier this year, was given to Brother International for a modification to a printer ink cartridge. The application took six months to process. But Thayer and other attorneys worry that the front-loading approach might leave a patent holder vulnerable to litigation. Someone accusing the patent holder of infringement can use the holder’s statements about prior-art searches in court. Normally with patent applications, patent prosecutors only have a duty to tell the PTO about prior art they’re aware of � but without having to do a thorough search. “People will explore how you did the search [and ask], ‘Was it reasonable how you did the search?’” says Thayer. “What you disclosed will be under heightened scrutiny.” Michael Shuster, a partner at Fenwick & West, wonders whether clients will be willing to spend money on additional legal services upfront, particularly at a time when companies are worried about the large sums they’re already spending on defending their patents in court. “People are looking to conserve patent budgets,” says Shuster. “From that point of view, I could see some resistance on the part of clients.” Shuster often represents biotech companies who hold very complex patents. In many cases, he says, clients have not clearly worked out precisely what they plan to do with their inventions. “For life sciences, it’s a little less useful,” he says, referring to the fast-track process. “Particularly for therapeutics, there’s not any marketed products until fairly late in the process.” The fast track, however, may work well for other kinds of technology with shorter product lifecycles, says Shuster, such as computer security, software-related patents and chip designs. “The time from filing your patent to product is generally a lot shorter in those areas,” says Robin Silva, a patent attorney at Morgan, Lewis & Bockius. “There may be business reasons you might want to patent it more quickly.” The accelerated program worked well for the ink cartridge modification because it was a straightforward mechanical application, says Thayer. Focarino acknowledges that the accelerated program might not be for everyone and may need some revision. “A lot of it depends on the applicants � if they feel this product may be infringed on early on,” she says. For example, it may not be a good solution for a drug that takes years to obtain FDA approval, she says. Overall, concludes Shuster, the program is a “positive development,” particularly in light of the criticism heaped on the PTO in recent years. “For people who have grown frustrated with delays,” he says, “it’s just another user fee to obtain a higher level of service.” Jessie Seyfer is a reporter at The Recorder who covers developments in IP law and among those who practice it.

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