PETITIONS TO MAKE SPECIAL

I have recently added information regarding the backlog of applications at the USPTO. See USPTO Backlog Faced with the substantial, multi-year delays within some Technical Centers, it may be tempting to seek ways to jump to the head of the line. One option is to file a Petition to Make Special. This is subject of 37 CFR 1.102, entitled “Advancement of Examination”. The topic is discussed at MPEP §708.02.

First, at Petition to Make Special may be filed without fee on the basis of the “applicant’s age or health or that the invention will materially enhance the quality of the environment or materially contribute to the development or conservation of energy resources”. 37 CFR 1.102 (c). All other petitions require payment of a fee, currently $130.00.

· To qualify for expedited examination on the basis of the applicant’s age, the applicant must be at least 65 years of age as evidenced by a birth certificate or applicant’s statement.

· For health, there must be evidence that the applicant’s health is such to prevent the applicant being available to assist in the prosecution of the application during the normal wait time. Acceptable evidence is a doctor’s certificate.

· For Environmental Quality or Energy, the petition must include a statement explaining how the invention contributes to (i) the restoration or maintenance of basic life sustaining elements, i.e., air, water, and soil or (ii) development of fossil fuels, hydrogen fuel technologies, etc., or reduction of energy consumption in combustion systems such as industrial equipment, household appliances, etc.

Expedited examination may also be requested on the basis that the invention pertains to recombinant DNA, superconductivity, HIV/AIDS and cancer, and “countering terrorism”. Finally, expedited examination may be requested by a small entity seeking patent protection of an invention pertaining to biotechnology, and stating that the invention is major asset of the entity, and that the development of the technology will be significantly impaired if examination is delayed. The basis of the claim of impairment has to be explained.

Significantly, expedited examination may be requested via filing a petition and payment of fee, for two very compelling reasons. First, submitting a statement that a prospective manufacturer possessing sufficient capital (state the amount) and facilities (describe) exists or will be made available if a patent is granted and that the manufacturer undertakes an obligation to manufacture the invention in the United States immediately upon grant of the patent. The applicant must represent that it has made a careful and thorough search of prior art and supply copies of each prior art reference deemed most closely related to the invention.

Second, claiming actual infringement via a device or product actually on the market or infringement by a method in use. Further, providing a statement that a “rigid comparison” of the alleged infringing device has been made and that in the opinion of the person making the statement, the claims of the invention are “unquestionably” infringed. Finally, the applicant has made a careful and thorough search of the prior art and provides a copy of each reference most closely related to the invention. The USPTO reserves the right to require a further showing of facts after receipt of the petition and statement.

What I think is most significant is that any application may be subject of a petition for accelerated examination. However, for reasons explained below, this is an option must be carefully considered. The request for special status must be made by petition, accompanied by the filing fee (again, currently $130.00). In addition (and this is the important part):

· All the claims must be directed to a single invention. (Note the current PTO practice of “narrowly defining” and transforming differing embodiments of a single invention into differing species or separate inventions.)

· If the PTO determines all the claims are not obviously directed to a single invention (see note above), the applicant must make an election without objection. This agreement to elect is a prerequisite. In other words, you must agree to agree before you know how finely the PTO is going to divide up the invention described in your application.

· The applicant must submit a statement that a pre-examination search was made. The statement must include a listing of all the fields of search by class and subclass, publications, Chemical Abstracts, foreign publications, etc. This search MUST be directed to the specific invention that is subject of the petition. (Interestingly, a foreign patent office search, e.g., an EPO search undertaken as part of a counterpart PCT application, may be accepted as a pre-examination search.)

· The applicant submits a copy of each reference “deemed most closely related to the subject matter encompassed by the claims”.

· The applicant submits a detailed discussion of the references and pointing out with particularity how the claimed subject matter is patentable over the references.

If the USPTO is not satisfied that each criteria has been met, the petition may be rejected.

What is significant to me is that if you elect to seek expedited examination of an application, you must recognize you will be circumscribing the scope of patent coverage that may be allowable. You must first narrowly define the invention through the scope of the claims presented. You must then state how your invention is different from all prior art you discovered through your own search. (And to have the PTO accept your petition, you must be able to convince them you did a through search.) Your own words, submitted to obtained expedited examination, may likely come back to haunt you when you seek to enforce the patent against an infringer. The starting point for an application subject of special examination is very different from that of an application examined in the ordinary course.

To further muddy the water, John Doll, Acting Commissioner for Patents, reported on July 19, 2005, that there were a total of 111 undecided petitions in the system and there were 708 applications subject of granted petitions that were still awaiting the First Office Action of an examiner. To place these statistics in some perspective, Commissioner Doll’s presentation stated that 375,000 applications were expected to be filed in fiscal year 2005.

It is also the apparent goal of the USPTO to dispose (grant/reject) all applications subject of expedited examination in a 12 month period. Given the current backlog is several key Technology Centers, such a compressed examination schedule will be an enticing incentive.