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Petitions to Make Special for Expedited U.S. Examination

The process for accelerated examination by filing a petition to make special can greatly speed up prosecution and is perhaps the only quick way, separate of the  Patent Prosecution Highway (PPH) or PCT/PPH, to get patent applications through certain technology centers (e.g., Internet, renewable energy, medical devices, etc.) in a reasonable amount of time. However, there are pros and cons to the accelerated examination process and it may not be for everyone. A petition to make special under the accelerated examination program has a number of requirements that can easily double to cost of preparing and filing the application.  The additional cost, however, may be justified in view of the following benefits of the process.

  • Patent protection may be granted in as little as six months.
  • There is a greater certainty of examination/prosecution cost and outcome (i.e., accelerating exam can translate into years worth of saved time and money).
  • Issued patents may be beneficial to business objectives to monetize IP (e.g., licensing, selling, strategic R&D collaborations, protecting ownership rights, etc.), attracting investors by showing a successful path to the marketplace and the ability to exclude competitors, increases in University rankings and technology transfer collaborations, attracting and retaining investors in science parks, etc.
  • Moreover, applicants seeking examination without accelerated examination status may have to comply with more burdensome procedures than those procedures involved in an accelerated patent process, but without the benefits of an early decision.

Even in view of the processes benefits, accelerating examination of applications under this program may not be for everyone. There are strict procedural and substantive requirements and litigation risks (e.g., prosecution history estoppel) because the applicant must generate and provide a Pre-Examination Search Statement and an Accelerated Examination Support Documents, including:

  • A thorough pre-examination search of U.S. patents and patent application publications, foreign patent documents, and non-patent literature for: (a) the subject matter in the claims of the application; and (b) any subject matter that may be claimed in the future. The field of search must be identified by United States class and subclass, date of the search, search logic, files searched and so forth.
  • For those references identified as being most closely related to the subject matter of each of the claims, an identification of all of the limitations of the claims that are disclosed by the reference must be made specified indicating exactly where the limitation is disclosed in the cited reference.
  • A detailed explanation of how each of the claims are patentable over the references cited with the particularity required by 37 CFR 1.111 (b) and (c).
  • A showing of where each limitation of each of the claims finds support in the specification in compliance with 35 USC §112.  If the application claims priority of one or more applications, the showing must also include where each limitation of the claims finds support in any and each priority application in which such support exists.
  • The claims are limited to 3 independent and 20 total and directed to a single invention.
  • A concise statement of the utility of the invention as defined in each of the independent claims is required.
  • The expedited goal of 12 months is not a guarantee and applies only if applicant files a grantable petition to make special.
  • There are several limitations in effect during prosecution. Responses to office actions must be limited to the rejections, objections, and requirements made in the office action, papers must be filed electronically via EFS-Web, and the response times are shortened to one (1) month from the usual three (3) months. No extensions are permitted.
  • To facilitate prosecution the Applicant’s Patent Attorney will likely need to conduct one or more telephone or in person interviews (including an interview before a first Office action) with the Patent Examiner to discuss the prior art and any potential rejections or objections. The Applicant needs to submit a completed interview form PTO/SB/28 agreeing to make elections without traverse, not to separately argue the patentability of dependent claims on appeal, and so forth.
  • No withdrawal from the program is allowed once accelerated status is granted.