• Cassandra L. Wilkinson

Applicant Can Petition To Reduce Patent Issue Time



Under the U.S. patent rules provided in Title 37 - Code of Federal Regulations Patents, Trademarks, and Copyrights, Section 1.102 (also known as 37 CFR 1.102), the Examiner must examine a nonprovisional U.S. patent application based upon the order in which it was filed and is not allowed to advance the application out of turn for examination.1
These same patent rules allow the Applicant of a nonprovisional U.S. patent application to file a petition with the Patent and Trademark Office (PTO) to make their application special, which will allow the Examiner to give priority to the Applicant’s application over other applications.2
Under 37 CFR 1.102 (c), an Applicant can file a petition to make his/her patent application special without fee if the reason is the Applicant’s age or health,3 or if the invention will materially: (1) enhance the quality of the environment; (2) contribute to the development or conservation of energy resources; or (3) contribute to countering terrorism.4 The petition to make special under any of these five reasons does not require payment of the filing fee or priority examination fee normally charged by the PTO when filing a petition to make special for advance examination.5
On August 25, 2006, the PTO made a change to the practice for filing a petition to make a patent application special and provided a procedure for filing a petition for accelerated examination for nonprovisional patent applications.6 The petitions to make special based upon Applicant’s age, Applicant’s health, or participation in the Patent Prosecution Highway (PPH) were excluded from the requirements of the PTO’s Accelerated Examination Program.7
Now, any other petitions to make an application special must meet the requirements of the PTO’s Accelerated Examination Program.8 Also, the Accelerated Examination Program only allows for a petition to make special for nonprovisional utility or design patent applications.9
Under the Accelerated Examination Program, Applicant can still file a petition to make special without the petition filing fee or the priority examination fee if the reason is that the invention will materially (1) enhance the quality of the environment; (2) contribute to the development or conservation of energy resources; or (3) contribute to countering terrorism.10
An Applicant can file a petition to make their application special under the Accelerated Examination Program for other reasons so long as a petition filing fee and a priority examination fee is paid.11
Once an application has been made special and has been advanced out of turn, it will continue to be special throughout its entire course of prosecution in the PTO, including any appeals.12
The PTO’s guideline for Applicants who want to file a petition to make their application special under the Accelerated Examination Program provides the following requirements:
To qualify for the new accelerated examination program, applicant must:
1. Submit the petition and fee (where appropriate) 2. File the request with respect to an application filed under 35 USC 111(a) 3. File the application via the EFS or EFS-Web; also all follow-on submissions 4. File a complete application complying with 37 CFR 1.51 5. File 3 or fewer independent claims and no more than 20 claims total 6. File an application for a single invention or agree to elect without traverse a single invention for examination 7. Agree to an interview with the examiner to discuss any outstanding issues arising in the examination process 8. Conduct a pre-examination search 9. Provide an accelerated examination support document13
As you can see, the requirements for filing a petition to make special under the Accelerated Examination Program may be challenging for some inventions. The goal of the Accelerated Examination Program is to provide patent approval or rejection in 12 months from the time it is filed with the PTO.14 For some applications, the extra work and expense may be worth getting the final disposition of your application quickly.
1. Manual Of Patent Procedure (MPEP) 708 2. 37 CFR 1.102(c) or (d) 3. 37 CRF 1.102(c) 4. 37 CFF 1.102(d) 5. 37 CFR 1.102.(c) 6. Federal Register / Vol. 71, No. 122 / Monday, June 26, 2006 / Notices, page 36323 7. Manual Of Patent Procedure (MPEP) 708.02(a) 8. Manual Of Patent Procedure (MPEP) 708.02(a) 9. Federal Register / Vol. 71, No. 122 / Monday, June 26, 2006 / Notices, page 36323 10. 37 CFF 1.102(c)(2) 11. 37 CFR 1.102(d) 12. Manual Of Patent Procedure (MPEP) 708.01 13.http://www.uspto.gov/sites/default/files/patents/process/file/accelerated/ae_guidelines_20140520.pdf 14. http://www.uspto.gov/patent/initiatives/accelerated-examination#heading-4

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