With the increasing number of patent application filings, it is not surprising to learn that the United States Patent & Trademark Office (USPTO) is increasingly overburdened. Each year it takes longer for an applicant to receive an action on the merits (e.g., a substantive action addressing patentability issues), as well as obtain final disposition (e.g., final rejection, allowance, abandonment) of a case from the USPTO.

Consequently, expediting a patent application through the USPTO is becoming more desirable for those seeking faster determinations of their matters. This article discusses generally the requirements for a grantable petition to make a patent application special, and pays particular attention to the new one-year accelerated examination program available to patent applicants as of August 25, 2006.

Pendency Generally

According to USPTO statistics (Fiscal Year 2005), the average time until the disposition of a utility patent application is about 2 ½ years. However, as expected, patent applications directed towards inventions involving more popular technologies have longer wait times. For example, patent applications directed at electronic commerce take three (3) years before the first action on the merits is received. For computer security, the wait is thirty-nine (39) months.

On July 19, 2005, John Doll, Acting Commissioner of Patents, presented statistics to the National Association of Patent Practitioners, providing examples of the average time until a first action on the merits is received. Commissioner Doll listed the following statistics:

  • Medical Instruments (3731) and Diagnostic Equipment (3737) at 46-54 months;
  • Business Methods (3620) at 34-106 months;
  • Control Circuits (2836) at 44 months;
  • Interactive Video Distribution (2611) at 72 months;
  • Computer Task Management at 62 months; and
  • Drugs (1614), Bio-affecting (1615) and Body Treatment (1617) at 47 to 53 months.
General Petitions to Make Special

Generally, U.S. patent applications are examined in the order of their effective U.S. filing date. However, a patent application may be advanced out of turn for examination if a petition to make the patent application special [37 CFR 1.102(c) or (d); MPEP 708.02] is filed and granted. In some cases, a petition to make special may be filed without the petition fee (e.g., 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). All other petitions require payment of the petition fee, which currently is $130.00. A list and short explanation of general grantable petitions follow:

  • Applicant's Age—An application may be made special upon showing that the applicant is 65 years of age or older. No petition fee is required.
  • Applicant's Health—An application may be made special upon showing that the state of applicant's health is such that he or she might not be able to assist in the prosecution of the application if it were to follow routine procedures. No petition fee is required.
  • Environmental Quality—An application may be made special upon showing that the invention will materially enhance the quality of the environment of mankind by contributing to the restoration or maintenance of the basic life-sustaining natural elements, i.e., air, water, and soil. No petition fee is required.
  • Energy—An application may be made special upon showing that the invention will materially contribute to the discovery or development of energy resources, e.g., fossil fuels (natural gas, coal, and petroleum), nuclear energy, solar energy, etc. or the more efficient utilization and conservation of energy resources, e.g., developments relating to the reduction of energy consumption in combustion systems, industrial equipment, household appliances, etc. No petition fee is required.
  • Superconductivity—An application may be made special upon showing that the invention involves superconductivity materials, including those directed to superconductive materials themselves as well as to their manufacture and application. No petition fee is required.
  • Recombinant DNA—An application may be made special upon showing that the invention relates to recombinant DNA research. Recombinant DNA research appears to have extraordinary potential benefit for mankind. Recombinant DNA research might lead to controlling or treating cancer and hereditary defects, and has possible applications in agriculture and industry. At the same time, concern has been expressed over the safety of this research. A petition fee must be paid.
  • HIV/AIDS and Cancer—An application may be made special upon showing that the invention relates to the diagnosis, treatment or prevention of HIV/AIDS and cancer. A petition fee is required.
  • Countering Terrorism—An application will be made special upon showing that the invention relates to counter-terrorism (e.g., systems for detecting/identifying explosives, aircraft sensors/security systems, and vehicular barricades/disabling systems). A petition fee is required.
  • Biotechnology (Small Entity Applicant Only)—An application may be made special upon showing that the applicant is a small entity, that the invention relates to developments in biotechnology, that the subject of the patent application is a major asset of the small entity, and that development of the technology will be significantly impaired if examination of the patent application is delayed. A petition fee is required.
  • Manufacture—An application may be made special upon showing (A) possession by a prospective manufacturer of sufficient capital and facilities to manufacture the invention in quantity or that sufficient capital and facilities will be made available if a patent is granted; (B) that the prospective manufacturer will not manufacture, or will not increase present manufacture, unless certain that the patent will be granted; (C) that the prospective manufacturer obligates himself, herself or itself to manufacture the invention in the U.S. or its possessions, in quantity immediately upon the allowance of claims or issuance of a patent which will protect the investment of capital and facilities; and (D) that the applicant or assignee has made or caused to be made a careful and thorough search of the prior art, or has a good knowledge of the pertinent prior art. A petition fee is required.
  • Infringement—An application may be made special upon showing (A) that there is an infringing device or product actually on the market or method in use (not prospective infringement); (B) that a rigid comparison of the alleged infringing device, product, or method with the claims of the application has been made, and that, in his or her opinion, some of the claims are unquestionably infringed; and (C) that he or she has made or caused to be made a careful and thorough search of the prior art or has a good knowledge of the pertinent prior art. A petition fee is required.
The New One-Year Accelerated Examination Program

As of August 25, 2006, the USPTO put into effect a new accelerated examination procedure for the disposition of patent applications within a one-year time period. The USPTO deems the one-year goal successfully achieved upon (1) the mailing of a notice of allowance; (2) the mailing of a final office action; (3) the filing of a Request for Continued Examination (RCE); or (4) the abandonment of the application. However, any failure to meet the one-year goal is neither petitionable nor appealable.

Eligibility for the Program. Any non-reissue utility or design application filed under 35 U.S.C. 111(a) on or after the August 25, 2006 is eligible for the revised accelerated examination program. The following types of filings are ineligible for the accelerated examination program:

  • Plant applications;
  • Reissue applications;
  • Applications entering the national stage from an international application after compliance with 35 U.S.C. 371;
  • Reexamination proceedings;
  • RCEs under 37 CFR 1.114 (unless the application was previously granted special Status under the program); and
  • Petitions to make special based on applicant's health or age or under the Patent Prosecution Highway (PPH) pilot program.

Filing Requirements. To obtain "special" status under the new one-year accelerated examination program, the United States Patent & Trademark Office requires that:

  1. The application is filed with a petition to make special under the accelerated examination program with either the petition fee or a statement that the claimed subject matter is directed to environmental quality, energy, or countering terrorism.

  2. The application is a non-reissue utility or design application filed under 35 U.S.C. 111(a).

  3. The application, petition, and required fees are filed electronically using the USPTO's electronic filing system (EFS), or EFS-Web;

  4. At the time of filing, the application is complete (37 CFR 1.51) and in condition for examination. To be complete, the application must be filed with the basic filing fee, the search fee, the examination fee, the application size fee (if applicable), the executed oath or declaration under 37 CFR 1.63, all proper domestic/foreign priority claims, proper translations and translation certifications, no preliminary amendments, and no petition for a non-signing inventor.

  5. The application contains three or fewer independent claims and twenty or fewer total claims, no multiple dependent claims, and a statement to that effect.

  6. The claims must be directed to a single invention. If the USPTO determines that all the claims presented are not directed to a single invention, applicant must make an election without traverse in a telephonic interview. The petition must include a statement to that effect.

  7. The applicant must be willing to have an interview (including an interview before a first office action) to discuss the prior art and any potential rejections or objections with the intention of clarifying and possibly resolving all issues with respect to patentability at that time when requested by the examiner. The petition must include a statement to that effect.

  8. At the time of filing, applicant must provide a statement that a preexamination search was conducted, including an identification of the field of search by U.S. class and subclass and the date of the search, where applicable, and for database searches, the search logic or chemical structure or sequence used as a query, the name of the file or files searched and the database service, and the date of the search.
    • The preexamination search must involve a search of U.S. patents and patent application publications, foreign patent documents, and non-patent literature, unless the applicant can justify with reasonable certainty that no references more pertinent than those already identified are likely to be found in the eliminated source and includes justification.

    • The preexamination search must be directed to the claimed invention and must encompass all features of the claims, giving the claims the broadest reasonable interpretation.

    • The preexamination search must encompass the disclosed features that may be claimed. An amendment to the claims (including any new claim) that is not encompassed by the preexamination search or an updated accelerated examination support document will be treated as not fully responsive and will not be entered.

    • A search report from a foreign patent office will not satisfy this preexamination search requirement unless the search report satisfies the requirements set forth in this notice for a preexamination search.

    • Any statement in support of a petition to make special must be based on a good faith belief that the preexamination search was conducted in compliance with these requirements.
  1. At the time of filing, applicant must provide an accelerated examination support document, including as follows:
    • An information disclosure statement (IDS) citing each reference deemed most closely related to the subject matter of each of the claims;

    • For each reference cited, an identification of all limitations in the claims disclosed by the reference and specifying where the limitation is disclosed in the cited reference;

    • A detailed explanation of how each claim is patentable over the references cited with particularity as required by 37 CFR 1.111(b) and (c);

    • A concise statement of the utility of the invention as defined in each of the independent claims (unless the application is a design application);

    • A showing where each limitation of the claims finds support in the written description of the specification. If applicable, the showing must identify (1) each means- (or step-) plus-function claim element that invokes consideration under 35 U.S.C. 112 paragraph 6; and (2) the structure, material, or acts in the specification that correspond to each means- (or step-) plus-function claim element that invokes consideration under 35 U.S.C. 112 paragraph 6. If the application claims the benefit of one or more parent applications, the showing must also include where each limitation of the claims finds support in each parent application in which such support exists;

    • Any cited references that may be disqualified as prior art under 35 U.S.C. 103(c) as amended by the Cooperative Research and Technology Enhancement (CREATE) Act (Pub. L. 108-453, 118 Stat. 3596 (2004)).
Prosecution of Accelerated Application
  • Pre-examination Review. Once a patent application is granted special status under the one-year accelerated examination program, the application will be docketed and taken up for action expeditiously (e.g., within two weeks of the granting of special status).? If it is determined that all claims presented are not directed to a single invention, telephone restriction practice will be followed. The applicant must make an election without traverse during a telephonic interview. If the applicant refuses to make an election without traverse, or the examiner cannot reach the applicant after a reasonable effort, the examiner will treat the first claimed invention (the invention of claim 1) as constructively elected without traverse for examination.
  • Substantive Review. If the USPTO determines that a possible rejection or other issue must be addressed, the examiner will telephone the applicant to discuss the issue and any possible amendment or submission to resolve such issue. The USPTO will not issue an office action (other than a notice of allowance) unless either (1) an interview was conducted but did not result in the application being placed in condition for allowance; or (2) there is a determination that an interview is unlikely to result in the application being placed in condition for allowance. Further, prior to the mailing of any office action rejecting the claims, the USPTO will conduct a conference to review the rejections set forth in the office action.

    If an office action other than a notice of allowance or a final office action is mailed, the office action will set a shortened statutory period of one-month or thirty-days, whichever is longer. No extensions of this shortened statutory period under 37 CFR 1.136(a) will be permitted. Failure to timely file a reply will result in abandonment of the application.
  • Office Action Responses. A reply to an office action must be limited to the rejections, objections, and requirements made. Any amendment that attempts to (1) add claims which would result in more than three independent claims, or more than twenty total claims, pending in the application; (2) present claims not encompassed by the preexamination search or an updated accelerated examination support document; or (3) present claims directed to a nonelected invention or an invention other than previously claimed in the application, will be treated as not fully responsive and will not be entered.

    For any amendment to the claims (including any new claim) that is not encompassed by the accelerated examination support document, applicant is required to provide an updated accelerated examination support document that encompasses the amended or new claims at the time of filing the amendment. Failure to provide an updated accelerated examination support document at the time of filing the amendment will cause the amendment to be treated as not fully responsive and not to be entered. Any Information Disclosure Statement (IDS) filed with an updated accelerated examination support document must also comply with the requirements of 37 CFR 1.97 and 1.98.

    Any reply or other papers must be filed electronically via EFS-Web. If the papers are not filed electronically via EFS-Web, or the reply is not fully responsive, the final disposition of the application may occur later than one-year from the filing of the application.

Final Disposition. The mailing of a notice of allowance is the final disposition for purposes of the one-year goal of the program. In response to a notice of allowance, the applicant must pay the issue fee within three (3) months from the date of its mailing to avoid abandonment. In order for the application to be expeditiously issued as a patent, the applicant must also (1) pay the issue fee (and any outstanding fees due) within one month from the mailing date; and (2) not file any post-allowance papers that are not required by the USPTO (e.g., an amendment under 37 CFR 1.312 that was not requested).

The mailing of a final office action or the filing of a notice of appeal, whichever is earlier, is the final disposition for purposes of the one-year goal of the program. Prior to the mailing of a final office action, the USPTO will conduct a conference to review the rejections set forth in the final office action (i.e., the type of conference conducted in an application on appeal when the applicant requests a pre-appeal brief conference). In order for the application to be expeditiously forwarded to the Board of Patent Appeals and Interferences (BPAI) for a decision, the applicant must (1) promptly file the notice of appeal, appeal brief, and appeal fees; and (2) not request a pre-appeal brief conference. During the appeal process, the application will be treated in accordance with the normal appeal procedures. The USPTO will continue to treat the application special under the accelerated examination program after a decision by the BPAI.

The filing of the RCE is a final disposition for purposes of the one-year goal of the program. The application will retain its special status and remain in the accelerated examination program. The goal of the program will be to reach final disposition of the application within one-year from the filing of the RCE.

If an application becomes involved in proceedings outside the normal examination process (e.g., a secrecy order, national security review, interference, or petitions under 37 CFR 1.181-1.183), the USPTO will treat the application special under the accelerated examination program before and after such proceedings. During those proceedings, however, the application will not be accelerated.

Risk versus Reward. Indeed, the one-year accelerated examination program requires, among other things, time, effort and expense. One must conduct a thorough search, judiciously review the references located, and identify the specific language in the references that describe components of the invention claimed and potentially claimed. In addition to the cost of the prior art search, thorough review of the references and itemization of the relevant passages can also be expensive. Further, one must state how the claimed invention is different from the prior art discovered. The USPTO or a competitor in a future negotiation or litigation may use the applicant's own words as an admission or as prosecution history estoppel, and may therefore put the scope of patent coverage at risk. Thus, before filing a petition to make an application special for the one-year accelerated examination program, a patent applicant should balance the cost and risk on patent scope against the reward of quick disposition by the patent office.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.