Financial services business method patent applications have an unusually long pendency. There are many cases where applications have been on file at the PTO for 4+ years without receiving any substantive response from the Office.
John Love is the director of the technology department at the PTO that handles financial services business method patents. Last week, Director Love indicated that the current pendency to first action is about 36 months, while pendency to issue/abandonment is 42 months. For many, 42 months is a long time to wait for a patent. In the area of on-line financial transactions, this time-lag is greater than the half-life of an invention’s usefulness.
The key to reducing pendency time for your applications is likely to reduce the time to the first office action. One great way to do this is by filing your application along with a petition to make special.
Petition to Make Special is a useful tool for advancing the examination your patent application. According to Director Love,
"a petition to make special is an excellent way to shorten the time to first office action."
Once the application has been processed and sent to his department, Love indicates that they normally act on the case within three to six months. Thus, if you follow the procedures correctly, you may cut several years off of the prosecution time!
There are several grounds for filing a petition to make special. Two that may be most useful in your case are (i) actual infringement of the patent claims, or (ii) completion and analysis of a prior art search.
Director Love admitted that the petitions have a tendency of getting lost in the file. Because of this issue, I would recommend the following proactive procedure for your petition to make special:
- File the application without the petition.
- Soon after you receive the serial number for the patent application, call the technology group Special Program Examiner (SPRE) to discuss the petition and let him know that it is on its way. It is often the SPRE that decides whether to allow the petition, and because timing is critical, you don’t want to have to appeal his decision.
- File the petition by Fax.
- Follow up with a phone call to the SPRE in a month to ensure that the petition is being decided.
Employing this procedure can ensure that your petition is handled properly and may quickly lead to an issued patent.
NOTE: Each case I handle is a little different from the last — So, don’t blindly follow the rules outlined here.
UPDATE I: SPE changed to SPRE
UPDATE II: A long-time patent examiner gave a few more pointers. First, the SPRE does not usually not appreciate receiving status-update telephone calls on every petition to make special — "20-25 calls a day eats up a lot of the SPRE’s time." He would recommend using PAIR for status checks rather than calling. In addition, the Examiners are under a serious time crunch — they do not always appreciate another case being thrown on the "do this one first pile."