On August 25, 2006, the PTO is implementing a new strict practice regarding petitions for accelerated examination (AKA “petitions to make special”). [information here]. The new requirements require, inter alia, that the patent application be filed electronically along with the petition. As a Patently-O reader recently discovered, this appears to rule-out filing a petition based on later-discovered infringement.
As a prosecution tip, the way to overcome this difficulty is to electronically file a continuation application along with the petition to make special as soon as the infringement is discovered (and the appropriate search is analyzed). As has been mentioned before, the new rules and restrictions associated with accelerated examination can dramatically increase up-front costs to the client, and they have some potential for loss of rights for your client.
Note: Jim Hawes and I are just now completing the August 2006 updates for Patent Application Practice (West). The book serves as a single volume daily reference guide for patent practitioners and includes the basics as well as practical tips and advice. Jim & I keep it up-to-date with twice-yearly updates. (Link).
“I have one case pending which is “special” … I haven’t noticed that the pace is any faster than my other non-special cases (some of which move faster than others).”
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The USPTO docketing may be FU’ed. You need to call the SPE and ask if the case is properly docketed as special. These days you need to babysit EVERYTHING!
“I’m not sure how marking a case “special” speeds things up. No one at the patent office is held accountable (I even asked if the had any internal auditor or inspector general that I could complain to; the answer was no).”
Indeed. An Examiner told me last week that his group (biotech) has instructions to get through some backlog of regular old applications and he doesn’t really care about the one “special” application in his pile.
As far as he is concerned, he said, “They’re all equally ‘special’.”
I have one case pending which is “special” and while the first OA came a bit quicker than some other cases (month or two) I haven’t noticed that the pace is any faster than my other non-special cases (some of which move faster than others).
I’m not sure how marking a case “special” speeds things up. No one at the patent office is held accountable (I even asked if the had any internal auditor or inspector general that I could complain to; the answer was no). I have a reissue that has been working through the PTO for eight years, since AUG 17, 1998. The case was supposed to be “expedited and special”. Now I know why the judge presiding over the Blackberry and NTP case did not want to wait on the PTO before making a decision in that case.I should have used NTP’s strategy (fighting out enforcement in court) vice trusting the PTO.
This is a hatchet job to kill off petitions to make special. I predict a record number will be filed on the 24th!
It’s administered by Pinchus Laufer, who I always thought was a friendly and helpful sort of guy, but I don’t imagine it was his idea.
The only exceptions (i.e. where the old rules will still apply) are health or age of the applicant and the ‘PPH Pilot Program’ (excuse my ignorance, but I’ve never heard of that one). It’s a pity you can’t use the age of the assignee!
It appears to me that as you always could use a search as a ground, then if all the other grounds will now need a search they are effectively eliminated, or am I missing something?
The other commentators have not yet touched on numerous other onerous and potentially fatal requirements that will make this practice de facto unusable. E.g.:
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*”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 (see item 8 of Part I) or an updated accelerated examination support document (see next paragraph); or (3) present claims that are 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. See Part VIII (subsection Reply Not Fully responsive) for more information.
For any amendment to the claims (including any new claim) that is not encompassed by the accelerated examination support document in Part I, item 9, applicant is required to provide an updated accelerated examination.”
I don’t read the new proposition on “expedited examination” as so limiting with respect to the “Special Status”. I read this as an alternative to when you can’t satisfy one of the other requirements; i.e. age, infringement, energy saving, etc.
Although the “special status” means “expediated examination”, my experience has been that special status, more than anything, frustates prosectution. That is, the Examiners, in a effort to rush the prosecution, absurdly apply the provisions of the MPEP.
Another irritating rub is the caveat of the pre-restriction election without traverse caveat. Assumably we all know how accurate the Office’s restriction practice is. Expedited examination requires a pre-restriction acquiesnce to any restriction. A nice little rub for the Examiner to get rid of the pesky concept of alternate embodiments and independent claim claim differentiation. Additionally, any restricted claims are not ipso facto special in a subsequent application; i.e. generation of an additional petition to ensure expedited prosection. Bottom line, lot of buck for little bang.
To me, this new procedure is the USPTO’s way of killing petitions to make special. Perhaps too many people were submitting sucessful petitions and they decided that it was requiring the timely handling of too many patent applications?
The new procedures guarantee that examination of an application made special will be completed (i.e., final office action or notice of allowance issued) within 12 months of filing. However, the requirements for a grantable petition are so onerous that I doubt any of my clients will want to spend the money or waive its rights to the extent needed in order to use the procedure.
For those not aware of the new procedures, the “lowlights” are:
1. The petition and application must be filed electronically.
2. The petition must be in condition for examination upon filing. That is, no missing parts, fees, etc.
3. Maximum of 3 independent and 20 total claims.
4. The applicant must include a statement that he “will not separately argue the patentability of any dependent claim during any patent appeal in the application.” This is very poorly written but I read this as meaning that the PTO will only examine independent claims and that you cannot overcome any rejections on appeal by arguing that elements in dependent claims overcome the grounds for rejection. This is a deal-breaker for me especially in view of the 3 independent claim limit.
5. A pre-filing search must be done by the applicant. The search must include not only U.S. patents and applications but also “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.” This means that a standard patentability opinion search is not sufficient for a petition to make special. Not a deal-breaker but definitely a bank-breaker for the client.
6. Office action responses will have a shortened statutory period for a response of one month. No extensions, no exceptions. Failure to respond within the month results in the application being abandoned, not merely losing its special status. This is also probably a deal-breaker.
7. There is no way to withdraw from special status. Once you commit to it you are bound by the special rules.
Your advice to file a continuation application, like the USPTO’s suggested way to withdraw an application that was granted accelerated examination, is very short-sighted and ignores the inevitable rules the USPTO will impose on limiting continuations.
Will complying with the rules to make special because of later infringement be good cause for a second or subsequent continuation? What about for withdrawl of accelerated examination?
What happens if this new continuation application is the first one as a matter of right? Is it worthwhile to give up on other continuation applications for which you may not have as compelling a reason for?