In part III, I introduced the concept of a petition to make special as one of the best ways to decrease pendency of your patent application. The petition to make special allows the Patent Office to examine your application out of turn and on an expedited basis.
Normally, during examination, the Patent Office is relied upon to perform a search and analysis of the prior art. However, the Office offers rapid examination through the petition to make special if the patent applicant performs the search himself.
MPEP 708.02 provides the rules for filing the petition to make special based on prior art search by the applicant. Specifically, the applicant must submit the following:
- A petition to make special with fee ($130).
- Patent claims to a single invention (avoid a restriction requirement)
- A statement that a pre-examination search was made listing (i) field of search by class and subclass, publication, chemical abstracts, foreign patents, etc. Note — the search must be directed at the claimed invention. (A search made by a foreign patent office satisfies this requirement if the claims in the corresponding foreign application are of the same or similar scope to the claims in the U.S. application for which special status is requested.)
- A copy of each reference deemed most closely related to the subject matter encompassed by the claims; and
- A detailed discussion of the references, which points out with particularity, how the claimed subject matter is patentable over the references. A general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references is not sufficient.
If your petition to make special is deficient, you will be given one opportunity to perfect the request. However, that would cause a delay — something your are trying to avoid.
Comments: The petition to make special comes with some risks. Specifically, that of inequitable conduct if (i) the search was not done properly or (ii) the references were mischaracterized. To avoid this, I would recommend relying upon an external search firm to perform the search. In addition, the inventor should be thoroughly questioned to ensure that all prior art that he is aware of has been presented. Care should be taken to avoid mischaracterizing the references — if you cannot properly distinguish the prior art then it may be better to not file a patent application.