How to Jump-Start your Business Method Cases: Part IV

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:

  1. A petition to make special with fee ($130).
  2. Patent claims to a single invention (avoid a restriction requirement)
  3. 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.)
  4. A copy of each reference deemed most closely related to the subject matter encompassed by the claims; and
  5. 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.


4 thoughts on “How to Jump-Start your Business Method Cases: Part IV

  1. 3

    Patent Consultancy offer services such as prior art search, patent ability search, outsourcing patent drafting, patent drafting, patent analytics, patent search service and other patent services are provided by communicating to TT Consultants in India.

  2. 2

    European Patent Attorneys see numerous incoming business method cases of a non-technical character and sometimes wonder whether these are really worth filing even in their country of origin. European law is said to be more restrictive than US law, but the underlying differences can be overstated. I suspect that there is much irrational exuberance (to quote Alan Greenspan) which accounts for the low grant rate. The relevant examining divisions of the EPO have a similar low grant rate, and in a recent hearing on a European application which just made it into the grantable 10%, the very experienced and computer-literate chairman of the Examining Division commented that one of his major concerns was to allow claims with credible technical character and avoid the EPO becoming a laughing-stock in the computer hardware and software community.

    Business method claims, like other claims, will have a set of features, a set of relationships between the features and hopefully some unexpected new function or result that is original to the inventor and that supports patentability. At least in the UK, the presence or absence of the latter aspect of the claimed subject matter is a strong predictor of whether the patent if granted is likely to survive litigation.

    Very large numbers of applications that I have seen do not even attempt to meet the third requirement. To invoke the patent system, there has to be an element of inventor creativity and I suspect as a practical matter even in the US that creativity has to be in a technical field. The criterion I teach is based on Shannon’s concept of the difference in a message between information and meaning, – see the EPO Appeal Board decision in PHILLIPS and the important BBC TELEVISION SIGNAL decision which was slightly earlier. We should recall that information refers to the technical features of the message. In the case of a TV signal information refers to synchronising pulses, flyback pulses and the like which enable transmitter and receiver to work in synchronism to display a signal. Content refers to the part of the signal that displays the picture. If all your novel disclosure is on the content side (in the case of a business method the business administration and accounting details) and there is no advance in terms of how the method is implemented from a technical standpoint, then it is legitimate to question whether even if an examiner has granted the case the necessary technical evidence to support patentability would be forthcoming during litigation.

    It is important for the patent attorney to know the prior art relevant to the cases he writes, and to include technical detail supporting the new and original discoveries of the inventor. If he or she does that, then there are grounds for optimism about the outcome even if the application has tgo wait in the Examiner’s in-tray.

    Paul Cole
    European Patent Attorney

  3. 1

    What to do about long pendency times for FS patents

    Dennis Crouch on his excellent blog discusses the long pending times for financial services patents, and business method patents in general in a five part series. One of his recommendations is to consider filing a Petition to Make Special. This could…

Comments are closed.