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"Make Special" for Faster Patent Prosecution

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© 2002, Gallagher & Dawsey Co., LPA
February 2002

With patent examination routinely taking more than a year, a little known PTO procedure offers the prospect of shaving considerable time from the process. Congress and the PTO has recognized that public interest in certain inventions, and certain inventors, deserves expedited handling.

Under certain conditions, an inventor can petition for an application to be "made special," and advanced out of turn on the PTO calendar. Generally, the conditions governing making special fall into two general categories, those that relate to particular areas of invention, or to some special status of the inventor.

Within the particular areas of invention, some command a more preferred status than others. For example, PTO guidelines state that articles ready for manufacture, inventions already under active infringement, biotechnology inventions by small entities, and certain applications directed to a single invention, "may" be made special on petition to the PTO. Others inventions have an even more preferred status, namely those relating to environmental quality, energy, recombinant DNA, superconductivity, HIV/AIDS, and counter-terrorism inventions, which "will" be accorded special status. This last provision is coming into greater interest with the rise in the number of security related applications since last September's terrorist attacks. The counter terrorism invention category is particularly broad, covering inventions designed to counter international terrorism is nearly all forms, including "violent acts or acts dangerous to human life" that would be a violation of any federal or state criminal law.

Certain inventors qualify for special status. The guidelines provide for special status upon petition by an applicant who is 65 years or more old, or one whose state of health is such as to threaten an orderly prosecution through regular channels.

Good news for the inventor is that "make special" applications based on the age or health of the inventor carry no extra filing fees. Those applications based on the nature of the invention, unfortunately, do not have a consistent fee structure. Certain inventions, such as those relating to environmental quality, energy, and superconductivity are currently processed without fee. On the other hand, those relating to the other areas discussed above currently carry a $130 fee under CFR 1.17(i). As with all PTO activities, these fees and procedures may change, so contact your patent practitioner for the latest instructions.

Applications to make special are granted only on petition, and must be in writing and identify the application by application number and filing date. The Special Program Examiner of the patent examining group for the application in question decides those "make special" petitions where the PTO has discretion to grant or not grant the petition, that is, those indicated by "may," rather than "will," language in the guidelines.

© 2006 Gallagher & Dawsey Co., L.P.A. - Cincinnati, Columbus, Dayton, Ohio

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