© 2002, Gallagher & Dawsey Co., LPA
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
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
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
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.