How to Accelerate Examination of your Patent Application

The United States Patent Office prioritizes certain application types. The USPTO’s priorities are manifest in its “Petition to Make Special” program, which will be described in this post. The Petition to Make Special is a program that allows patent applicants to get special status and skip ahead of other applications waiting in line–the result being that the “special” application can issue as a patent much quicker than it otherwise would.

Normally, when a patent application is assigned to a USPTO examiner, it is placed at the back of the line, and will only be examined after all preceding applications have been examined first. If a patent application is “made special,” it essentially bypasses the other applications so it can be examined sooner.

Conditions to be Made Special

The relevant laws provide that if certain conditions are met, a patent application will be made special–and no fee is required from the patent applicant. Under other specific conditions, the application could still be made special, but the applicant would be required to pay a fee.

No Fee Required

The following types of conditions will allow the applicant to petition to make special without needing to pay the fee:

  • The applicant is 65 years of age or more;
  • The applicant has failing health (i.e., might not be available to assist in the prosecution of the application if it were to run its normal course);
  • The invention will materially enhance the quality of the environment;
  • The invention will materially contribute to the development or conservation of energy resources;
  • The invention is directed to superconductive materials themselves as well as to their manufacture and application; or
  • The invention will materially contribute to countering terrorism.

Fee Required

Under the following circumstances, the applicant may petition to make special but would be required to pay a fee (as of the date of this post, this fee is $130):

  • The invention relates to recombinant DNA research (due to the “extraordinary potential benefit for mankind”);
  • The invention contributes to the diagnosis, treatment or prevention of HIV/AIDS or cancer;
  • The applicant has a prospective manufacturer that is prepare to begin manufacturing the invention but will not manufacture, or will not increase present manufacture, unless certain that the patent will be granted;
  • There is an infringing device or product actually on the market; or
  • The invention relates to biotechnology applications and the applicant qualifies for small entity status.

How and When to File a Petition to Make Special

To file a petition to make special, a patent applicant fills out a simple form and files it with the USPTO for the corresponding application. Any fee and supporting documents, if required, are filed at the same time. The petition to make special can be filed electronically through the USPTO’s Electronic Filing System.

A petition to make special may be filed at any time. Generally, it is advantageous to file it when the application is first filed (or soon after) since the whole point is to speed up the application process, and the application process will not be accelerated until after the petition is filed.

Statistics Regarding Special Applications

The USPTO has a goal of reaching final disposition of the patent application within one year of filing. Past data show that on average, applications made special are first examined roughly 4 months after the filing date. (Compare this number to an average of about 28 months for non-special applications.)

According to data provided by the USPTO, approximately 60% of petitions to make special are granted. The USPTO generally grants or denies a petition within two months after it is filed.

Other Ways to Speed Up the Application Process

The USPTO previously accepted patent applications claiming certain environmentally-friendly technologies into its Green Technology Pilot Program, which gave special priority to those applications. However, the USPTO has now reached its quota and is no longer accepting petitions under this pilot program. It remains to be seen when (or if) the USPTO will bring back the Green Technology Program.