United States Patent And Trademark Office Implements Special Examination Procedure To Receive Action Within Twelve Months

On August 25, 2006, the United States Patent and Trademark Office will implement a major change to the existing Petition to Make Special procedures.  Under the existing procedures, an applicant can request an application be designated as “Special” in certain circumstances in order to accelerate examination.  In one circumstance, the applicant can base the Petition to Make Special on a prior art search by, when filing the application, including only claims to a single invention in the application, indicating that a search was made (by who and where), supplying a copy of the prior art, and providing a detailed discussion of prior art and why claims patentable over the prior art.  Under the revised procedure, applicants filing a Petition to Make Special would further need to file the application electronically, limit the total number of independent claims to three (3), agree to conduct an interview with the Examiner, and most importantly, agree not to argue the patentability of depending claims.  If the Petition is granted, examination would be greatly accelerated such that the complete examination would take place within twelve (12) months.  See generally Federal Register: June 26, 2006 (Volume 71, Number 122) for a complete description. 

While the accelerated examination may be attractive in certain circumstances, it is noted that the applicant must be ready for a greatly compacted examination.  Moreover, applicants would not be able to amend the claims to avoid prior art unless the search encompassed the potential amendment.  Lastly, as was also a drawback to the existing Petition procedure, the statements made in explaining the prior art potentially increase the risk to the enforceability of the resulting patents.  Therefore, applicants need to be wary of the consequences before filing such a Petition.



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