Patent Tip of the Week
Posted by Douglas Sorocco, May 11, 2005 at 11:22 am
I recently got an interesting question regarding special treatment for older inventors. The question was directed to reduced filing fees in the patent office. While I found no such discount, my studies for the Patent Bar did come flooding back and reminded me of a different kind of special treatment for older inventors. According to the Manual for Patent Examining Procedure (MPEP) ยง 708.02, there are several different situations where a patent may be examined more quickly. The procedure for asking for this special treatment is called a Petition to Make Special.
- Manufacture (fee required) - If you have the ability to manufacture the invention, but are waiting on a patent before starting.
- Infringement (fee required) - If someone is already infringing your invention.
- Applicant's Health (FREE) - If you would be unable to assist in the full-length patenting process due to medical problems.
- Applicant's Age (FREE) - If you're 65 years of age.
- Environmental Quality (FREE) - If your invention will enhance the quality of the environment.
- Energy (FREE) - If your invention is a new energy resource, or deals with a more efficient use or conservation of energy.
- Recombinant DNA (fee required) - If your invention involves recombinant DNA.
- Superconductivity (FREE) - If your invention involves superconductivity technologies.
- HIV/AIDS and Cancer (fee required) - If your invention treats or cures HIV/AIDS or cancer.
- Countering Terrorism (newly FREE) - If your invention counters terrorism.
- Biotechnology (fee required) - If you are a small entity, and your invention relates to biotechnology.
As patent examination time creeps past 2 years, a "Petition to Make Special" may be useful. Currently, the fee is $130. However, as noted above, several categories require no fee at all.
If you're really in a hurry, check out the previous PHOSITA post, Patent Rights in Under a Month?
Comments
Melody:
The biggest problems with Petitions to Make Special is with the required search. If the patent is issued based on your search, there is always the fear of being nailed with inequitable conduct if you happen to overlook one paragraph hidden deep in one of the hundreds of patents you were supposed to read.
Based on this alone, I never recommend doing a petition that requires the search.
Great tip Doug. The old joke, of course, was that the Petition got hung up in the Petitions brach so long that it actually ended up taking longer than if the Petition had not beet filed. I haven't had any experience with them lately, so I cannot comment on the Office's efficiency in these matters.
Another thing to note. Last year, the Patent Office actually issued a final rule that moves the "countering terrorism" petitions into the free category. See this prior PTP post for more info. The change went into effect on October 21, 2004.
To qualify, the invention must materially contribute to countering terrorism. The rule change hasn't made its way into the CFR or the MPEP yet, but the Patent Office has promised that the "material aspect" of the new rule will be further addressed in an MPEP revision. You can see the discussion on this rule change on p. 31 of this .pdf file (69 Fed Reg 56511, 9-21-04).