Patent Q & A

Question: Is there anyway I can speed up the process for getting a patent?

Disclaimer:The answer below is a discussion of typical practices and is not to be construed as legal advice of any kind. Readers are encouraged to consult with qualified counsel to answer their personal legal questions.

Answer: Yes, It’s called a Petition to Make Special (PTMS)

Details: "You know", said John Love, "I don’t know why more inventors don’t use the Petition to Make Special. It would really speed up the examination of their applications." John was the director of art unit 3600 at the USPTO at the time. Art unit 3600 includes business methods. I was chatting with him as we were walking down the hall of the patent office about the problem of unusually long delays in getting business method patents examined. With the step increase in business method filings after the State Street Bank decision in 1998, the heightened scrutiny that the patent office was giving to business method patents and the ongoing challenges of hiring and training qualified patent examiners in this area, delays in getting an examiner to look at an application (i.e. issue a first office action) had stretched out to over four years. John reminded me, however, of an option that all patent agents and attorneys should know about, the Petition to Make Special. In essence, anyone can have their application examined early if they submit a petition that meets certain criteria.

A Petition to Make Special is a formal request submitted to the patent office asking that your patent application be examined ahead of the other pending applications in the same technological art. Normally patent applications in a given technological art are examined in the order that they are filed in. First come, first served. The patent office has realized, however, that some inventions deserve special attention and that patent applications covering these inventions should be examined as quickly as possible. If your invention falls into one of the special categories, you can petition to have it examined early.

Some of these categories are related to the benefits of the invention. If your invention is related to countering terrorism, energy conservation or improvements in environmental quality, for example, it qualifies for special status.

Some of these categories are related to the status of the inventor. If one of the inventors is over the age of 65 or in very poor health, the patent application qualifies for special status.

Some of these categories are related to the commercial status of your invention. If your invention is being actively infringed, or if you can show that an issued patent is required in order for you to start manufacturing your invention, then your patent application may qualify for special status.

There is a final category that almost any invention can qualify for. This is a Petition to Make Special for Accelerated Examination. This is the category that is most relevant to business method inventions, including those in the insurance industry.

A PTMS for Accelerated Examination is granted if the applicant (e.g. the inventor) is willing to perform a substantial amount of the work of examining their own application. The applicant must, for example, have an independent qualified third party perform a prior art search using the same standards that the patent office uses. The applicant must also submit an analysis of the prior art showing why their invention is allowable despite what is taught by the prior art. The costs of the search and analysis are significant and there are some risks involved (be sure to discuss these with your patent agent/attorney), but experience has shown that a PTMS for Accelerated Examination can cut the time to get a patent to issue in the business method area from more than 5 years to less than 2. We’ve seen first office actions issued in as little as 6 months from the filing date of the application and notices of allowable subject matter in just over a year.

Inventors can get relatively fast action on their business method patent applications if they qualify for a Petition to Make Special. First see of your patent application falls into one of the categories reserved for special treatment, such as an anti-terrorist invention, an application where one of the inventors is over the age of 65, or an invention that is actively being infringed. If it doesn’t fall into one of the categories for special treatment, then consider a PTMS for Accelerated Examination. Be sure, however, to discuss the costs and risks with your patent agent/attorney. If your petition is accepted and all goes well in the examination, you can get a business method patent to issue in much less time than would otherwise be expected.