Petition to make special
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In United States patent law, a petition to make special (PTMS) is a formal request submitted to the United States Patent and Trademark Office (USPTO) asking that a patent application be examined ahead of the other pending applications in the same technological art.
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[edit] Background and rationale
Normally patent applications in a given technological art are examined in the order that they are filed in under the "first come, first served" principle. 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 an invention falls into one of the special categories, the applicant (e.g. inventor) can petition to have it examined early.
[edit] Categories
Some of these categories are related to the benefits of the invention. If an invention is related to countering terrorism, energy conservation or improvements in environmental quality, for example, it qualifies for special status.
Some 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 categories are related to the commercial status of the invention. If an invention is being actively infringed, or if the applicant can show that an issued patent is required in order to start manufacturing the invention, then the 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". A "petition to make special for accelerated examination" is granted if the applicant is willing to perform a substantial amount of the work of examining his/her 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 his/her invention is allowable despite what is taught by the prior art.
[edit] Petitions to make special and business methods
Petitions to make special are particularly important for timely examination of business method patents. Projected delays in examination of business method patents range from 4 to 14 years [1]. This is primarily due to the step change in business method filings after the 1998 State Street Bank decision combined with the difficulty in hiring and training qualified patent examiners in the financial services arts. (e.g. insurance, banking, etc.)
It is reported [2] 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. First office actions can issue in as little as 6 months from the filing date of the application and notices of allowable subject matter have issued in just over a year.
