Expediting patent examination - petition to make special

[chris12m20]

What is the name of your state? CA

Hello!

I have a pending business method patent (non-provisional) application but I heard there are a long backlog for this type of application.
I understand there are a few cases where you can make the application special but none of those applies to my application. I also read from other website (http://patentlaw.typepad.com/patent/2005/01/how_to_jumpstar_2.html)
saying if you can hire some professional to do a prior art search for the USPTO then they will proceed for further examination, essentially expediting the process. But then another attorney told me that was in the past and USPTO recently change the requirement so prior art search will not help. Can someone illustrate a bit for me please?

Thanks a lot!

 

[divgradcurl]

What is the name of your state? CA

Hello!

I have a pending business method patent (non-provisional) application but I heard there are a long backlog for this type of application.
I understand there are a few cases where you can make the application special but none of those applies to my application. I also read from other website (http://patentlaw.typepad.com/patent/2005/01/how_to_jumpstar_2.html)
saying if you can hire some professional to do a prior art search for the USPTO then they will proceed for further examination, essentially expediting the process. But then another attorney told me that was in the past and USPTO recently change the requirement so prior art search will not help. Can someone illustrate a bit for me please?

Thanks a lot!

The petition to make special is essentially irrelevant these days, there just isn't any way to really rush an application through. Even when you DO meet the requirements for a petition to make special, it doesn't singificant;y impact the time it takes to get the patent prosecuted -- there is just too much backlog these days, and the petition to make special has been used and abused for so long that it is essentially irrelevant.

The only prior art searches that the USPTO will pay attention to anymore are those performed by the EPO, the European Patent Office -- if you were to file a PCT (patent cooperation treaty) application, and designated the EPO or an EPO member state, then you could get an EPO search done, and that MIGHT speed up things in the USPTO -- maybe -- but there is no guarantee that the EPO would do their search before the USPTO at this point anyway, and then you have the costs and complexity associated with a PCT filing to deal with.

Business method patents have a long backlog, but they all do these days anyway. In any event, the petition to make special at best just decreases the time for the initial examination to take place -- once the initial examination is completed, then the timeline is driven by home much and how complex the following prosecution is. If you have numerous rejections, and have to come up with numerous complex arguments to traverse the rejections, or have to file a request for continuing examination, stuff like that, to get your patent issued, then all of that will eat up far more time than the request to make special would save anyway.

I guess my point is this -- there really isn't any way to speed up the process these days. The only thing you can do is make sure that whenever you get correspondence from the USPTO, you respond as quickly as possible, that's really the only time you have singificant control over the timeline.

 

[chris12m20]

Thanks a lot. That is very helpful.

The only prior art searches that the USPTO will pay attention to anymore are those performed by the EPO, the European Patent Office -- if you were to file a PCT (patent cooperation treaty) application, and designated the EPO or an EPO member state, then you could get an EPO search done, and that MIGHT speed up things in the USPTO -- maybe -- but there is no guarantee that the EPO would do their search before the USPTO at this point anyway, and then you have the costs and complexity associated with a PCT filing to deal with.

The PCT process point is very interesting and intriguing. My question is how is the general treatment toward business method patent bythe EPO? Is it less favorable or the same? I mean business method patent are not even allowed in some european countries, correct? Does EPO only performs the prior art search or determine whether a patent has merit or not? If EPO rejects the application will it negatively affect how USPTO examine the application?

I know thses kind of questions have be addressed case by case. But I am asking from a general point of view. Thanks again and I appreciate your help!

 

[divgradcurl]

Thanks a lot. That is very helpful.



The PCT process point is very interesting and intriguing. My question is how is the general treatment toward business method patent bythe EPO? Is it less favorable or the same? I mean business method patent are not even allowed in some european countries, correct? Does EPO only performs the prior art search or determine whether a patent has merit or not? If EPO rejects the application will it negatively affect how USPTO examine the application?

I know thses kind of questions have be addressed case by case. But I am asking from a general point of view. Thanks again and I appreciate your help!

Good point about the business method patents -- you are right, most European countries (if not all) and I believe the EPO will not patent business methods -- so just forget my advice related to the PCT filing.

The EPO does patent searches for most of the European patent offices, but most of the substantive prosecution takes places in the particular offices of each country. There is such a thing as a European patent, and that patent is prosecuted by the EPO.

Stuff that happens in foreign prosecution CAN be used against you in court, but is generally not relevant to USPTO patent prosecution. In other words, arguments made during the prosecution of a Euro patent (in whatever country), whether or not the Euro patent issues, can be used in a court case in the U.S. to limit the scope of a patent or invalidate a patent (prosecution history estoppel). However, the USPTO will not generally look to the foreign patent offices during prosecution of the U.S. patent.

Hope that answers some of your questions.

EDIT: Sorry to steer you wrong there, I so very rarely deal with business method patents in my practice (I primarily do litigation these days) that I forgot about the Euro bias against them.