708.02 Petition To Make Special [R-07.2022]

Created On
byChhabra Law Firm

37 CFR 1.102  Advancement of examination.

  • (a) Applications will not be advanced out of turn for examination or for further action except as provided by this part, or upon order of the Director to expedite the business of the Office, or upon filing of a request under paragraph (b) or (e) of this section or upon filing a petition or request under paragraph (c) or (d) of this section with a showing which, in the opinion of the Director, will justify so advancing it.
  • (b) Applications wherein the inventions are deemed of peculiar importance to some branch of the public service and the head of some department of the Government requests immediate action for that reason, may be advanced for examination.
  • (c) A petition to make an application special may be filed without a fee if the basis for the petition is:
    • (1) The applicant’s age or health; or
    • (2) That the invention will materially:
      • (i) Enhance the quality of the environment;
      • (ii) Contribute to the development or conservation of energy resources; or
      • (iii) Contribute to countering terrorism.
  • (d) A petition to make an application special on grounds other than those referred to in paragraph (c) of this section must be accompanied by the fee set forth in § 1.17(h).
  • (e) A request for prioritized examination under this paragraph must comply with the requirements of this paragraph and be accompanied by the prioritized examination fee set forth in § 1.17(c), the processing fee set forth in § 1.17(i), and if not already paid, the publication fee set forth in § 1.18(d). An application for which prioritized examination has been requested may not contain or be amended to contain more than four independent claims, more than thirty total claims, or any multiple dependent claim. Prioritized examination under this paragraph will not be accorded to international applications that have not entered the national stage under 35 U.S.C. 371, design applications, reissue applications, provisional applications, or reexamination proceedings. A request for prioritized examination must also comply with the requirements of paragraph (e)(1) or paragraph (e)(2) of this section. No more than 15,000 requests for such prioritized examination will be accepted in any fiscal year.
    • (1) A request for prioritized examination may be filed with an original utility or plant nonprovisional application under 35 U.S.C. 111(a). The application must include a specification as prescribed by 35 U.S.C. 112 including at least one claim, a drawing when necessary, and the inventor’s oath or declaration on filing, except that the filing of an inventor’s oath or declaration may be postponed in accordance with § 1.53(f)(3) if an application data sheet meeting the conditions specified in § 1.53(f)(3)(i) is present upon filing. If the application is a utility application, it must be filed via the Office’s electronic filing system and include the filing fee under § 1.16(a), search fee under § 1.16(k), and examination fee under § 1.16(o) upon filing. If the application is a plant application, it must include the filing fee under § 1.16(c), search fee under § 1.16(m), and examination fee under § 1.16(q) upon filing. The request for prioritized examination in compliance with this paragraph must be present upon filing of the application, except that the applicant may file an amendment to cancel any independent claims in excess of four, any total claims in excess of thirty, and any multiple dependent claim not later than one month from a first decision on the request for prioritized examination. This one-month time period is not extendable.
    • (2) A request for prioritized examination may be filed with or after a request for continued examination in compliance with § 1.114. If the application is a utility application, the request must be filed via the Office’s electronic filing system. The request must be filed before the mailing of the first Office action after the filing of the request for continued examination under § 1.114. Only a single such request for prioritized examination under this paragraph may be granted in an application.

New applications ordinarily are taken up for examination in the order of their effective United States filing dates. Certain exceptions are made by way of petitions to make special, which may be granted under the conditions set forth below. Any statement in support of a petition to make special must be based on a good faith belief that the invention in fact qualifies for special status. See 37 CFR 1.56 and 11.18. Advancement of examination under 37 CFR 1.102 may be sought via a petition to make special under 37 CFR 1.102(c) – (d), or via a request for prioritized examination under 37 CFR 1.102(e).

Any petition to make special, other than those based on applicant’s health or age or participation in the Patent Prosecution Highway (PPH) pilot program, filed on or after August 25, 2006 must meet the requirements for the revised accelerated examination program set forth in MPEP § 708.02(a). For prioritized examination under 37 CFR 1.102(e), see MPEP § 708.02(b). See subsections I and II below for the requirements for filing a petition to make special based on applicant’s health or age.

See the version of MPEP § 708.02 in force in August 2010 (Eighth Edition, Revision 9) for guidelines and the requirements for a petition to make special filed in an application before August 25, 2006. A petition to make special filed on or after August 25, 2006 will only be granted if it is based upon applicant’s health or age, is under the PPH pilot program (see MPEP § 708.02(c)), or complies with the requirements set forth in MPEP § 708.02(a). For a request for prioritized examination under 37 CFR 1.102(e) filed on or after September 26, 2011, see MPEP § 708.02(b).

I. APPLICANT’S HEALTH

An application may be made special upon a petition by applicant accompanied by any evidence showing that the state of health of the inventor or joint inventor is such that they might not be available to assist in the prosecution of the application if it were to run its normal course, such as a doctor’s certificate or other medical certificate. No fee is required for such a petition. See 37 CFR 1.102(c).

Personal/medical information submitted as evidence to support the petition will be available to the public if the application file and contents are available to the public pursuant to 37 CFR 1.11 or 1.14. If applicant does not wish to have this information become part of the application file record, the information must be submitted pursuant to MPEP § 724.02.

II. APPLICANT’S AGE

An application may be made special upon filing a petition including any evidence showing that the inventor or joint inventor is 65 years of age, or more, such as a statement by the inventor or joint inventor or a statement from a registered practitioner that they have evidence that the inventor or joint inventor is 65 years of age or older. No fee is required with such a petition. See 37 CFR 1.102(c).

The petition can be filed as a web-based ePetition. See the ePetition Resource Page (www.uspto.gov/Epetitions).

Personal/medical information submitted as evidence to support the petition will be available to the public if the application file and contents are available to the public pursuant to 37 CFR 1.11 or 1.14. If applicant does not wish to have this information become part of the application file record, the information must be submitted pursuant to MPEP § 724.02.

III. ENVIRONMENTAL QUALITY

The U.S. Patent and Trademark Office will accord “special” status to all patent applications for inventions which materially enhance the quality of the environment of mankind by contributing to the restoration or maintenance of the basic life-sustaining natural elements, i.e., air, water, and soil. Any petition to make special filed under this subsection must comply with the requirements set forth in MPEP § 708.02(a).

All applicants desiring to participate in this program should petition that their applications be accorded “special” status. The petition under 37 CFR 1.102 must state that special status is sought because the invention materially enhances the quality of the environment of mankind by contributing to the restoration or maintenance of the basic life-sustaining natural elements. No fee is required for such a petition. See 37 CFR 1.102(c). If it is not clear from the application’s disclosure that the claimed invention materially enhances the quality of the environment by contributing to the restoration or maintenance of one of the basic life-sustaining natural elements, the petition must be accompanied by a statement under 37 CFR 1.102 by the applicant, assignee, or an attorney/agent registered to practice before the Office explaining how the materiality standard is met. The materiality standard does not permit an applicant to speculate as to how a hypothetical end-user might specially apply the invention in a manner that could materially enhance the quality of the environment. Nor does such standard permit an applicant to enjoy the benefit of advanced examination merely because some minor aspect of the claimed invention may enhance the quality of the environment.

IV. ENERGY

The U.S. Patent and Trademark Office will, on petition, accord “special” status to all patent applications for inventions which materially contribute to (A) the discovery or development of energy resources, or (B) the more efficient utilization and conservation of energy resources. Examples of inventions in category (A) would be developments in fossil fuels (natural gas, coal, and petroleum), hydrogen fuel technologies, nuclear energy, solar energy, etc. Category (B) would include inventions relating to the reduction of energy consumption in combustion systems, industrial equipment, household appliances, etc. Any petition to make special filed under this subsection must comply with the requirements set forth in MPEP § 708.02(a).

All applicants desiring to participate in this program should petition that their applications be accorded “special” status. The petition under 37 CFR 1.102 must state that special status is sought because the invention materially contributes to category (A) or (B) set forth above. No fee is required for such a petition, 37 CFR 1.102(c). If the application disclosure is not clear on its face that the claimed invention materially contributes to category (A) or (B), the petition must be accompanied by a statement under 37 CFR 1.102 by the applicant, assignee, or an attorney/agent registered to practice before the Office explaining how the materiality standard is met. The materiality standard does not permit an applicant to speculate as to how a hypothetical end-user might specially apply the invention in a manner that could materially contribute to category (A) or (B). Nor does such standard permit an applicant to enjoy the benefit of advanced examination merely because some minor aspect of the claimed invention may be directed to category (A) or (B).

V. INVENTIONS FOR COUNTERING TERRORISM

In view of the importance of developing technologies for countering terrorism and the desirability of prompt disclosure of advances made in these fields, the U.S. Patent and Trademark Office will accord “special” status to patent applications for inventions which materially contribute to countering terrorism. Any petition to make special filed under this subsection must comply with the requirements set forth in MPEP § 708.02(a).

International terrorism as defined in 18 U.S.C. 2331 includes “activities that – (A) involve violent acts or acts dangerous to human life that are a violation of the criminal laws of the United States or of any State, or that would be a criminal violation if committed within the jurisdiction of the United States or of any State; [and] (B) appear to be intended – (i) to intimidate or coerce a civilian population; (ii) to influence the policy of a government by intimidation or coercion; or (iii) to affect the conduct of a government by assassination or kidnapping…” The types of technology for countering terrorism could include, but are not limited to, systems for detecting/identifying explosives, aircraft sensors/security systems, and vehicular barricades/disabling systems.

All applicants desiring to participate in this program should petition that their applications be accorded special status. The petition under 37 CFR 1.102 must state that special status is sought because the invention materially contributes to countering terrorism. No fee is required for such a petition. See 37 CFR 1.102(c). If the application disclosure is not clear on its face that the claimed invention is materially directed to countering terrorism, the petition must be accompanied by a statement under 37 CFR 1.102 by the applicant, assignee, or an attorney/agent registered to practice before the Office explaining how the invention materiality contributes to countering terrorism. The materiality standard does not permit an applicant to speculate as to how a hypothetical end-user might specially apply the invention in a manner that could counter terrorism. Nor does such standard permit an applicant to enjoy the benefit of advanced examination merely because some minor aspect of the claimed invention may be directed to countering terrorism.

VI. HANDLING OF PETITIONS TO MAKE SPECIAL OR REQUESTS FOR ADVANCEMENT OF EXAMINATION

Applications which have been made special will be advanced out of turn for examination and will continue to be treated as special throughout the entire prosecution in the Office with the exception of applications having been granted prioritized examination which remain special until prioritized examination is terminated or until a final disposition of the application (see MPEP § 708.02(b), subsection II).

Each petition to make special or request to advance examination, regardless of the ground upon which the petition or request is based and the nature of the decision, is made of record in the application file, together with the decision thereon. The part of the Office that rules on a petition is responsible for properly entering that petition and the resulting decision in the file record. The petition, with any attached papers and supporting affidavits, will be provided as a single document in the application’s file wrapper. The decision will be provided as a separate document similarly entered. To ensure entries in the “Contents” in proper order, the technical support staff in the TC will make certain that all papers prior to a petition have been entered and/or listed in the application file before forwarding it for consideration of the petition. Note MPEP § 1002.02(s). Currently petitions to make special based on applicant’s health or age, participation in a PPH program, or under a pilot program, and requests for prioritized examination under 37 CFR 1.102(e) are decided by the Office of Petitions. All other petitions to make special are decided by the Quality Assurance Specialist of the TC to which the application is assigned.