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Archived updates for Thursday, June 02, 2005

Petition to Make Special Can Actually Delay Prosecution?

According to a post by Ray Wood to the Patent Law listserv, depending upon the art unit you are in, a Petition to Make Special may actually delay prosecution because it takes the patent application from the Examiner and gives it to the Petitions section for a decision. Consequently,
  1. there is a delay in transmitting the patent application to the Petition's section;
  2. there is the delay in waiting for the decision; and
  3. there is the time for transmitting the application back to the Examiner.

His advice: "Call the Primary Examiner and ask how long it might take to get to the application. If it will be less than 6 months or so, I would be hesitant to file such a Petition."

My advice: File the Petition with the application whenever possible.

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Anonymous Chris G. said...

I took the Kayton patent bar review course, and the guy that taught us about PTMS said the same thing. That is, he never saw a case filed with a PTMS that got examined before the usual timeframe. Rather, if anything, it usually delayed the examination.

I have to wonder though... although it may delay *initial* examination, as I recall, PTMS also pushes the case to the top of the stack whenever an action is due from the Office during prosecution. So, maybe the benefits a PTMS may be realized from this standpoint.

June 02, 2005 10:20 AM  
Blogger Mark Nowotarski said...

In my experience in the business method area, a petition to make special is essential in order to get an application examined in a timely manner. With a petition to make special, delays to first office action can be reduced from over four years to less than six months.

More details here:

June 25, 2006 7:03 AM  
Anonymous Anonymous said...



April 07, 2009 4:50 AM  

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