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,
- there is a delay in transmitting the patent application to the Petition's section;
- there is the delay in waiting for the decision; and
- 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.
1 Comments:
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.
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