Petition To Make Special

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

ted 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 USPTO

patent 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.

xamination 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

USPTO patent 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 filing dates in view of any domestic benefit claimed. 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) -

ons 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)

lication 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

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

ndard 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)

ion 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

ct 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)

ions 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.