PETITIONS TO MAKE SPECIAL at USPTO
The vast majority of applicants may never be able to make use of the a request for Petition to Make Special after August 26, 2006, other than petitions based on age or health.
One key feature of the new rules will be the requirement to submit the equivalent of the dreaded ESD that was first introduced in January 2006 by way of the proposed rule changes for designated claims. The dreaded ESD requirements for Petitions to Make Special after August 26, 2006 will include:
(a) certification of a preexamination search having been performed (with some very particular detailed requirements on NPL and international documents as well as disclosure of search term strategies and patent classes);
(b) an identification of the most relevant art (but no saving grace under Rule 56 for what happens if you "guess" wrong in the eyes of a future litigant about which documents are "most" relevant);
(c) the incredibly burdensome "reverse" claim mapping requirement whereby the applicant must identify where in each of the most relevant references each and every claim limitation that can be found in that reference is located (caveat practitioner for even thinking about attempting to do a reverse claim map
- the AIPLA estimates the cost at $25K+ and that doesn't even count all of the nasty gotchas that future litigants will dream up after the fact to roast the naive practitioner that attempts to venture down this thorny path, like how is it that you decided to exclude those references from your reverse claim map that showed your "missing" element(s) - even though they didn't show any other elements of your claims and are probably not even in a related field of art); and
(d) just to make sure that you have second, third and fourth thoughts before considering this path, the PTO:
(i) limits you to 3 independent claims and a total of 20 claims,
(ii) requires you to agree not to separately assert the patentability of any dependent claim in an appeal and to agree to restrictions without traverse,
(iii) prevents addition of any new claims or introduction of any amendments that would introduce elements that were not expressly covered in the preexamination search (unless you provided an updated search, of course),
(iv) provide a claim support map for support in the spec for all elements of the claims,
(v) identify references for which the CREATE act may be used to disqualify the reference as prior art, and
(vi) submit all papers electronically.
The process does enable you to have interviews with the Examiner before a first Office Action, but limits responses to a one month non-extendible deadline. There is no indication of how the currently imposed double eyes review process would be implemented as part of this procedure.
Oh, if you should mess up on your response and add a claim to total more than 3/20, or present claims not encompassed by your preexamination search report or directed to a non-elected invention, the Office will consider your response non-responsive and the case will go abandoned because you haven't met the one-month non-extendible deadline.
My only advice to a practitioner considering a Petition to Make Special after August 26, 2006 will be to make sure that his/her malpractice insurance premiums are paid up!
We (www.postgrant.com and www.maierandmaier.com) are interested in hearing any feedback regarding accelerated examination procedures or petitions to make special procedures that may exist in China, India, Korea, Europe, Canada, Australia etc so that we may compare and contrast them. Likewise, are interested in comments regarding patent reform and post grant opposition procedure.
www.maierandmaier.com
www.postgrant.com
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