Key Takeaways

  • A petition to make special allows applicants to expedite the processing of patent or trademark applications under limited circumstances.
  • For patents, eligibility may be based on advanced age, health, environmental quality, energy development, or active infringement disputes.
  • For trademarks, petitions may be granted if there is actual or imminent litigation, clear counterfeiting concerns, or a need to stop imports through U.S. Customs.
  • Filing a petition generally requires a USPTO fee (around $100 for trademarks) and a sworn statement explaining the grounds for special status.
  • Even when granted, a petition to make special does not guarantee approval of the application; it only accelerates examination.
  • Careful preparation, including supporting documentation, is critical to avoid denial of the request.

A petition to make special infringement is a method of expediting the processing of a patent application. In general, patent prosecution takes about two to five years until a patent is issued. However, there are situations in which an application may be made "special" or "fast-tracked." A couple of the most common ways to seek special status are:

  • Prioritized examination
  • Accelerated examination
  • Patent Prosecution Highway
  • Petition to Make Special
  • Full First Action Interview

Prioritized Examination

The prioritized examination (PE) program, also known as "Track One," enables an applicant to receive a final disposition (either allowance or final rejection) of their patent within one year from the filing date. On average, PE applications pend for six-and-a-half months from the date the PE status is granted to the final disposition. This is a welcome reduction from the usual 26-month pending period of normal applications.

Accelerated Examination

Like the prioritized examination program, the accelerated examination (AE) program enables a patent applicant to receive a final disposition (either allowance or final rejection) within one year from the filing date. On average, AE applications pend for 9.26 months from the date the AE status is granted to the final disposition. Using the AE program, patent applications have an allowance rate of about 64 percent.

The downside to using the AE program is the handful of tedious requirements that come with the program. Among other requirements, the patent applicant must conduct a pre-examination search report and provide an accelerated examination support document, both filed with the application. Similar to an Office action but written by the patent applicant, the support document might be more likely than the Office action to generate inequitable conduct issues or prosecution history estoppel.

Although AE program filing fees are not usually a significant burden, the patentability search and preparation of the search report and support document may be quite expensive. The actual costs depend on previous art search costs and the depth of prior art that must be reviewed, examined, and compared to the patent claims.

The AE program also required an examiner interview, which can add up to total expenses. This is in contrast to the PE program, which operates on standard interview procedures by the Examiner.

Patent Prosecution Highway (PPH)

The Patent Prosecution Highway (PPH) program is another way of expediting a patent application. Using the PPH program, certain situations may allow the leveraging of examination by other jurisdictions. If the patent application was found to have at least one patentable claim, as a result of an allowance or favorable search report from a foreign or PCT application, the patent applicant can ask that the USPTO accelerate the U.S. counterpart application examination.

Petition to Make Special (PTMS)

Petition to Make Special (PTMS) are those that may be granted on the basis of the applicant's advanced age or poor health. The PTMS program may move a patent application to the front of the examination line without requiring a fee payment or other submissions including the search and report documents required with the AE program. Under the USPTO's new revisions, other PTMSs (such as those based on infringement, environmental quality, and infringement), will utilize the updated method for AE.

Benefits and Limitations

The main benefit of a petition to make special is faster examination, which can help businesses act quickly against infringers or counterfeiters. In patent cases, this can shorten years of prosecution into months. In trademark cases, expedited review may allow an owner to secure registration in time to use it in litigation or customs enforcement.

Limitations include:

  • Not all petitions are granted—requests must clearly meet USPTO standards.
  • Expedited review increases speed but does not affect the likelihood of success on the merits of the application.
  • If denied, the application continues through the normal timeline.

Filing Requirements and USPTO Process

To file a petition to make special, applicants must submit:

  • A petition form with the required USPTO filing fee (for trademarks, $100).
  • A declaration explaining the specific grounds for special status.
  • Any supporting documents, such as copies of pleadings in litigation or evidence of counterfeit imports.

Once submitted, the petition is reviewed by the USPTO’s Office of Petitions (patents) or the Office of the Commissioner for Trademarks. If granted, the application is moved to the front of the examination line. However, granting the petition does not ensure approval of the application itself; it simply accelerates the review timeline.

Grounds for a Petition to Make Special

A petition to make special can be filed in both patent and trademark contexts, but the USPTO strictly limits the circumstances under which it is granted. For patents, special status may be allowed if:

  • The applicant is 65 years or older or has serious health issues.
  • The application involves environmental quality, energy development, or counterterrorism technologies.
  • The patent is the subject of ongoing infringement litigation.

For trademarks, the USPTO may grant special status if:

  • Litigation is pending where the trademark application is material to the case.
  • The applicant seeks to stop counterfeit goods or infringing imports through U.S. Customs and Border Protection.
  • There is clear evidence of actual trademark infringement.

These petitions require a sworn declaration and supporting evidence demonstrating urgency.

Full First Action Interview (FFAI) Program

The Full First Action Interview (FFAI) program does not grant special priority and is thus not an actual expedited program. However, the program enables patent applicants to be in communication with the Examiner more readily as compared to typical examination. This increased communication may reduce the application's pending time and, in turn, enable early allowance of the patent.

The FFAI program does not require any additional fees, but the program does limit the total number of claims to 20, with no more than three independent claims. Using the FFAI, the first action allowance rate is 29.6 percent. This is much better than the average for all patent applications before the USPTO, which is 11.9 percent.

At any time before a significant Office action is taken, an applicant can submit their request to participate in the FFAI program. After the examiner searches for prior art and anticipates possible rejections of the claim, the patent applicant has exactly one month to schedule the initial Office action interview. Afterward, the examiner may either let the claims proceed or grant a first Office action. After this action, patent processing continues normally.

Frequently Asked Questions

  1. What is a petition to make special?
    It is a request to the USPTO to expedite examination of a patent or trademark application under specific circumstances.
  2. When can I file a petition to make special for a patent?
    You may file if you are of advanced age, have poor health, or if the patent involves urgent public interests such as environmental quality or infringement litigation.
  3. When is a trademark petition to make special granted?
    Typically when there is litigation, counterfeiting, or urgent need to record a registration with U.S. Customs.
  4. Does filing a petition guarantee faster approval?
    No, it only accelerates examination. The application must still meet all USPTO requirements for approval.
  5. How much does it cost to file?
    For trademark applications, the USPTO fee is generally $100. Patent-related fees vary depending on the grounds for the petition.

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