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.

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.

If you need help with a petition to make special infringement, you can post your legal need on UpCounsel's marketplace. UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law and average 14 years of legal experience, including work with or on behalf of companies like Google, Stripe, and Twilio.