Re: USPTO Policy on Petitions to Make Special

The following exchange occurred via email between the Honorable Assistant Commissioner for Patents, Steve Kunin, Magdelen Greenlief, the editor of the Manual of Patent Examining Procedure for the United States Patent and Trademark Office, and myself. The exchange is published at 82 JPTOS 467 (July, 2000). The important practice points to note from this exchange are (1) that, for a petition to make special, it "doesn't matter whether the pre-examination search was made by applicant, a foreign office or the USPTO" and (2) that special status in an application obtained by the grant of a petition to make special "will carry over to a continuation application."

Honorable Assistant Commissioner Kunin,

1. In view of the contradictory PTO authority outlined below, I would appreciate it if the USPTO could identify a uniform policy on whether searches conducted in the USPTO in (1) a PCT application or (2) a parent of a continuation application satisfy the requirement of a "pre-examination search ..." of the invention stated in MPEP 708.02, VIII, C, for granting a petition to make special.

2. I would appreciate it if the USPTO could clarify whether the implied conclusion from the statement that "[d]ivision applications directed to the non-elected inventions will not automatically be given special status based upon papers filed with the petition in the parent case. Each such application must meet on its own all requirements for the new special status..." in MPEP 708.02, VIII, B, fifth paragraph, that a continuation application IS "automatically ... given special status based upon papers filed with the petition in the parent case..." is correct.

A PCT search in the EPO clearly complies with the requirements in MPEP 708.02, VIII, C of a "search made by a foreign patent office." It would be illogical for the USPTO to discriminate in favor of the EPO examiners and against its own examiner's PCT searches vis-a-vis petitions to make special. The PTO already loses enough business to the EPO! It makes more sense to accord the search by a US examiner more respect than the search by a foreign patent office examiner; especially in view of 35 USC 102(e) and (g) secret prior art in the US that is not prior art elsewhere, and therefore would not be contained in a foreign patent office's search. In the same vein, it would be illogical for the USPTO to discriminate between PCT searches in the USPTO and 35 USC 111 US national application searches vis-a-vis petitions to make special in PCT national phase applications or continuation applications. It is critical to certain of my clients, especially those in the Internet area, to expedite prosecution of their applications. However, there appears to be contradictory authority in the USPTO whether either (1) a PCT search or (2) a search performed by an examiner in a parent of a continuation application complies with the requirement in MPEP 708.02, subsection VIII, subsubsection C, for a pre-examination search. Anecdotal facts from real cases are presented below.

Last year, a colleague of mine queried the Office of Petitions in response to an examiner's denial of a petition to make special, the petition being denied on the grounds that the search by the USPTO of the PCT application in the international phase did not comply with the search requirement for a petition to make special. That colleague informed me that the petitions examiner he discussed the issue with informally contacted the examiner who decided the petition and instructed the examiner who decided the petition to accept the PCT search as complying with the petition to make special requirement.

I recently received a decision denying a petition to make special in an application. The decision relies in part on failure to comply with MPEP 708.02, subsection VIII, subsubsection C. I rely in that petition upon the search conducted by the examiner in a parent of the subject (continuation) application. The decision indicates that that search does not comply with the requirements for a search in a petition to make special. Over the last three weeks, I requested guidance from the Office of Petitions, via several telephone calls, on the issue of the applicability of searches in the USPTO of PCT applications and parents of continuation applications in petitions to make special. I eventually received guidance today from Examiner Mike Manson. Examiner Mike Manson indicated that he in turn had discussed the issue with Petitions Examiner Brian Hern. I know that Examiner Hern is a senior petitions examiner. Examiner Manson indicated that Examiner Hern instructed Examiner Manson to advise me to check with the SPRE who issued the decision denying the petition AS TO THE REQUIREMENTS FOR THE PETITION. Examiner Manson indicated that the Petitions to make special are decided at the group level. Examiner Manson admitted that the Office, or at least the Office of Petitions, does not have a policy on whether either of the two classes of searches I described above comply with the requirements of a petition to make special. This means that the Tech Centers/Groups make their own policies, or worse yet, may decide this issue on a case-by-case or examiner-by-examiner basis.

If in fact there is no policy, then the denial of a petition to make special based the reliance on a prior USPTO search of the same invention is probably in violation of the APA under the "arbitrary and capricious" test.

Rick Neifeld



The official reply by the USPTO follows.

Mr. Neifeld,

Your e-mail message to Mr. Kunin was forwarded to me for response. As to your item (1) noted below, MPEP 708 (Order of Examination) states that each examiner will give priority to that application in his/her docket which has the oldest effective US filing date. Therefore, if you have a continuation application, that continuation application will be taken up for action based on the earliest effective US filing date, rather than the actual filing date of the continuation application. The continuation application is in effect given special status since it is advanced out of turn for examination.

If your application is not a continuation application, you may request special status pursuant to the procedures set forth in MPEP 708.02, VIII, "Special Examining Procedure for Certain New Applications - Accelerated Examination." One of the requirements under this procedure is to have applicant submit a statement that a pre-examination search was made. It doesn't matter whether the pre-examination search was made by applicant, a foreign office or the USPTO. For example, if you have a national stage application filed under 35 U.S.C. 371 (the order of examination of a national stage application is based on the 35 U.S.C. 371(c) date - see MPEP 1893.03) a search report performed by the USPTO as the ISA or by any foreign Offices would satisfy the requirement of a pre-examination search under MPEP 708.02, VIII. You may request special status for that national stage application provided all the other requirements set forth in MPEP 708.02, VIII are satisfied.

As to your item (2) noted below, if a petition to make special has been granted in a parent application, that special status will carry over to a continuation application.
Hope this information is helpful.


Greenlief, Magdalen, MPEP Editor