Monday, March 30, 2015

PTO takes 7 years to process Petition to Make Special (or Why you should use e-Petitions)

Takeaway: The PTO took seven years to process a Petition to Make Special Based on Age. The Petition Decision indicated that "the delay in rendering a decision is regretted." (Application of Dressler, Appl. No. 11/733,605, available on Public PAIR.) 

This particular petition was filed in 2007, before electronic processing of petitions was available. However, the PTO put such a system in place for Make Special - Age back in early 2008. The PTO expanded the system again in 2011. As of 2015, the "e-Petition" system handles seven different petitions. See the PTO's e-Petition Resource page for details.

With e-Petition, the petition is automatically granted as long as you fill out the form correctly and attach supporting documentation. Applicants should certainly be using e-Petition whenever possible. Doing so will prevent unbelievable delays like the one in the Dressler application.


Application of Dressler, Appl. No. 11/733,605 (available on Public PAIR)

An application was filed in April 2007, along with a Petition to Make Special based on age. The inventor was 67. Prosecution started in 2010. The Applicant appealed and jurisdiction finally passed to the PTAB in August 2012. The Board issued a Decision in March 2015.

The above pattern of prosecution is pretty typical. Several rounds of back and forth with the Examiner. IDSes filed along the way. A long wait at the Board. But what about the Petition to Make Special? Looks like prosecution was humming along, while the petition was, what ... stuck in limbo?

The Petitions Office finally granted the Petition to Make Special in January 2014. That's seven years after the Petition was filed. The Petitions Examiner apologized, noting in the decision that  "the delay in rendering a decision is regretted."

My two cents: So what's the best practice in scenarios like this one?

E-petition wasn't available at the time of filing (2007), so you can't fault the Applicant for the initial petition filing. But an early rudimentary e-petition became available in early 2008 for just this type of petition. Not having received a Decision on the earlier petition, this Applicant could have refiled using e-Petition. Fill out the special PDF fillable form made available by the PTO, upload it via EFS, and get an instantaneous Petition Decision. That would have meant Special status in 2008 when prosecution was still in progress, not in 2014 when it's too late because the application is on appeal.

The PTO revamped and expanded the e-Petition program in 2011. In this expanded program, several types of Petitions are handled by entering information directly into EFS rather than uploading special forms. Make Special - Age is still supported the old way, with the PDF fillable form. Still, all these  e-Petitions are automatically granted or denied. No more waiting on the Petitions Office. If this Applicant had availed himself of this program in 2011, the application would have been granted Special status during prosecution, when it still mattered. More info on the PTO's e-Petition Resource page.

Without an e-Petition, you're left with the unsatisfactory option of periodically checking status with the Petitions Office. Here, no query to the Petitions Office showed up in PAIR, ever. Perhaps phone calls were made – this wouldn't show up in the written record.

As all patent prosecutors are painfully aware, an Applicant has no real power to force the PTO to do anything. But if this Petition was simply "lost" or "stuck" somewhere in the PTO's workflow processing, I suspect a query would do the trick. So as a last resort, docket a periodic reminder every time a petition is filed outside of e-Petitions, and send a status inquiry and/or make a phone call to the Petitions Office (or Examiner, depending on the type of petition).

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