Oddity about making a patent application “special”

A couple of years ago I taught a webinar called Get Patents Fast!  The point of this webinar was to enumerate and compare and contrast the various initiatives at the USPTO for getting a patent fast.

Last week a colleague at a New England patent firm asked if she could get her patent application made “special” by filing a petition under 37 CFR § 1.102 showing that the invention would “contribute to the … conservation of energy resources.”  She’s right that Rule 102 says that you can do that.  But as it turns out, you can’t really do that, as I will explain.  Oddly, in a few months it may once again be possible to do that, as I will also explain.

Rule 102 expressly permits an applicant to gain “special” status based upon any of these showings:

• the applicant’s age or health, or
• that the invention will materially:
  • enhance the quality of the environment;
  • contribute to the development or conservation of energy resources; or
  • contribute to countering terrorism.

I had to break it to my colleague that some ten years ago, the USPTO negated the second part of Rule 102.  A decade ago the USPTO revised the MPEP (at MPEP § 708.01) to say:

Any petition to make special, other than those based on applicant’s health or age or participation in the Patent Prosecution Highway (PPH) pilot program, filed on or after August 25, 2006 must meet the requirements for the revised accelerated examination program set forth in MPEP § 708.02(a).

A petition to make special filed on or after August 25, 2006 will only be granted if it is based upon applicant’s health or age, is under the PPH pilot program (see MPEP § 708.02(c)), or complies with the requirements set forth in MPEP § 708.02(a).

Just to clarify … the “revised accelerated examination program set forth in MPEP § 708.02(a)” is the dreaded “Accelerated Exam” program that very few practitioners ever use or have ever used.  (See What it costs to get a US patent fast by Accelerated Examination? and The end of Accelerated Examination.)  So anyway if you believe MPEP § 708.01, the only paths to “special” that are available nowadays are:

• Accelerated Exam
• Patent Prosecution Highway
• At least one inventor is 65 years old or older
• The state of health of at least one inventor is such that he or she might not be available to assist in the prosecution of the application if it were to run its normal course

Actually if you read the MPEP closely enough, the last part of Rule 102 does still have some peculiar significance.  If you want to do Accelerated Exam (which no one these days wants to do), you either pay a $140 fee (smaller for small or micro entities) or you hand in a statement that the invention  is directed to environmental quality, the development or conservation of energy resources, or countering terrorism.  In other words, my New England colleague can still make use of the fact that her client’s invention helps to conserve energy.  The way she can make use of it is that if she wishes to file an AE case, she can use the energy-conservation aspect of the invention to get a free pass on the $140 fee that would otherwise have to accompany the AE documents.

As I mentioned here, the USPTO has published a Federal Register Notice proposing to scrap the Accelerated Exam program.  A small handful of comments have been filed and the comment period is now closed.  Assuming that the USPTO moves forward on scrapping AE, what will USPTO do exactly to scrap it?

The answer to this is an oddity.  AE was never actually rule-based.  AE was only ever MPEP-based.  When Director Dudas implemented AE, he did it simply by publishing an OG notice and then folding the OG notice into the MPEP.  There was never any rulemaking for AE.  This means that now, to scrap AE, the USPTO did not actually need to publish a Notice of Proposed Rulemaking.  As I note in this blog post, in a peculiar way if USPTO carries out its plan to scrap AE, the likely result will be to revive the opportunity to make an application “special” based upon environmental quality, the development or conservation of energy resources, or countering terrorism.