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[oddtimeflux]

I've heard that it is possible to file a national patent application in Canada which is somewhat "rushed", where they are obligated to review the material within 6 months.

Are there any other such possibilities (albeit costly) for advancing schedule of patent issuing?

[Wiscagent]

US practice also allows for "expedited review," but I'm not familiar with the practice.

[JimIvey]

I'm not sure what jurisdiction you're asking about.  I've heard of such procedures in Europe, China, and Canada, I believe (could be wrong).  My understanding is that accelerated examination is available for the asking -- no fee, no special showing of need or justification.

The US is different.  THere's a petition and a fee required.  If you hope to use the old "do-it-yourself examination" path to accelerated examination, they've modified the procedure to make it quite onerous.  As far as I know, the other paths to accelerated examination remain unaltered.  They include (i) imminent death of an inventor (advanced age or serious illness), (ii) infringement of one or more pending claims, (iii) significant positive impact on the environment, and (iv) significant benefit to national security (the last added within the last 7 years for obvious reasons).

Regards.

[Isaac]

If you hope to use the old "do-it-yourself examination" path to accelerated examination, they've modified the procedure to make it quite onerous.  As far as I know, the other paths to accelerated examination remain unaltered. 

The PTO now requires petitions to make special to comply with the requirements for requesting accelerated examination.  There are exceptions for petitions based on advanced age and serious illness.

From MPEP 708.02

"Any petition to make special, other than those based on applicant's health or age or 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)."

http://www.uspto.gov/web/offices/pac/mpep/documents/0700_708_02.htm#sect708.02

[oddtimeflux]

(i) imminent death of an inventor (advanced age or serious illness), (ii) infringement of one or more pending claims, (iii) significant positive impact on the environment, and (iv) significant benefit to national security (the last added within the last 7 years for obvious reasons).

Well, I hope I'll live a long and healthy life, so the second reason is the most relevant and actually why I'm asking this. While no infringement occurred (to my knowledge), I am most certain that in the specific field of my invention, infringement is bound to happen sooner than the average 3 years time of prosecution. Now I just have to wait it out until it happens, I guess (or for the patent to be issued, whichever comes first).

[JimIvey]

Thanks, Isaac.  I knew someone here would know off the top of their head. 

Of course, that raises the issue of the remaining relevance of all other grounds to make special.  Your invention helps the environment?  Great!  Just file for accelerated examination by doing your own examination.  Your claim is infringed?  Your invention is vital to national security?  Great!  Do your own examination and file for accelerated (and now redundant) examination.  You want your patent faster but have no special circumstance for which you are deemed appropriate for accelerated examination?  Great!  Do exactly the same thing that applicants do when their invention helps the environment, is vital to national security, or is being actively infringed.

Unless there's some other distinction of which I'm not aware, there really is no accelerated examination based on environmental impact, national security, or infringement.  Now, there are (as a practical matter) only two: dire health of an inventor or DIY examination.

And, as oddtimeflux seems to have realized, just a belief that your claim(s) will inevitably be infringed in inadequate, I believe.  Actual infringement is required.  But, see above -- doesn't matter at all.  DIY examination is your only option so long as you're reasonably healthy.

Regards.

[oddtimeflux]

Jim, I thought that "do-it-yourself" was just your figure of speech... I didn't know it is an actual option one can undertake. Any link or reference for looking into it?

Isaac concluded the options very well in the link he provided. Interesting to note the "sub"-categories which are related to present perceived (yet widely agreed upon) benefit to society, such as "related to superconductivity", "energy" or as noted "combating terrorism". I guess when the agenda changes, so will these.

Say I notice an infringement of my pending subject material and file additional claims to cover that based on the subject material (before the patent is issued). I that acceptable? And if so, what do I do next to accelerate the prosecution on the grounds of infringement?

[JimIvey]

See the MPEP section Isaac cited.

"DIY" is not the official name of the process.  But, you have to perform a search and explain why you still deserve a patent in view of the results.  Under the new process, you really have to do your own examination.  You have to show support in the specification for your claim limitations, show your search results in a form the examiner can just import into their examination system, and generally make all admissions against interest that the PTO would like you to make so your application is darn near unenforceable.  If you read the rule in detail, and look at any file history for comparison, it will seem as if the Office wants you to provide an extremely thorough and least favorable prosecution history that they can simply ratify.

As it seems to me, the PTO no longer has an accelerated examination process as you are required to submit a ready-to-allow prosecution history such that no examination, accelerated or otherwise, is required of the office.

If you think that's bad enough, a while ago an examiner had a blog and another examiner posted there that s/he never grants any petitions for accelerated examination.  After you do all that work, the examiner just identifies one subclass that you arguably should have searched but didn't and rejects the whole thing, sending you to the back of the line (well, really back to your original place in line).

I was shocked examiners even care in what order applications are examined, let alone that they'd use a blatantly artificial device for rejecting a petition.  Apparently, they do and they do.  I asked for the rule that specified the criteria a search must meet to be considered a "search."  The answer wasn't that there was no such rule but they felt perfectly entitled to declare the absence of a search if you missed a subclass that they just pulled out of their ...  uh, hat.  Yeah, that's it, just pulled out of their hat.  They didn't like the then proposed new rules in that it set some objective standard for sufficiency of searching; they preferred the free-form, it's-good-enough-if-I-say-it's-good-enough standard.

I have to admit that, in the 17 years I've been practicing, I've never seen the PTO more hostile to allowing patents and more loathe to actually examine applications on the merits.  While I didn't like fee diversion under the Clinton administrations, examination then was MUCH, MUCH better.

[Isaac]

I was shocked examiners even care in what order applications are examined, let alone that they'd use a blatantly artificial device for rejecting a petition.  Apparently, they do and they do.

Yes, they do care.

When I examined, art units maintained a "freshness date" for examining patents, and I think the date was updated every quarter.  (I don't remember the actual name) By the end of the quarter, examiners are supposed to issue an office action on all applications having filing dates before the freshness date.   Getting applications that need early, special action on your docket makes achieving this goal a pain.   Examiners usually can get away with a small amount of cherry picking to balance easy cases with more difficult ones, but a few too many "examine me now" cases on your docket makes balance difficult to achieve.

The art unit I was in had a huge backlog which also meant our freshness dates were older than those of most other art units (except the ones doing business methods).   One bad result was that if an application got misclassified into our art unit, it was often difficult top transfer the thing to the proper unit because it would invariably be so old that any takers would have to work on it right away.

[oddtimeflux]

Jim and Isaac,
I hope you are not referring to "justified" requests for accelerated examination (an infringement of pending claims, for example), but only to filing a petition of self examination. If not, it would seem that it is impossible to be granted acceleration in any case, considering the difficulties.

What is your answer about filing additional claims (covered by the subject matter) by a patentee who notices possible infringement of elements in the application specification?

[Isaac]

Jim and Isaac,
I hope you are not referring to "justified" requests for accelerated examination (an infringement of pending claims, for example), but only to filing a petition of self examination. If not, it would seem that it is impossible to be granted acceleration in any case, considering the difficulties.

Just to be clear, I say only that examiners find petitions to make special inconvenient.  But I always thought that the petitions were decided by the petitions group and not by the examiner who will handle the case.  Further even if the applicant's search is found to be insufficient, the applicant gets a chance to address the deficiency.

What is your answer about filing additional claims (covered by the subject matter) by a patentee who notices possible infringement of elements in the application specification?

I don't believe you can request making special after examination begins. You'd have to file a continuing application with the new claims.

[oddtimeflux]

Thank you.

I assume that if examination hasn't started yet, one can still add claims until it does. Correct me if I'm wrong and thanks again if I'm not.