As has been repeatedly reported in many publications, famed venture capitalist Vinod Khosla, at a 2011 Bangalore tech conference, warned: “People under 35 are the people who make change happen. People over 45 basically die in terms of new ideas.”
I didn't know he'd said that. Lucky me.
On September 27, 2016, I was the sole inventor on a patent application for “Using Classified Text and Deep Learning Algorithms to Identify Risk and Provide Early Warning.” (No. 15/277,458). I had written the specification. Obi Iloputaife, a patent attorney in co-founder Dan Cotman’s IP law firm, authored the claims.
I was less than one month away from my 68th birthday.
On December 12, 2016, the USPTO issued its first Office Action (OA), which was a Notice of Allowance for each of the claims. Yes, you read that date correctly. The Notice of Allowance was sent only about two and a half (2 ½) months after the Application was filed.
On January 24, 2017, my core patent issued as No. 9,552,548.
Was there some “secret sauce” here? First, age didn't stop me from having new idea. But, yes, there was something else, something about patent applications that I surfaced for myself.
My story has already made it into the Hillsborough County Bar Association in Tampa, Florida, for the Summer of 2017, Vol. 27, No. 6, at p. 48. The person who told it is Jeff Cox, now an AVP for Legal Ops at Citigroup. His article was entitled, “Making Your Client Special.”
With that title, Jeff was referring to a specific document that I filed along with the Application. It had an effect. In his article, Jeff reported that the average time for the USPTO to issue a first OA for the applicable class/subclass was nine (9) months. His source was the USPTO itself, the USPTO’s Office Action Estimator for Class = 706 and Subclass = 025000.
By receiving a first OA in less than three months, my application was getting special attention. Why?
The answer is that the specific document I filed with the Application was a Petition to Make Special. See 37 CFR 1.102(c)(1). See also M.P.E.P § 708.02, Section II.
Now, most patent practitioners might know of a Petition to Make Special, but I doubt that inventors are aware of it. I wasn’t aware of it. I had practiced law as a litigator in California for 38 years, and assisted Dan Cotman with his patent litigation during the last two years. But the subject of a Petition to Make Special never came up.
By 2016, I had moved to Washington state, resigned from the California Bar, and was editing my book (with co-author, Bill Inmon), Preventing Litigation: An Early Warning System To Get Big Value Out of Big Data (Business Expert Press 2015) (endorsed by Richard Susskind), when I saw Deep Learning and its promise.
Then I went up the curve on Deep Learning, envisioned a system, engaged in some experiments, and thought I had an invention. I went to the USPTO home page. It looked like this:
In the search box, I input this: “a way to expedite the review of my application.”
The first result of my search was Petition Forms.
I opened the link to Petition Forms, and received a result in the screen below. I passed on Nos. 1, 2, and 3. Nos. 1 and 2 pertained to Abandoned Applications, while No. 3 was about a Trademark rule. But No. 4 was about a Petition to Make Special, which was a “petition to expedite initial examination of an application.” (Boldface added).
I opened the link to the Petition to Make Special, and found that I could not access the information without being a patent attorney.
I went back to the home page and, in the search box, wrote “Petition to Make Special,” as below.
I opened this link (see the screenshot below) and found that the second item pertained to “23 – Make Special – Age and Health.”
To be more specific, under “Deciding Office: The Office of Petitions,” (boldface in the original), there was this sentence: “The criteria for a Petition to Make Special on the basis of Age or Health are set forth in 37 CFR 1.102 MPEP § 708.02.” (Italics added).
The link to the Code of Federal Regulations (CFR) was live, so I opened it. There I found that 1.102 was for “Advancement of Examination.” I'm copying out subsections (b) and (c), below. Note subsection (c)(1).
"(b) Applications wherein the inventions are deemed of peculiar importance to some branch of the public service and the head of some department of the Government requests immediate action for that reason, may be advanced for examination.
(c) A petition to make an application special may be filed without a fee if the basis for the petition is:
• (1) The applicant’s age or health; or… (Boldface added)."
Now I wanted to know more. Seeking details, I went to the MPEP § 708.02, and found this:
II. APPLICANT’S AGE
An application may be made special upon filing a petition including any evidence showing that the applicant is 65 years of age, or more, such as applicant’s statement or a statement from a registered practitioner that he or she has evidence that the applicant is 65 years of age or older. No fee is required with such a petition. See 37 CFR 1.102(c). (Boldface added).
That was stunning. I had already achieved that age, plus a few.
I asked Obi Iloputaife about this, and, as I recall, he knew about this Petition to Make Special, and asked me only for a copy of my driver’s license, which, of course, recited my Date of Birth.
I didn’t have to do anything after that! Obi is a “registered practitioner” and stated on the form that he had evidence that I was 65 years of age or older.
He signed the form and no additional fee was required.
Bottom line: Now you’ve walked in my shoes and, if you’re a true inventor on a patent application, and if you’re a senior, you can offer this significant advantage, a Petition to Make Special, to your team.
In my case, since I had conceived variations of the core theme, I followed suit with each of the six other “continuations-in-part” that I filed. We were building a patent “family.”
Of course, each application was accompanied by a Petition to Make Special.
In one instance, though, I was worried. I had a co-inventor, my son Jonathan, an MD PhD MPH, and he was not a senior. This patent pertained to the “medical risk” of a missed or mistaken diagnosis. Jon was able to shift from litigation vernacular to electronic health records, but he was only 31 years of age.
Would that matter?
I called the Office of Petitions, connected with the reviewer who had granted my first Petition and quickly learned that the answer was no, his age would not spoil the Petition. If I was a true co-inventor and so was he, his age didn’t matter. My age would be sufficient grounds for the Petition to be granted.
And it was.
Now you know the story I lived. I was just looking for an edge, being curious, asking questions, and following the hints as I’ve shown them to you. It took a little work to be able to ask Obi the right question.
But what a time saver!
Now if you’re a senior, you know what to ask your patent counsel about.
And if you’re much younger, you’ve just learned the wonderful advantage that a true inventor who’s also a senior can bring to the table.