The United States Patent and Trademark Office (“USPTO”) has temporarily implemented a procedure allowing small entity applicants to accelerate examination of one patent application in exchange for the applicant expressly abandoning another co-pending unexamined application. According to the USPTO, this procedure will allow small entity applicants having multiple applications currently pending before the USPTO to have greater control over the priority with which their applications are examined, while also stimulating a reduction of the backlog of unexamined patent applications pending before the USPTO.
The USPTO will accord special status for accelerated examination under Patent Application Backlog Reduction Stimulus Plan (Plan) under the following conditions:
- The application for which special status is sought is a nonprovisional application that has an actual filing date earlier than October 1, 2009, in which the applicant has established small entity status under 37 C.F.R. § 1.27;
- The applicant has another co-pending nonprovisional application that has an actual filing date earlier than October 1, 2009, and is complete under 37 C.F.R. § 1.53 (i.e., the application contains an executed oath or declaration and the filing fee, search fee, examination fee, any applicable application size fee, and any applicable excess claims fee have been paid);
- The application for which special status is sought and the other co-pending nonprovisional application either are owned by the same party as of October 1, 2009, or name at least one inventor in common;
- The applicant files a letter of express abandonment under 37 C.F.R. § 1.138(a) in the co-pending nonprovisional application before it has been taken up for examination, and includes with the letter of express abandonment a statement that the applicant has not and will not file an application that claims the benefit of the expressly abandoned application under any provision of title 35, United States Code, and that the applicant agrees not to request a refund of any fees paid in the expressly abandoned application; and
- The applicant files a petition under 37 C.F.R. § 1.102 in the application for which special status is sought. This petition must identify the basis under which special status is being sought (i.e., express abandonment of another co-pending application), and include a copy of a letter of express abandonment and the statement that accompanies the letter of express abandonment from the co-pending application that has been expressly abandoned.
Applications that are accorded special status for accelerated examination under this procedure will be placed on an examiner's special docket prior to the first Office action, and will have special status in any appeal to the Board of Patent Appeals (BPAI) and Interferences and also in the patent publication process. However, after issuance of the first Office action (which may be an Office action containing only a restriction requirement), an application accorded special status under this procedure will be placed on an examiner's amended docket, rather than the examiner's special docket. As a result, the interim prosecution between the first Office action and any appeal to the BPAI would occur at the same pace as other (i.e., non-special) applications.
The accelerated examination procedure under the Plan will only be effective until February 28, 2010. For a petition under 37 C.F.R. § 1.102 to be granted under the Plan, the petition and the letter of express abandonment (with its accompanying statement) must be filed on or before February 28, 2010.
In the future, the USPTO may extend the accelerated examination procedure under the Plan to all applicants, including both large and small entity applicants, on either a temporary or permanent basis. Depending on the results of the Plan, the USPTO may also choose to discontinue the accelerated examination procedure under the Plan after January 31, 2010.
For more information, please contact one of the authors of this alert or your Michael Best attorney.