E9-28373. Patent Application Backlog Reduction Stimulus Plan

AGENCY:

United States Patent and Trademark Office, Commerce.

ACTION:

Notice.

SUMMARY:

The United States Patent and Trademark Office (USPTO) has a procedure under which an application will be advanced out of turn (accorded special status) for examination if the applicant files a petition to make special with the appropriate showing. The USPTO is providing an additional temporary basis under which a small entity applicant may have an application accorded special status for examination if the applicant expressly abandons another copending unexamined application. 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.

DATES:

Effective Date: November 27, 2009.

FOR FURTHER INFORMATION CONTACT:

Pinchus M. Laufer, Office of the Deputy Commissioner for Patent Examination Policy, by telephone at 571-272-7726; or by facsimile transmission to 571-273-7726, marked to the attention of Pinchus M. Laufer; or by mail addressed to: Box Comments Patents, Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450.

SUPPLEMENTARY INFORMATION:

New patent applications are normally taken up for examination in the order of their United States filing date. See section 708 of the Manual of Patent Examining Procedure (8th ed. 2001) (Rev. 7, July 2008) (MPEP). The USPTO has a procedure under which an application will be advanced out of turn (accorded special status) for examination if the applicant files a petition to make special with the appropriate showing. See 37 CFR 1.102 and MPEP § 708.02. The USPTO is providing an additional basis under which a small entity applicant may have an application accorded special status for examination if the applicant expressly abandons another copending unexamined application. The application for which special status is sought and the expressly abandoned application must either be owned by the same party or name at least one inventor in common. This procedure allows a small entity applicant who has multiple applications currently pending before the USPTO to have one of the applications accorded special status for examination if the applicant is willing to expressly abandon an application that has not been examined. 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 examination under Patent Application Backlog Reduction Stimulus Plan under the following conditions: (1) 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 CFR 1.27; (2) the applicant has another copending nonprovisional application that has an actual filing date earlier than October 1, 2009, and is complete under 37 CFR 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); (3) the application for which special status is sought and the other copending nonprovisional application either are owned by the same party as of October 1, 2009, or name at least one inventor in common; (4) the applicant files a letter of express abandonment under 37 CFR 1.138(a), signed in compliance with 37 CFR 1.33(b)(1), (b)(3), or (b)(4) (37 CFR 1.138(b)), in the copending 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 (5) the applicant files a petition under 37 CFR 1.102 in the application for which special status is sought. The petition under 37 CFR 1.102 must identify the basis under which special status is being sought (express abandonment of another copending application), and include a copy of a letter of express abandonment and the statement that accompanies the letter of express abandonment from the copending application that has been expressly abandoned. The $130.00 fee for a petition under 37 CFR 1.102 (other than those enumerated in 37 CFR 1.102(c)) is hereby sua sponte waived for petitions to make special based upon the procedure specified in this notice. The express abandonment of an application may not form the basis for more than one petition under 37 CFR 1.102.

Applications that are accorded special status are generally placed on the examiner's special docket throughout its entire course of prosecution before the examiner, and have special status in any appeal to the Board of Patent Appeals and Interferences (BPAI) and also in the patent publication process. See MPEP §§ 708.01 and 1309. An application accorded special status under the procedure specified in this notice, however, will be placed on the examiner's amended docket, rather than the examiner's special docket, after the first Office action (which may be an Office action containing only a restriction requirement). Applications that are accorded special status under the procedure specified in this notice will be placed on the examiner's special docket prior to the first Office action, and will have special status in any appeal to the BPAI and also in the patent publication process.

An application that is accorded special status under the procedure specified in this notice will not be subject to the requirements of or the time frames provided for in the accelerated examination program. For an explanation of the accelerated examination program, see MPEP § 708.02(a) and Changes to Practice for Petitions in Patent Applications To Make Special and for Accelerated Examination, 71 FR 36323 (June 26, 2006), 1308 Off. Gaz. Pat. Office 106 (July 18, 2006) (notice). Any applicant who wants the application to be processed under the time frames provided for in the accelerated examination program must file the application under the accelerated examination program. In addition, continuing applications will not automatically be accorded special status based on papers filed with the petition in the parent application. Each continuing application must on its own meet all requirements for special status.

The procedure specified in this notice is applicable to small entity applicants having multiple applications currently pending before the USPTO and who are willing to expressly abandon one application to have another application accorded special status for examination. The USPTO appreciates that there are small entity applicants who are willing to expressly abandon an application, but who have only a single application pending before the USPTO or no application for which special status for examination is desired. Applicants are reminded that 37 CFR 1.138(d) provides a procedure by which an applicant may obtain a refund of the search fee and excess claims fee paid in an application by submitting a petition (requires no fee) and letter of express abandonment. See MPEP § 711. 01. The procedure set forth in 37 CFR 1.138(d), however, is applicable only to applications filed under 35 U.S.C. 111(a) on or after December 8, 2004.

Applicants are cautioned to exercise care in filing a letter of express abandonment in an application. The USPTO cannot revive an application once the letter of express abandonment is recognized by the USPTO because the application was expressly and intentionally abandoned by the applicant. See MPEP §§ 711.01 and 711.03(c).

The procedure for petition under 37 CFR 1.102 to make an application special specified in this notice is being adopted on a temporary basis until February 28, 2010. The USPTO may extend the procedures set forth in this notice to all applicants (on either a temporary or permanent basis), or may also discontinue the procedures set forth in this notice after January 31, 2010, depending upon the results of the Patent Application Backlog Reduction Stimulus Plan. For a petition under 37 CFR 1.102 to be granted under the procedure specified in this notice (unless the Patent Application Backlog Reduction Stimulus Plan is extended by a subsequent notice), the petition under 37 CFR 1.102 and the letter of express abandonment and its accompanying statement must be filed on or before February 28, 2010.

Dated: November 6, 2009.

David J. Kappos,

Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office.