2010-15306. Expansion and Extension of the 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) published a notice in the Federal Register providing an additional temporary basis (the Patent Application Backlog Reduction Stimulus Plan) 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 Patent Application Backlog Reduction Stimulus Plan allows 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 is expanding the Patent Application Backlog Reduction Stimulus Plan to permit all applicants to participate by eliminating the small entity status requirement and adding a few new requirements in view of the expansion. The program is also being extended until December 31, 2010, or the date that 10,000 applications have been accorded special status for examination under the Patent Application Backlog Reduction Stimulus Plan, whichever occurs earlier. These changes allow more applicants to take advantage of the program.

DATES:

Effective Date: The changes in this notice are effective on June 24, 2010. The Patent Application Backlog Reduction Stimulus Plan became effective on November 27, 2009.

FOR FURTHER INFORMATION CONTACT:

Pinchus M. Laufer, Office of the Associate Commissioner for Patent Examination Policy, by telephone at 571-272-7726; or via e-mail addressed to [e-mail]; or by mail addressed to: Box Comments Patents, Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450.

SUPPLEMENTARY INFORMATION:

The USPTO published a notice in the Federal Register providing an additional temporary basis (the Patent Application Backlog Reduction Stimulus Plan) under which a small entity applicant may have an application accorded special status for examination if the applicant expressly abandons another copending unexamined application. See Patent Application Backlog Reduction Stimulus Plan, 74 FR 62285 (Nov. 27, 2009), 1349 Off. Gaz. Pat. Off. 304 (Dec. 22, 2009) (hereinafter “Backlog Reduction Notice”). The Patent Application Backlog Reduction Stimulus Plan allows 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 indicated that the program would last for a period ending on February 28, 2010, but may be extended for an additional time period thereafter. See Patent Application Backlog Reduction Stimulus Plan, 74 FR at 62287, 1349 Off. Gaz. Pat. Off. at 306. The USPTO extended the Patent Application Backlog Reduction Stimulus Plan until June 30, 2010. See Extension of the Patent Application Backlog Reduction Stimulus Plan, 75 FR 5041 (Feb. 1, 2010), 1351 Off. Gaz. Pat. Off. 202 (Feb. 23, 2010). The notice stated that the USPTO may further 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 June 30, 2010, depending upon the results of the Patent Application Backlog Reduction Stimulus Plan.

The Backlog Reduction Notice required inter alia that 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. The program is being expanded to permit all applicants to participate by eliminating the small entity status requirement and adding a few new requirements in view of the expansion. The modifications set forth in this notice will apply to any petitions that are filed on or after the publication date of this notice. This will permit more applications to qualify for the program and result in a greater reduction of the patent application backlog. Applicants may obtain special status for examination for as many as fifteen applications under this program.

Effective immediately, the USPTO will accord special status for examination to a patent application that has an actual filing date earlier than October 1, 2009, if the new requirements set forth in this notice are satisfied, and the conditions set forth in the Backlog Reduction Notice published on November 27, 2009, other than the small entity status requirement, are also satisfied. In view of the expansion, the following new requirements are added to the program: (1) The letter of express abandonment filed in the copending nonprovisional application must also include a statement that the applicant has not and will not file a new application that claims the same invention claimed in the expressly abandoned application (the phrase “same invention” has the same meaning as used in the context of statutory double patenting under 35 U.S.C. 101); (2) the applicant has not received special status for more than fourteen other applications under this program; and (3) the petition under 37 CFR 1.102 must also: (i) Include a specific identification of the relationship between the applications that qualifies the application for special status (e.g., identifying, by name, a common inventor, assignee or owner); (ii) identify, by application number if available, the application that is being expressly abandoned; (iii) provide a statement certifying that applicant has not filed petitions in more than fourteen other applications requesting special status under this program; and (iv) provide a statement that applicant agrees to make an election without traverse in a telephonic interview if the Office determines that the claims of the application to be made special are directed to two or more independent and distinct inventions (see 35 U.S.C. 121, 37 CFR 1.141-142). If the examiner cannot reach the applicant after a reasonable effort or applicant refuses to make an election in a telephonic interview, the examiner will treat the first claimed invention as constructively elected without traverse for examination. In addition, the USPTO will accord special status for examination under the Patent Application Backlog Reduction Stimulus Plan to only the first 10,000 applications that meet the requirements of the Patent Application Backlog Reduction Stimulus Plan.

For the purpose of the certification that applicant has not filed petitions in more than fourteen other applications requesting special status under this program, any application that is assigned to or subject to an obligation to assign to an entity or is owned by that entity for which a petition under this program has been filed is considered to be a petition filed by applicant. Thus, the certification that applicant has not filed petitions in more than fourteen other applications requesting special status under this program is based upon ownership.

The procedure specified in the Backlog Reduction Notice and this notice is applicable to 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 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 the Backlog Reduction Notice and this notice is being adopted on a temporary basis until December 31, 2010. For a petition under 37 CFR 1.102 to be granted under the procedure specified in this notice, the petition under 37 CFR 1.102 and the letter of express abandonment and its accompanying statement must be filed on or before December 31, 2010, and must be among the first 10,000 applications accorded special status for examination under the Patent Application Backlog Reduction Stimulus Plan.

Dated: June 18, 2010.

David J. Kappos,

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