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(253) DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
[Docket No.: PTO-P-2009-0040]
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
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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
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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.
November 6, 2009 DAVID J. KAPPOS
Under Secretary of Commerce for
Intellectual Property and Director of the
United States Patent and Trademark Office
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