[Federal Register Volume 74, Number 227 (Friday, November 27, 2009)]
[Notices]
[Pages 62285-62287]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: E9-28373]


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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.

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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

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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 Sec.  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 Sec. Sec.  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 
Sec.  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 Sec.  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

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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 
Sec. Sec.  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.
[FR Doc. E9-28373 Filed 11-25-09; 8:45 am]
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