[Federal Register Volume 75, Number 121 (Thursday, June 24, 2010)]
[Notices]
[Pages 36063-36064]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2010-15306]


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DEPARTMENT OF COMMERCE

United States Patent and Trademark Office

[Docket No.: PTO-P-2010-0048]


Expansion and Extension of the 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) 
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 [email protected]; 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

[[Page 36064]]

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 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 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 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.
[FR Doc. 2010-15306 Filed 6-23-10; 8:45 am]
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