By Sarah Fendrick --
In an effort to reduce the backlog of unexamined patent applications pending before the U.S. Patent and Trademark Office, the Office has implemented a procedure that allows small entities to have an application accorded special status examination if the applicant expressly abandons another co-pending unexamined application. In a Federal Register notice issued on November 27, 2009, the Office explains that "this procedure will allow small entity applicants 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."
As detailed in the notice, the USPTO will accord special status for examination 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 C.R.F. § 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 C.F.R. § 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 C.F.R. § 1.138(a), signed in compliance with 37 C.F.R. § 1.33(b)(1), (b)(3), or (b)(4) (37 C.F.R. § 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 of the 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 C.F.R. § 1.102 in the application for which special status is sought. The petition under 37 C.F.R. § 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 has been expressly abandoned.
Generally applications that are accorded special status will be placed on an examiner's special docket throughout the entire course of prosecution. Applications that are accorded special status under the procedure will be placed on the examiner's special docket, prior to the first office action and will have special status for appeals and the patent publication process, but will be placed on the examiner's amended docket following the first office action. Continuing applications will not automatically be granted special status, rather each application must individually meet the conditions provided in the notice.
The procedure is being temporarily implemented and will only be effective until February 28, 2010. Upon review, the Office may extend the procedure in time or may extend the set of applicants that will be able to file for special status under the procedure. To be granted special status under the procedure, the petition under 37 C.F.R. § 1.102 and the letter of express abandonment and its accompanying statement must be filed on or before February 28, 2010.