Top of Notices Top of Notices   (251)  December 27, 2011 US PATENT AND TRADEMARK OFFICE Print This Notice 1373 CNOG  1199 

Recent Notices and Requests for Comments Referenced Items (250, 251, 252, 253, 254, 255, 256, 257, 258, 259, 260, 261)
(251)                          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.

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 Pinchus.Laufer@uspto.gov; 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
Top of Notices Top of Notices   (251)  December 27, 2011 US PATENT AND TRADEMARK OFFICE 1373 CNOG  1200 

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 ifavailable, 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.

Top of Notices Top of Notices   (251)  December 27, 2011 US PATENT AND TRADEMARK OFFICE 1373 CNOG  1201 

   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.

June 18, 2010                                               DAVID J. KAPPOS
                                            Under Secretary of Commerce for
                                  Intellectual Property and Director of the
                                  United States Patent and Trademark Office

                                  [1356 OG 173]