Client Alert

On November 22, 2010, the United States Patent and Trademark Office (USPTO) announced that its Patent Application Backlog Reduction Stimulus Plan, which allows applicants having multiple applications currently pending before the USPTO to have an application accorded special status for examination if the applicant expressly abandons another copending unexamined application, will be extended. Initially, the pilot program which began November 27, 2009, was set to expire on February 28, 2010. It was then extended to June 30, 2010, and later modified to eliminate the small entity requirement and further extended to December 31, 2010. The latest extension allows the program to run until 10,000 petitions for the plan have been granted or until December 31, 2011, whichever occurs earlier.

According to USPTO Director David Kappos, the program "is an important program in our effort to give applicants more control over when their applications are examined. By providing incentives for applicants to withdraw unexamined applications that may no longer be important to them, the program has the potential to help reduce the backlog of unexamined patent applications pending before the USPTO. We hope more applicants will take advantage of this opportunity to significantly reduce the examination time for their most important applications with the extended deadline."

Overview of the Patent Application Backlog Reduction Stimulus Plan
Patent applications filed under the Patent Application Backlog Reduction Stimulus Plan are advanced out of order and examined earlier. Currently, applicants can expect a first action on an application in just 49 days on average (compared to 25 months normally). These applications also have special status in an appeal to the Board of Patent Appeals and Interferences (BPAI) and during the publication process.

The requirements for an application to qualify for special status under the program include:

• The application for which special status is sought is a nonprovisional application that has an actual filing date earlier than October 1, 2009;
   
• 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);
   
• 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;
   
• 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
   
• 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.

Statistics
As of November 15, 2010, a total of 139 petitions have been filed, with 98 having been granted, less than 1% of the 10,000 application limit.

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This Client Alert is intended to provide information of general interest to the public and is not intended to offer legal advice about specific situations or problems. Brinks Hofer Gilson & Lione does not intend to create an attorney-client relationship by offering this information and review of the information shall not be deemed to create such a relationship. You should consult a lawyer if you have a legal matter requiring attention. For further information, please contact a Brinks Hofer Gilson & Lione lawyer.