Jumpstart Your Patent Application Through Early Examination


The Patent and Trademark Office (“PTO”) published an official notice titled “Patent Application Backlog Reduction Stimulus Plan” on Wednesday, November 25, 2009 that it will now advance applications out of turn for small entity patent applicants on a temporary basis (74 Fed. Reg. 62,285). The downside of this PTO plan is that the patent application owner must abandon one copending patent application for each application it hopes to expedite. The PTO has proposed this measure to reduce the number of applications pending for examination, both by reducing the PTO’s examination backlog through abandonments and by expediting selected patent applications through the examination process.

To take advantage of this limited-time opportunity, the following is generally required:

  • two non-provisional applications owned by the same party or with a common inventor;

  • the applications must have been filed with all formalities completed by Oct. 1, 2009;

  • small entity status is properly claimed in both applications;

  • the filing of a Petition under 37 C.F.R. § 1.102 which identifies the abandonment of a copending application as the basis for expedited examination; and

  • the filing of an executed letter of express abandonment under 37 C.F.R. § 1.138(a) in one of the copending non-provisional applications with a statement that no priority claim to the abandoned application will be filed later and that no request for fee refunds will be made.

Small entities should act quickly to evaluate participation in this opportunity, because it expires on February 28, 2010. The term “small entity” refers to patent application owners who meet one of the following definitions: (1) companies having fewer than 500 employees; (2) independent inventor(s) or individuals seeking patent rights on their own and not in association with a company; and (3) non-profit institutions, such as universities, in each case having no obligation to grant, convey, or license the invention to another entity that doesn’t qualify for small entity status.

While this opportunity to expedite examination may be desirable, it does not guarantee success in the examination of the expedited patent application. Careful consideration should also be given to the commercial value of applications that might be abandoned as part of this process, as well as other potential claim coverage strategies. If you have any questions regarding your specific situation, feel free to contact any of the patent lawyers at Haynes and Boone, LLP.

Jeffrey Wolfson

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