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Clearing the Shipping Lanes: Reduce Backlog to Accelerate Examination

December 10, 2009

In an effort to accelerate the patenting process for small entity applicants1 and to reduce the backlog of unexamined patent applications, the U.S. Patent and Trademark Office ("USPTO") recently issued new procedural rules under the title “Patent Application Backlog Reduction Stimulus Plan”2 (the "Plan"). Under normal Office procedures, new patent applications are taken up for examination in the order in which they are filed, much like a queue. Under the new Plan, however, applications can be made special and advanced to the front of the examination queue if the applicant agrees to expressly abandon a co-pending application owned by the same applicant or having a common inventor. Thus, a patent application may be examined sooner by the USPTO, and consequently a patent may issue sooner under the Plan than under normal procedures. Although there is basis for existing petitions to make an application special,3 this new basis is in a temporary testing phase and is set to expire February 28, 2010.

Requirements Under the Plan 

Only small entities are eligible under the Plan. Several requirements, however, must be met by small entity applicants desiring to take advantage of this new and temporary special status to an application. The Plan sets forth the following general conditions:

  • there must be two co-pending, non-provisional applications owned by the same party as of October 1, 2009 or having at least one common inventor;
  • applications must have been filed with all formalities under 37 C.F.R. 1.534 completed by October 1, 2009;
  • small entity status must have been properly claimed in both applications under 37 C.F.R 1.27;5
  • filing a letter of express abandonment under 37 C.F.R. 1.138(a), signed in compliance with 37 C.F.R 1.138(b), in one of the co-pending, non-provisional application before it has been taken up for examination, and including 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, and that the applicant agrees not to request a refund of any fees paid in the expressly abandoned application; and
  • filing a Petition under 37 C.F.R. 1.102 in the application for which special status is sought that identifies the express abandonment of a co-pending application as the basis for special status and including a copy of the letter of express abandonment filed in the co-pending, non-provisional application. 

Effects of New Special Status Rules on Patent Practice

Director Kappos of the USPTO stated that “the program will accelerate protection for important innovations from independent inventors while reducing our unacceptable backlog.”6  The USPTO hopes that "this procedure will allow 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."  

Before petitioning to make an application special under the Plan, applicants should be aware of the effects of expressly abandoning an application. Specifically, because the application is considered expressly and intentionally abandoned, the USPTO cannot revive an application once the letter of express abandonment is recognized by the USPTO. Current rules allow revival of abandoned applications only when the abandonment was unavoidable or unintentional. Thus, small entity applicants should carefully consider whether to pursue a petition for special status under the Plan.

Small Entity Strategies

If after considering the benefits, effects, and risks of expressly abandoning an application a small entity applicant decides to pursue special status under the Plan, the applicant will then have to determine which co-pending application to expressly abandon. The applicant, for example, may identify the co-pending application that is the least commercially viable, not likely to result in a patent, or least likely to offer significant protection. Of course, a review of co-pending applications may indicate that the applicant is better off allowing for the normal patent examination to take place while preserving all of the potential rights in the co-pending applications.

Large Entity Impacts and Strategies

By reducing the backlog of small entity applications, larger entities may also indirectly benefit from the Plan. Current backlogs exist in several technology and art units, regardless of entity size.  As an example, it takes more than two years before a new application is substantively reviewed by an examiner and a first office action is issued in the following technology groups: chemical and materials engineering, computer architecture, networks and multiplexing, and communications.8 Accordingly, if the number of small entity applications is reduced, the large entity applications in high pendency technology areas are also likely to move up in the queue. Thus, large entities could benefit from an extension of the expiration period beyond the February 2010 expiration date, as well as from having Director Kappos extend the program to large entities. Large entities interested in pursuing these benefits should write a letter to Director Kappos requesting such extensions in time and to whom the new procedures should apply. Letters may be addressed to: 

Director of the U.S. Patent and Trademark Office
P.O. Box 1450
Alexandria, VA 22313-14509


Under Director Kappos, the USPTO appears committed to reducing the Office's backlog of unexamined patent applications by providing a new and temporary basis under the Plan to make an application special in exchange for expressly abandoning a co-pending application owned by the same applicant or having a common inventor. Although limited to small entity applicants at this stage, larger entity applicants may indirectly benefit from an overall reduction in pending cases. With new Director Kappos at the helm of the USPTO, the goals of acceleration and backlog reduction are noble, much needed, and will orient the USPTO in the right direction. Whether a significant reduction in backlog occurs with the Plan, however, will need to be seen. To have a more significant impact, it is hoped that Director Kappos will extend the Plan in both duration and to whom it applies.


1 Generally defined as an individual, a non-profit institution, or companies having less than 500 employees, in each case having no obligation to grant, convey, or license the invention to another entity that doesn’t qualify for small entity status.  See 37 C.F.R. 1.27.
2 See Patent Application Backlog Reduction Stimulus Plan, 74 Fed. Reg. 62,285, 62,285-87 (Nov. 27, 2009) available at http://www.uspto.gov/patents/law/notices/74fr62285.pdf.
3 Under 37 C.F.R. 1.102 and M.P.E.P. § 708.02, an application may be advanced out of turn (accorded special status) for examination if the applicant files a petition to make special with the appropriate showing.  A petition to make an application special can be filed without a fee if the basis for the petition is:
(1) The applicant's age or health; or
(2) That the invention will materially:
(i) Enhance the quality of the environment;
(ii) Contribute to the development or conservation of energy resources; or
(iii) Contribute to countering terrorism.
Under a 12-month program effective December 8, 2009, applications may also be accorded special status if the basis for the petition pertains to green technologies, including greenhouse gas reduction.  See Pilot Program for Green Technologies Including Greenhouse Gas Reduction, 74 Fed. Reg. 64,666, 64,666-64,669 (December 8, 2009) available at http://www.uspto.gov/patents/law/notices/74fr64666.pdf.
4 Under 37 C.F.R. 1.53(f), application contains an executed oath or declaration and the filing fee, search fee, examination fee, any applicable application size fee, and payment of any applicable excess claims.
5 See footnote 1 herein.
6 See Press Release, United States Patent and Trademark Office, USPTO Pilots Program to Accelerate the Patent Process for Small Entity Inventors (Nov. 6, 2009) available at http://www.uspto.gov/news/pr/2009/09_26.jsp.
7 See Patent Application Backlog Reduction Stimulus Plan, 74 Fed. Reg. at 62,286.
8 See USPTO, Performance and Accountability Report Fiscal Year 2009, at 115 tbl. 4 (2009) available at http://www.uspto.gov/about/stratplan/ar/2009/2009annualreport.pdf.
9 Alternatively, large entities may address their letters to: Mail Stop Comments-Patents, Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313–1450.