The United States Patent and Trademark Office (USPTO) is providing a temporary program under which an application will be advanced out of turn for examination, i.e., accorded “special” status, upon the filing of a petition. This temporary program allows applicants having multiple applications co-pending before the USPTO to have greater control over the timing of the examination of their applications. In turn for according special status to an application, the program also provides for the stimulation of a reduction of the backlog of unexamined patent applications pending before the USPTO by requiring applicants to expressly abandon a co-pending application for each application for which a petition is filed for achieving special status. There is no fee for the filing of a petition under this program and the program is available for only the first 10,000 applications.
If an applicant has a relatively important application for which expeditious prosecution would be beneficial, and a relatively unimportant co-pending application that is no longer desired, the USPTO is willing to examine the important application out of turn for the express abandonment of the less important patent application.
The conditions for being accorded special status for examination are as follows:
- 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 complete co-pending nonprovisional application that has an actual filing date earlier than October 1, 2009.
- The applications under numbers one and two above must be either owned by the same party as of October 1, 2009, or name at least one inventor in common.
- The applicant must file a letter of express abandonment for the application under number two above before it has been taken up for examination. The applicant must include the following statements with the letter of express abandonment:
a. The applicant has not and will not file an application that claims the benefit of the expressly abandoned application;
b. The applicant agrees not to request a refund of any fees paid in the expressly abandoned application;
c. 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 applicant must file a petition for the application under number one above. The petition must:
a) Identify the expressly abandoned co-pending application as the basis for the petition;
b) Include copies of the letter of express abandonment and of the statements provided in number four above;
c) Identify the relationship between the applications that qualifies the application for special status, for example, name of a common inventor or owner;
d) Identify the application that is being expressly abandoned, for example, by providing its application number;
e) Provide a statement certifying that applicant has not filed petitions in more than 14 other applications requesting special status under this program;
f) 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.
The predecessor of this program was available only to small entity applicants, but being a small entity is no longer a requirement. The program available to small entities only has provided a more than 70 percent rate of granted petitions.