By
Sarah Fendrick —

In
an effort to reduce the backlog of unexamined patent applications pending
before the U.S. Patent and Trademark Office, the Office has implemented a procedure that allows small
entities to have an application accorded special status examination if the
applicant expressly abandons another co-pending unexamined application.  In a Federal Register
notice issued on November 27, 2009, the Office explains that "this procedure
will allow small entity applicants 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."

As
detailed in the notice, the USPTO will accord special status for examination under
the following conditions:

(1)  The application for which special status is sought is a nonprovisional
application that has an actual filing date earlier than October 1, 2009, in
which the applicant has established small entity status under 37 C.R.F. § 1.27;

(2)  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);

(3)  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;

(4)  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

(5)  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.

Generally
applications that are accorded special status will be placed on an examiner's
special docket throughout the entire course of prosecution.  Applications that are accorded special
status under the procedure will be placed on the examiner's special docket,
prior to the first office action and will have special status for appeals and
the patent publication process, but will be placed on the examiner's amended
docket following the first office action.  Continuing applications will not automatically be granted special
status, rather each application must individually meet the conditions provided
in the notice.

The
procedure is being temporarily implemented and will only be effective until
February 28, 2010.  Upon review,
the Office may extend the procedure in time or may extend the set of applicants
that will be able to file for special status under the procedure.  To be granted
special status under the procedure, the petition under 37 C.F.R. § 1.102 and the
letter of express abandonment and its accompanying statement must be filed on
or before February 28, 2010.