USPTO Takes New Steps Toward Reducing Patent Application Backlog

Patent Attorney Stan ChalvireBy Stan Chalvire

The U.S. Patent and Trademark Office (USPTO) recently announced new measures which are being implemented in an attempt to reduce the current backlog of unexamined patent applications. New patent applications filed with the USPTO are normally taken up for examination in the order in which they were filed. Currently there are more than 700,000 patent applications before the USPTO awaiting examination, and it takes the USPTO over two years to issue a first office action examining the application.

The initiative provides small entity applicants (e.g., individual inventors, non-profit corporations or business entities having less than 500 employees) an opportunity to have their unexamined patent applications accorded special status under the Patent Application Backlog Reduction Stimulus Plan and examined out of turn. To be accorded special status, however, the small entity applicant must expressly abandon another unexamined patent application that is pending at the same time. Both the patent application for which special status is sought and the expressly abandoned patent application must either be owned by the same party or name at least one common inventor, and have been filed prior to October 1, 2009. It is anticipated that this procedure will provide small entity applicants having multiple co-pending applications the opportunity for greater control over the timeframe in which their applications are examined, while also meeting the USPTO’s objective of reducing the backlog of unexamined patent applications.

The procedures specified in the Federal Register notice by which applicants can accord their unexamined patent applications special status remains in effect until February 28, 2010, after which the USPTO may opt to extend such procedures to all applicants on either a temporary or permanent basis, or, alternatively, discontinue the procedures set forth in the notice.

Small entity applicants with multiple unexamined patent applications pending before the USPTO should consider whether the recently announced initiative to prioritize examination of eligible patent applications provides them with meaningful strategic advantages and whether such advantages outweigh the relative risks of expressly abandoning co-pending applications.

For more information, please contact Stanley Chalvire.

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