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Give A Little, Get A Little: New PTO Program Aims to Speed Examination

On November 27, 2009, the USPTO published the “Patent Application Reduction Stimulus Plan” (74 Fed. Reg. 62285) (a PDF is found at the end of this posting). Briefly, a procedure has been established whereby a small entity applicant can have a petition to make special granted in an unexamined application that is ready for examination by submitting a request that documents that the applicant has expressly abandoned one of their co-pending applications that was also ready for examination but had not been examined. There are lots of conditions attached. The applications must be co-owned or have an inventor in common. All the fees must be paid and the applications must have actual filing dates prior to October 1, 2009.

I can see this being of some use to small pharma/biotech companies that have filed on technologies that they could not partner, or have otherwise decided to cease developing, and wish to speed up prosecution of newer, or more promising technologies. The program may also be of value to universities who have multiple portfolios, including older ones that may have “safety continuations” pending, but otherwise have little life left in them. Of course, even under the old rules, petitions to make special were rarely used, since it took as long, or almost as long, to have them reviewed and granted as it did to get the first office action. If this program catches on, it will provide some measure of how many paperweight file wrappers are really in the Office. The notice indicates that the procedure may be extended to all applicants if it is deemed a success. If it flops, it may be withdrawn, but at least this would show that most applicants have not given up on the value of their IP. After all, it is the season of hope, and it is about time for a little hope after the Pandora’s Box of miseries the PTO has released into the prep/pros world for the last decade or so.

Patent Application Reducation Stimulus Plan.pdf

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