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BUMP 'N' DUMP: ACCELERATING PROSECUTION OF ONE APPLICATION AT THE EXPENSE OF SACRIFICING ANOTHER, HAS BEEN EXTENDED

BUMP 'N' DUMP:  ACCELERATING PROSECUTION OF ONE APPLICATION AT THE EXPENSE OF SACRIFICING ANOTHER, HAS BEEN EXTENDED
by Jason Sedano, Patent Engineer

A patent can be a powerful business tool that may be used to generate revenue, add value to a company or product, or prevent a competitor from engaging in infringing activities. Because these benefits only come once a patent is issued, an applicant’s objective is usually to get through the patent application process as quickly as possible to reduce actual costs and minimize lost opportunity costs. However, with a backlog of more than 700,000 unexamined patent applications, it can take between 29-47 months to complete the process. Because of this, the United States Patent and Trademark Office (“USPTO”) allows an application to be moved ahead in the examination queue through a handful of special programs.

As of November 22, 2010, the USPTO has extended one such program, namely, the Patent Application Backlog Reduction Stimulus Plan (hereinafter “Plan”), which allows an applicant to file a Petition to Make Special. The extension will last until December 31, 2011, or when 10,000 applications have been granted special status. The Plan has been nicknamed the “Bump’n’Dump Plan,” which captures the idea that one application can be “dumped” in order to “bump” another application’s examination.

The USPTO hopes the revisions to the Plan will promote increased participation in the Plan. During the past year the Plan has led to only 98 successful petitions. This low number may be attributed to the fact that the Plan was only available to small entity applicants for half of the past year. Going forward, the Plan is available to all applicants.

Under the Plan, one of the applicant’s applications is granted special status for examination if the applicant expressly abandons another co-pending and unexamined application. The special status provides accelerated examination in the following three scenarios:
1) prior to the first communication on merits, i.e., first Office Action;
2) prior to any appeal to the Board of Patent Appeals and Interferences; and
3) prior to the patent publication process.

It is important to note that, unlike the Accelerated Examination Program and acceleration due to applicant’s age or health, the Plan only provides acceleration during the above three scenarios and not throughout the entire prosecution.

In order for an applicant’s petition to be granted, certain conditions must be met regarding both the application that is being abandoned and the application that is being accelerated. First, both applications must be non-provisional applications with an actual filing date earlier than October 1, 2009. Also, both applications must be either owned by the same party as of October 1, 2009, or name at least one common inventor. Finally, the application that the applicant intends to abandon must be unexamined.

For the application that the applicant is going to abandon, the applicant must file a letter of express abandonment. The letter must state the applicant has not and will not file an application that claims benefit to the abandoned application and state the applicant agrees not to request a refund of any fees. The letter must also state the applicant will not file a new application that claims the same invention claimed in the expressly abandoned application. Second, the applicant needs to file a petition under 37 CFR § 1.102 in the application for which special status is sought. The petition must identify the basis for special status, which is the express abandonment of another co-pending application, and also provide the specific relationship between the applications such as common owner or inventor.

There are many scenarios in which applicants may benefit from using the Plan. The following are examples of such scenarios.

Scenario 1 - The applicant has two unexamined patent applications – one in an area that, due to market conditions, is now considered to be of critical importance to the applicant’s business and another application that is non-critical to the applicant’s business. In this scenario, the applicant should consider abandoning the non-critical application in favor of the business critical application.

Scenario 2 – Based on competitive intelligence obtained by the applicant, the applicant may determine that other industry participants are creating products that overlap with the subject matter of a pending application owned by the applicant. In this scenario, the applicant should consider identifying a non-business critical patent application to abandon in favor of advancing a patent application that may provide the applicant with a competitive advantage.

Scenario 3 – As part of the active management of its patent portfolio, an applicant may identify various pending patent applications that should be abandoned for business reasons. In such cases, the applicant may advance prosecution of applications that are considered to be more important and actively abandon applications that would otherwise be passively abandoned by the applicant (e.g., by not responding to the first office action).

While the Plan provides some significant benefits to applicants, it should be noted that the USPTO has placed some important limits on the Plan. For example, the USPTO has placed a limit per applicant of 14 petitions under the Plan. Also, the express abandonment of an application may not form the basis for more than one petition under 37 CFR § 1.102 and the abandonment only accelerates one other application. Finally, the USPTO cannot revive an expressly and intentionally abandoned application, so careful consideration should be taken in deciding to pursue this acceleration method.


To view the statistics provided on the USPTO website, please click here.
To view the comparison chart of domestic acceleration initiatives by the USPTO, please click here.
To view the specific conditions as listed by the USPTO, please click here.
 

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