• USPTO “Project Exchange”: A Chance to Advance Your Most Important Patent Applications out of Turn
  • July 26, 2010 | Author: Kyle Petaja
  • Law Firm: Venable LLP - Washington Office
  • The U.S. Patent and Trademark Office recently announced the expansion of the “Project Exchange” program.  Under the terms of this program, any applicant with more than one pending patent application can receive expedited review of one application in exchange for withdrawing a second.  Applicants wishing to take advantage of “Project Exchange” must act prior to December 31, 2010.  Details follow.

    Criteria for eligibility

    In order to enroll in the program, an Applicant need only file a petition to make special and make the appropriate showing.  While the exact details of the expanded “Project Exchange” program have not yet been published in the Federal Register, they are likely to parallel those of the current program (which is limited to small entities).  See The Patent Application Backlog Reduction Stimulus Plan, 74 Fed. Reg. 227, 62285 (November 27, 2009):

    • Both the subject application and the application being abandoned must have been (1) filed and completed under 37 CFR 1.53 before the inception of the program and (2) be either owned by the same party as the inception of the program or name at least one inventor in common.
    • The applicant must file a letter of express abandonment under 37 CFR 1.138(a) in the copending nonprovisional application that is to be abandoned before that application 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 and that the applicant agrees not to request a refund of any fees paid in the expressly abandoned application.
    • The submission of a petition under 37 CFR 1.102 in the application for which special status is sought identifying the basis under which special status is being sought (express abandonment of another copending application) and including a copy of a letter of express abandonment and the statement that accompanies the letter of express abandonment from the copending application that was expressly abandoned.   

    Potential program benefits and a caveat

    The expanded Project Exchange will give applicants with multiple pending and unexamined applications the ability to expedite the examination of important applications.  This is likely to be especially beneficial for applicants who maintain a large portfolio of pending unexamined applications and who has a firm grasp on whether a pending application is, for example, of questionable commercial value and/or patentability.

    An Applicant may identify applications which may be expressly abandoned and those worthy of expedited prosecution through a careful review of their pending unexamined applications.  An Applicant may also carefully consider placing particular emphasis on examination and search reports received from foreign patent offices in connection with pending unexamined U.S. applications.  Such examination and search reports may help Applicants identify those applications which are highly unlikely to succeed in the U.S. Patent Office.

    However, it is worth noting that by expressly abandoning an application under this program, you are not only losing the application, but the right to claim priority to that application.  Therefore, exceptional care must be taken in selecting an application to be abandoned.  This may be particularly important for small entities who have pending applications for related, or very similar, inventions as an express abandonment of the subject matter of one application could be seen as an abandonment of that same subject matter in the remaining applications.