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Thursday, 20 May 2010

USPTO: give one up, get one fast

As every patent applicant knows, some inventions are worth more than others. Some applications should lead to granted patents as quickly as possible, while with others, the applicant is quite happy that they linger in limbo.

The USPTO offers an interesting deal to applicants with more than one application: give one application up in exchange for expedited examination of another application. This program has been available for a while, but the USPTO announced on 17 May that it will now be open to all applicants:

Under the expanded Project Exchange, which will take effect with the publication of the Federal Register notice in the coming weeks, any applicant with more than one application, filed prior to the inception of the program, currently pending at the USPTO can receive expedited review of one application in exchange for withdrawing an unexamined application. The expanded Project Exchange will give all applicants with multiple filings greater control over the priority in which their applications are examined and enable priority applications to be examined on an expedited basis. By providing incentives for applicants to withdraw unexamined applications that may no longer be important to them, Project Exchange is expected to appreciably reduce the backlog of unexamined patent applications pending before the USPTO.

The expanded Project Exchange will be limited to 15 applications per entity through December 31, 2010.

What do you think of the idea? Is this going to reduce the backlog of unexamined patent applications substantially?


Gentoo said...

I don't understand. Is this a tacit admission that some of the applications are rubbish?

Otherwise, if I have invented two different forms of a perpetual motion engine or other riches of Croeus invention, why would I withdraw one?

Anonymous said...

What do you think of the idea? Is this going to reduce the backlog of unexamined patent applications substantially?

Nope. Simply because patent applications are not filed with that objective in mind. But, yes, this should give potential infringers a reason to smile, and wait for the patent applicant to withdraw its application on technologies that might interest them.

Anonymous said...

"Is this a tacit admission that some of the applications are rubbish?"

I don't think so, although some probably are.

The commercial value of an application may change over time. i.e. something expected to be an important market might turn out not to be - imagine a patent application for a new photo film developiong process file immediately before the advent of digital photography.

Applicants with large portfolios very likely maintain applications (for perfectly good inventions) which may not be of immediate commercial interest. I expect the idea is to provide an incentive for such applicants withdraw those applications and hence ease the backlog.

Not having read the rules - I wonder whether those with the funds would consider "sacrificial applications" filed and withdrawn merely to expedite prosecution of others.

MaxDrei said...

I see this as a by-product of two things, namely:

1) Americans don't search before they draft and file

2) An EPO EESR, issuing soon after the end of the Paris year, can render nugatory the sister app, pending in the USPTO.

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