IP Update. Vol. 8, No. 2 (26 May 2010)

Editors: Marc S. Weiner, Esq. and Nicholas P. Godici

In this Issue:

USPTO Expands "Project Exchange" to Include Applications Filed by Large Entities

The USPTO has announced that Project Exchange will now be available to all applicants. Project Exchange is a program implemented by the USPTO in November 2009 in which an applicant may be granted "special" status for a pending application in exchange for expressly abandoning a second pending application. This program was previously limited to small entity applicants. An application granted "special" status will be advanced in the examination queue ahead of earlier filed applications.

To be eligible for this exchange program each application must have been pending in the USPTO before October 1, 2009 and must be a complete application under 37 CFR 1.53. The applications must be owned by the same party or name at least one common inventor. The applicant must file a letter of express abandonment in the first application before the application is taken up for examination and must state that the applicant will not file an application that claims the benefit of the expressly abandoned application. A second application may then be granted "special status." Project Exchange allows the applicant to have greater control over the priority with which their applications are examined while stimulating a reduction of the backlog of unexamined applications. The program runs through December 31, 2010 and is limited to 15 applications per entity.

For more information, please see the USPTO press release.

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USPTO Eliminates Classification Requirement in Green Technology Pilot Program

The USPTO has announced that the requirements for participation in the Green Technology pilot program have been modified and it is no longer necessary that the application be classified in any particular U.S. classification.

In December 2009 the USPTO announced the Green technology pilot program, which permits patent applications pertaining to environmental quality, energy conservation, development of renewable energy resources, and greenhouse gas emission reduction to be advanced out of turn for examination. Originally, it was required that the application be classified in particular classes and subclasses in the U.S. classification system to qualify. That requirement has now been eliminated and applications will be evaluated for eligibility for the program based on the justification submitted in the petition for acceptance into the program.

Further details can be found here.

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USPTO Eliminates Patent Prosecution Highway (PPH) Petition Fee

USPTO has announced that there will no longer be a petition fee for participation in the PPH programs. The USPTO has decided to eliminate the $130 fee for participation in the PPH programs to encourage more applicants to take advantage of the programs. PPH programs have been established between the USPTO and ten Intellectual Property Offices worldwide. Under the PPH programs, if an application filed in an Office of First Filing (OFF) receives an indication that at least one claim is patentable, a corresponding application with corresponding claims filed in the USPTO as the Office of Second Filing (OSF) may be advanced out of turn for examination.

More information can be found here.

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