Extending Patent Application Backlog Reduction Stimulus Plan

By Gene Quinn
November 22, 2010

The United States Patent and Trademark Office today announced the deadline extension of its Project Exchange through December 31, 2011.  The Federal Register Notice announcing the extension refers to Project Exchange as the “Patent Application Backlog Reduction Stimulus Plan,” which I find rather amusing.  I guess the official name for Project Exchange came into being before we were all so Stimulus Plan weary.

OK, enough. Project Exchange is far too important to applicants who qualify to make fun about it given the unfortunate official name. Under Project Exchange, any applicant with more than one application filed prior to October 1, 2009, that is currently pending at the USPTO, can receive expedited review of one application in exchange for the withdrawal of an unexamined application, thereby speeding up consideration and the time it takes to get a patent issued.

Project Exchange allows applicants having multiple applications currently pending before the USPTO to prioritize which their applications are examined.  The goal of Project Exchange is two-fold. First, to accelerate applications that are likely more meaningful and hopefully will relate to technologies that could result in job creation, and second, through the express abandonment of pending applications participants giving up on an application will necessarily reduce the backlog of unexamined patent applications.

Initially Project Exchange was only open to small entity applications, and was announced to run for a period ending on February 28, 2010. Subsequently, the USPTO extended the plan for an additional four months to June 30, 2010. Subsequently to that extension, the USPTO expanded the plan to eliminate the small entity requirement and further extended its duration to expire at the earlier of the December 31, 2010 date, or the date that 10,000 applications have been accorded special status under this plan. Today the USPTO announces that Project Exchange is being extended until December 31, 2011, or until such time as 10,000 petitions have been granted.

“Project Exchange is an important program in our effort to give applicants more control over when their applications are examined,” said Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos. “By providing incentives for applicants to withdraw unexamined applications that may no longer be important to them, the program has the potential to help reduce the backlog of unexamined patent applications pending before the USPTO. We hope more applicants will take advantage of this opportunity to significantly reduce the examination time for their most important applications with the extended deadline.”

The program will continue on a temporary basis. The USPTO may further extend this plan (on either a temporary or permanent basis), or may discontinue the plan altogether after December 31, 2011, even if 10,000 petitions have not been granted. Program participants are limited to 15 applications, but given the number of petitions received so far that does not seem to be a meaningful limitation.

As of November 15, 2010, a total of 139 petitions have been filed, with 98 having been granted. See Project Exchange Report Summary.  This seems incredibly low and almost unbelievable.  True, there are some industries that are not interested in faster patents, such at the biotechnology industry (in part), the pharmaceutical industry and many Universities.  Having said that, however,

So why are there not more people taking advantage of Project Exchange? I couldn’t tell you really. For many small businesses and independent inventors the problem is they just don’t have any more than one application pending, so they simply cannot take advantage of project exchange. In my own personal situation I would have taken advantage of Project Exchange, but it started just after I received a First Office Action in my own patent application. Still, there should be many other inventors and businesses that could benefit from abandoning an application in exchange for advancing one out of turn, particularly if the second filed application is a Continuation-in-Part or an application that specifically incorporated by reference the previous application that would be abandoned.

Some at the Patent Office seem to be of the belief that one of the reasons that Project Exchange has not been more popular is the fact that people still don’t know about it, which I suppose could be correct.  It is unfortunate, however, to have this program in place, which could help applicants potentially receive patents faster and so few are taking advantage of it.

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and founder of IPWatchdog.com. Gene is also a principal lecturer in the PLI Patent Bar Review Course and an attorney with Widerman Malek. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 13 Comments comments.

  1. JNG November 22, 2010 5:36 pm

    Hi Gene
    I just don’t know of that many lawyers willing to risk malpractice by suggesting to a client that they abandon a case. The “abandoned” term is already laden with so many risks (would it contaminate other cases by some kind of equitable estoppel) that it is not something many would volunteer for. You could get much worse than you bargained for… for example, would you be precluded from raising the same claims in a related pending case that was somewhat further along?

    Sorry, looks too fraught with danger b/c like the rules on disclosures (IDS) they have potentially innumerable catastrophic consequences.

  2. Gene Quinn November 22, 2010 5:39 pm

    JNG-

    Good points. I suppose given the conservative nature of the patent bar and the relative activism of the Courts even something that could be beneficial might become otherwise untenable.

    -Gene

  3. Steve M November 22, 2010 5:44 pm

    Am surprised as well. Thought they’d reach 10,000 long before the end of 2010.

    A suggestion, Gene. Since you have contacts at the PTO, why not suggest they add/program in a short paragraph to some-to-all outgoing communications notifying the recipients of the program?

    Even if not applicable to the sent communication (e.g. first OA filed), it would alert the recipients to potential use w/other of their apps.

  4. Gene Quinn November 22, 2010 5:58 pm

    Excellent suggestion Steve.

    Let’s see what else folks point out here. I think JNG raises a good point as well. I wonder whether there is any way other than an express abandonment that could be used to provoke acceleration.

    -Gene

  5. Ron Hilton November 23, 2010 10:59 am

    I guess I’m not as surprised, having heard more complaints over the years regarding patent quality than pendency. I was more surprised at the tepid response to peer-to-patent, although the primary complainers regarding quality (i.e. open source) are fairly naive when it comes to intellectual property in general. I think the best answer to pendency will be three-track or a tiered structure like that, and that Project Exchange is more of a temporary fix.

  6. Mark Nowotarski November 23, 2010 2:03 pm

    There’s an interesting irony here which perhaps says a lot about human nature.

    The USPTO has instituted an innovative program to encourage applicants to abandon their patent applications when they don’t prove out in the marketplace.

    After almost a year of promotion and several modifications, this innovative program has had a less than a 1% sales success rate (98/10,000) in its own marketplace.

    And yet, the USPTO continues to promote the program instead of simply letting it go abandon.

  7. Blind Dogma November 23, 2010 4:03 pm

    “Tepid” is an overstatement.

  8. Ron Hilton November 23, 2010 5:19 pm

    Leaving aside the vital question of what adjectives to use, I would contend that Peer-to-Patent was more successful than Patent Exchange, and that some form of early input from the public will likely be adopted long-term. As the term “Stimulus” implies, Patent Exchange seems to be more of a short-term stop-gap measure until something like three-track or a similarly tiered approach is put in place.

  9. Stan E. Delo November 23, 2010 7:06 pm

    Hi Gene and et al,

    From an independent’s perspective, the idea of abandoning a filed formal application seems a bit onerous, as if I had gotten as far as filing said application, I would probably have spent well in excess of $7000 to get to that point. The other problem I see with this program is that it perhaps doesn’t anticipate the fickle nature of inventions, wherein an invention filed in 2010 might not really be viable for a few years, but which might turn out to be the next advent of disruptive technology when it becomes a bit grown up and respectable, let us say. Who could have anticipated the importance of the patent application filed by Bill Gates’ father who was a very prominent attorney here in Seattle for many years, for a *Personal computer” IBM thought they were looney, as they seemed to think that the market might only amount to about 5 or 10 thousand machines per year. What price do you pay for the invention of ailerons, as opposed to wing warping? It depends entirely upon how far along the technology happens to be I suppose, but perhaps explains going beyond a Tepid response, towards not even responding to an offer like expediting if you abandon inventions.

    For another instance, DK has proposed an expedited Green track, but it requires early publication of my application, which is simply not acceptable in my opinion. Even if I got a patent within two or three years, the overseas folks would probably have at least a one year window or more to copy it and begin importing into the US. Until I have a granted patent, I have absolutely no recourse to prevent piracy of the concept and it’s importation to my potential customers. Once the patent issues, I can go to the International Trade Commission and perhaps get it blocked from the US, but NOT until I have a valid US patent allowed.

    Regards,
    Stan~

  10. Blind Dogma November 24, 2010 1:42 pm

    Stan,

    You sound rational and even sage. That’s a dead give away that you have not been drinking my Kool-Aid.

    What’s up with that? I have several flavors that may interest you…

  11. Stan E. Delo November 24, 2010 2:28 pm

    BD-

    I came up with a New flavor this morning. How about Lime, just because it’s so Green, with a heavy infusion of Hemlock? In really dire circumstances, I like to follow it up with a double or triple shot of Gin or Tequila as seems appropriate at the time.

    Stan

  12. patent litigation November 29, 2010 6:56 pm

    I’m also surprised at the low participation rate in this and other Kappos programs, like the “green” tech fast-track initiative. However, as you point out, the patent bar tends toward the conservative, and patent lawyers might need more time than most to get used to certain new ideas. Also, though, I have to agree with the point about the 3-track program holding more apparent promise and less risk.
    http://www.aminn.org/webcast-aipr-patent-reform-presentation-us-patent-and-trademark-office

  13. Mark Nowotarski November 30, 2010 9:30 am

    patent lawyers might need more time than most to get used to certain new ideas.

    I wonder if this is because patent practitioners (attorneys/agents) don’t have a lot of competition.