The Patent Office of Argentina recently announced a temporary program which permits applications to swap places in the examination queue, such that a later-filed application can be examined sooner by taking the place of an earlier-filed application. Unlike a similar U.S. program, the Argentine program does not appear to require abandonment of the earlier application.
The Argentine Swapping Program
The Argentine program is governed by Resolution No. P-399, which is designed to permit applicants to accelerate examination of their most important applications.
In order to be eligible for this program, both applications must:
- be owned by the same entity
- be classified in the same subclass of the International Patent Classification system
- have been published
- have their substantive examination fees paid.
Requests to participate in this program must be filed by April 30, 2011.
Applicants who may be interested in this program should coordinate with their U.S. and Argentine patent counsel to determine if they have qualified applications.
The U.S. "Dump One, Bump One" Program
The Argentine program is quite different from the USPTO’s “Project Exchange” program (also referred to as “Dump One, Bump One"), which requires applicants to abandon the earlier-filed application in order to obtain prioritized examination of a later-filed one.
To participate in the U.S. program:
- both applications must have been filed before October 1, 2009.
- both applications must have been owned by the same party on October 1, 2009, or have at least one overlapping inventor.
- the applicant must file an express letter of abandonment in the application to be abandoned before a first Office Action is issued. The letter must include a statement that "the applicant has not and will not file an application that claims the benefit of the expressly abandoned application."
This temporary program has been extended to December 31, 2011.
Applications in the USPTO's Project Exchange Pilot Program will be placed on an examiner’s special docket prior to the first Office action, and will have special status in any Board appeal and in the patent publication process. However, applications will be placed on the examiner’s amended docket, not the special docket, after the first Office Action.
The USPTO program requires abandonment of the earlier-filed application because it has dual goals. Although it shares the Argentine goal of giving applicants "greater control over the priority with which their applications are examined," it also is designed to "stimulat[e] a reduction of the backlog of unexamined patent applications pending before the USPTO."
Applicants who are not willing to abandon an earlier U.S. application can consider whether other options for prioritizing U.S. examination are available.