| Prioritized Examination |
Referenced Items (242, 243, 244, 245) |
(243) DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Part 1
[Docket No. PTO-P-2011-0070]
RIN 0651-AC65
Changes to Implement the Prioritized Examination for
Requests for Continued Examination
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Final rule.
SUMMARY: The Leahy-Smith America Invents Act includes provisions for
prioritized examination of patent applications. The United States
Patent and Trademark Office (Office) implemented the Leahy-Smith
America Invents Act prioritized examination provision following the
prioritized examination track (Track I) of the proposed 3-Track
examination process in a previous final rule. The final rule was made
applicable to newly filed patent applications. In order to provide
patent applicants with the flexibility to accelerate processing of
their applications in which a request for continued examination has
been filed, the Office is now permitting applicants to request
prioritized examination for applications after the filing of a request
for continued examination.
DATES: Effective Date: The changes in this final rule are effective on
December 19, 2011.
Applicability Date: The changes in this final rule are applicable
to any patent application in which a proper request for continued
examination has been filed before, on, or after December 19, 2011.
FOR FURTHER INFORMATION CONTACT: By telephone to Eugenia A. Jones, at
(571) 272-7727, Kathleen Kahler Fonda, at (571) 272-7754, or Michael T.
Cygan, at (571) 272-7700; or by mail addressed to: United States Patent
and Trademark Office, Mail Stop Comments-Patents, Commissioner for
Patents, P.O. Box 1450, Alexandria, VA 22313-1450, marked to the
attention of Eugenia A. Jones, Kathleen Kahler Fonda or Michael T.
Cygan.
SUPPLEMENTARY INFORMATION: Under the procedure set forth in this final
rule, once the application is accorded special status after the filing
of a request for continued examination it will be placed on the
examiner's special docket throughout its entire course of continued
prosecution before the examiner until a final disposition is reached in
the application. The goal for handling applications under prioritized
examination for request for continued examination is to, on average,
provide a final disposition within twelve months of prioritized status
being granted. For purposes of the twelve-month goal, "final
disposition" can be any of the following: (1) Mailing of a notice of
allowance; (2) mailing of a final Office action; (3) filing of a notice
of appeal; (4) completion of examination as defined in 37 CFR 41.102;
(5) filing of a subsequent request for continued examination; or (6)
abandonment of the application. An application under prioritized
examination, however, would not be accorded special status throughout
its entire course of appeal or interference before the BPAI, or after
the filing of a subsequent request for continued examination.
Filing an amendment to the application which results in more than
four independent claims, more than thirty total claims, or a multiple
dependent claim will terminate the prioritized examination. Upon
termination of prioritized examination, the application will be removed
from the examiner's special docket and placed on the examiner's regular
docket in accordance with its stage of prosecution. As the termination
of prioritized examination does not cause the prioritized examination
fee to have been paid by mistake or in an amount in excess of that
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required, the termination of prioritized examination will not entitle
the applicant to a refund of the prioritized examination fee. See 35 U.S.C.
42(d) and § 1.26(a) (permits refunds only for fees "paid by mistake or
any amount paid in excess of that required").
As discussed previously, the submission of an amendment resulting
in more than four independent claims or more than thirty total claims
is not prohibited, but simply terminates the prioritized examination.
Thus, upon mailing of a final rejection (at which point prioritized
examination is terminated), applicants may amend the claims to place
them in independent form where dependent claims were found allowable,
or add new claims, subject only to the limitations applicable to any
application under final rejection. See 37 CFR 1.116. Similarly, upon
mailing of a notice of allowance, applicants may submit amendments to
the claims, again subject only to the limitations applicable to any
application that has been allowed. See 37 CFR 1.312.
The requirements for requesting prioritized examination after the
filing of a request for continued examination are summarized below. A
patent application may be granted prioritized examination status under
the following conditions:
(1) The request for continued examination must be in an original
utility or plant nonprovisional application filed under 35 U.S.C.
111(a) or that has entered the national stage under 35 U.S.C. 371.
(2) The request for prioritized examination must be filed via the
Office's electronic filing system (EFS-Web), except in a plant
application for which the request must be filed in paper (MPEP
502.05(II)(B)) prior to the mailing of a first Office action after the
filing of the request for continued examination under 37 CFR 1.114. The
request for prioritized examination may either be filed concurrently
with, or subsequently to, the filing of a request for continued
examination.
(3) At the time of the request for prioritized examination, the
application must contain or be amended to contain no more than four
independent claims and no more than thirty total claims. In addition,
the application must not contain any multiple dependent claims. If an
amendment is filed in an application that has been granted prioritized
examination that results in more than four independent claims or thirty
total claims, or a multiple dependent claim, then prioritized
examination will be terminated.
(4) The request for prioritized examination must be accompanied by
the prioritized examination fee set forth in 37 CFR 1.17(c), the
processing fee set forth in 37 CFR 1.17(i), and if not previously paid,
the publication fee set forth in 37 CFR 1.18(d). Applicants are advised
to use the certification and request form PTO/SB/424 which is available
on EFS-Web.
(5) The Leahy-Smith America Invents Act currently limits the number
of requests for prioritized examination under § 1.102(e) that the
Office may accept to a maximum of 10,000 per fiscal year. This includes
both requests for prioritized examination for initial examination (37
CFR 1.102(e)(1)) and requests for prioritized examination after filing
of a request for continued examination (37 CFR 1.102(e)(2)).
Discussion of Specific Rules
Title 37 of the Code of Federal Regulations, Part 1, is proposed to
be amended as follows:
Section 1.102: Section 1.102(e) is revised to set out the general
requirements for prioritized examination and the specific requirements
for prioritized examination for initial examination (Track I) (37 CFR
1.102(e)(1)) and for prioritized examination after the filing of a
request for continued examination (37 CFR 1.102(e)(2)).
Section 1.102(e) provides that a request for prioritized
examination under § 1.102(e) must comply with the requirements of
§ 1.102(e) and be accompanied by the prioritized examination fee
set forth in § 1.17(c), the processing fee set forth in §
1.17(i), and the publication fee set forth in § 1.18(d). Section
1.102(e) also provides that an application for which prioritized
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examination has been requested may not contain or be amended to contain
more than four independent claims, more than thirty total claims, or
any multiple dependent claim. Section 1.102(e) also provides that
prioritized examination under this paragraph will not be accorded to
international applications that have not entered the national stage
under 35 U.S.C. 371, design applications, reissue applications,
provisional applications, or reexamination proceedings. Finally, §
1.102(e) provides that a request for prioritized examination must also
comply with the requirements of § 1.102(e)(1) or § 1.102(e)(2).
Section 1.102(e)(1) provides that a request for prioritized
examination may be filed with an original utility or plant
nonprovisional application under 35 U.S.C. 111(a) that is complete as
defined by § 1.51(b), with any fees due under § 1.16 paid on
filing. If the application is a utility application, it must be filed
via the Office's electronic filing system (EFS-Web). The request for
prioritized examination in compliance with § 1.102(e)(1) must be
present upon filing. The discussion in the final rule to implement
prioritized examination for initial examination (Track I) (Changes to
Implement the Prioritized Examination Track (Track I) of the Enhanced
Examination Timing Control Procedures under the Leahy-Smith America
Invents Act, 76 FR 59050 (Sept. 23, 2011)) remains applicable to
request for prioritized examination under § 1.102(e)(1).
Section 1.102(e)(2) provides that a request for prioritized
examination may be filed with or after a request for continued
examination in compliance with § 1.114. Only a single such request
for prioritized examination under § 1.102(e)(2) may be granted in
an application. If the application is a utility application, the
request must be filed via the Office's electronic filing system (EFS-
Web). The request must be filed before the mailing of the first Office
action after the filing of the request for continued examination under
§ 1.114. The request must be accompanied by the prioritized
examination fee set forth in § 1.17(c), the processing fee set
forth in § 1.17(i), and if not already paid, the publication fee
set forth in § 1.18(d).
Rule Making Considerations
A. Administrative Procedure Act
This final rule implements prioritized examination for applications
after the filing of a request for continued examination under 35 U.S.C.
132(b) and 37 CFR 1.114. The changes in this final rule that implement
the fee for prioritized examination and requirements specified in
section 11(h) of the Leahy-Smith America Invents Act are merely
interpretative. See Gray Panthers Advocacy Comm. v. Sullivan, 936 F.2d
1284, 1291-1292 (DC Cir. 1991) (regulation that reiterates statutory
language does not require notice and comment procedures); See Nat'l
Org. of Veterans' Advocates v. Sec'y of Veterans Affairs, 260 F.3d
1365, 1375 (Fed. Cir. 2001). The additional requirements (e.g., filing
via the Office's electronic filing system (EFS-Web)) merely specify the
procedures that apply to applications for which an applicant has
requested prioritized examination and are thus procedural and not
substantive. See JEM Broad. Co. v. FCC, 22 F.3d 320, 326 (DC Cir. 1994)
("[T]he critical feature of the procedural exception [in 5 U.S.C.
553(b)(A)] is that it covers agency actions that do not themselves
alter the rights or interests of parties, although [they] may alter the
manner in which the parties present themselves or their viewpoints to
the agency") (quoting Batterton v. Marshall, 648 F.2d 694, 707 (DC Cir.
1980)). Specifying the procedures for according prioritized examination
for an application in which a request for continued examination has
been made concerns only the manner in which applicants interact with
the Office and does not change the substantive rights (condition of
patentability) of any patent applicant. See Bachow Communications, Inc.
v. F.C.C., 237 F.3d 683 (DC Cir. 2001) (rule permitting or suspending
amendments to applications was procedural).
Accordingly, prior notice and an opportunity for public comment are
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not required pursuant to 5 U.S.C. 553(b)(A) or any other law. See
Cooper Techs. Co. v. Dudas, 536 F.3d 1330, 1336-37 (Fed. Cir. 2008)
(stating that 5 U.S.C. 553, and thus 35 U.S.C. 2(b)(2)(B), do not
require notice and comment rule making for "interpretative rules,
general statements of policy, or rules of agency organization,
procedure, or practice.") (quoting 5 U.S.C. 553(b)(A)). In addition,
thirty-day advance publication is not required pursuant to 5 U.S.C.
553(d) or any other law. See 5 U.S.C. 553(d) (requiring thirty-day
advance publication for substantive rules).
B. Regulatory Flexibility Act
As prior notice and an opportunity for public comment are not
required pursuant to 5 U.S.C. 553 or any other law, neither a
regulatory flexibility analysis nor a certification under the
Regulatory Flexibility Act (5 U.S.C. 601 et seq.) is required. See 5
U.S.C. 603.
C. Executive Order 12866 (Regulatory Planning and Review)
This rule making has been determined to be not significant for
purposes of Executive Order 12866 (Sept. 30, 1993).
D. Executive Order 13563 (Improving Regulation and Regulatory Review)
The Office has complied with Executive Order 13563 (Jan. 18, 2011).
Specifically, the Office has, to the extent feasible and applicable:
(1) Made a reasoned determination that the benefits justify the costs
of the rule; (2) tailored the rule to impose the least burden on
society consistent with obtaining the regulatory objectives; (3)
selected a regulatory approach that maximizes net benefits; (4)
specified performance objectives; (5) identified and assessed available
alternatives; (6) involved the public in an open exchange of
information and perspectives among experts in relevant disciplines,
affected stakeholders in the private sector and the public as a whole,
and provided on-line access to the rule making docket; (7) attempted to
promote coordination, simplification and harmonization across
government agencies and identified goals designed to promote
innovation; (8) considered approaches that reduce burdens and maintain
flexibility and freedom of choice for the public; and (9) ensured the
objectivity of scientific and technological information and processes.
E. Executive Order 13132 (Federalism)
This rule making does not contain policies with federalism
implications sufficient to warrant preparation of a Federalism
Assessment under Executive Order 13132 (Aug. 4, 1999).
F. Executive Order 13175 (Tribal Consultation)
This rule making will not: (1) Have substantial direct effects on
one or more Indian tribes; (2) impose substantial direct compliance
costs on Indian tribal governments; or (3) preempt tribal law.
Therefore, a tribal summary impact statement is not required under
Executive Order 13175 (Nov. 6, 2000).
G. Executive Order 13211 (Energy Effects)
This rule making is not a significant energy action under Executive
Order 13211 because this rule making is not likely to have a
significant adverse effect on the supply, distribution, or use of
energy. Therefore, a Statement of Energy Effects is not required under
Executive Order 13211 (May 18, 2001).
H. Executive Order 12988 (Civil Justice Reform)
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This rule making meets applicable standards to minimize litigation,
eliminate ambiguity, and reduce burden as set forth in sections 3(a)
and 3(b)(2) of Executive Order 12988 (Feb. 5, 1996).
I. Executive Order 13045 (Protection of Children)
This rule making does not concern an environmental risk to health
or safety that may disproportionately affect children under Executive
Order 13045 (Apr. 21, 1997).
J. Executive Order 12630 (Taking of Private Property)
This rule making will not effect a taking of private property or
otherwise have taking implications under Executive Order 12630 (Mar.
15, 1988).
K. Congressional Review Act
Under the Congressional Review Act provisions of the Small Business
Regulatory Enforcement Fairness Act of 1996 (5 U.S.C. 801 et seq.),
prior to issuing any final rule, the United States Patent and Trademark
Office will submit a report containing the final rule and other
required information to the United States Senate, the United States
House of Representatives, and the Comptroller General of the Government
Accountability Office. The changes in this notice are not expected to
result in an annual effect on the economy of 100 million dollars or
more, a major increase in costs or prices, or significant adverse
effects on competition, employment, investment, productivity,
innovation, or the ability of United States-based enterprises to
compete with foreign-based enterprises in domestic and export markets.
Therefore, this notice is not expected to result in a "major rule" as
defined in 5 U.S.C. 804(2).
L. Unfunded Mandates Reform Act of 1995
The changes set forth in this notice do not involve a Federal
intergovernmental mandate that will result in the expenditure by State,
local, and tribal governments, in the aggregate, of 100 million dollars
(as adjusted) or more in any one year, or a Federal private sector
mandate that will result in the expenditure by the private sector of
100 million dollars (as adjusted) or more in any one year, and will not
significantly or uniquely affect small governments. Therefore, no
actions are necessary under the provisions of the Unfunded Mandates
Reform Act of 1995. See 2 U.S.C. 1501 et seq.
M. National Environmental Policy Act
This rule making will not have any effect on the quality of the
environment and is thus categorically excluded from review under the
National Environmental Policy Act of 1969. See 42 U.S.C. 4321 et seq.
N. National Technology Transfer and Advancement Act
The requirements of section 12(d) of the National Technology
Transfer and Advancement Act of 1995 (15 U.S.C. 272 note) are not
applicable because this rule making does not contain provisions which
involve the use of technical standards.
O. Paperwork Reduction Act
This rule making implements a prioritized examination process. The
primary impact on the public of this change is that applicants will
have the option to request prioritized examination by paying
appropriate fees, filing a request via the Office's electronic filing
system (EFS-Web), and limiting their applications to four independent
claims and thirty total claims with no multiple dependent claims.
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An applicant who wishes to participate in the program must submit a
certification and request to participate in the prioritized examination
program, preferably by using Form PTO/SB/424. The Office of Management
and Budget (OMB) has determined that, under 5 CFR 1320.3(h), Form PTO/
SB/424 does not collect "information" within the meaning of the
Paperwork Reduction Act of 1995. Therefore, this rule making does not
impose additional collection requirements under the Paperwork Reduction
Act which are subject to further review by OMB.
Notwithstanding any other provision of law, no person is required
to respond to, nor shall a person be subject to a penalty for failure
to comply with, a collection of information subject to the requirements
of the Paperwork Reduction Act unless that collection of information
displays a currently valid OMB control number.
List of Subjects in 37 CFR Part 1
Administrative practice and procedure, Courts, Freedom of
Information, Inventions and patents, Reporting and record keeping
requirements, Small Businesses.
For the reasons set forth in the preamble, 37 CFR part 1 is amended
as follows:
PART 1-RULES OF PRACTICE IN PATENT CASES
1. The authority citation for 37 CFR Part 1 continues to read as
follows:
Authority: 35 U.S.C. 2(b)(2).
2. Section 1.102 is amended by revising paragraph (e) to read as
follows:
§ 1.102 Advancement of examination.
* * * * *
(e) A request for prioritized examination under this paragraph must
comply with the requirements of this paragraph and be accompanied by
the prioritized examination fee set forth in § 1.17(c), the
processing fee set forth in § 1.17(i), and if not already paid, the
publication fee set forth in § 1.18(d). An application for which
prioritized examination has been requested may not contain or be
amended to contain more than four independent claims, more than thirty
total claims, or any multiple dependent claim. Prioritized examination
under this paragraph will not be accorded to international applications
that have not entered the national stage under 35 U.S.C. 371, design
applications, reissue applications, provisional applications, or
reexamination proceedings. A request for prioritized examination must
also comply with the requirements of paragraph (e)(1) or paragraph
(e)(2) of this section.
(1) A request for prioritized examination may be filed with an
original utility or plant nonprovisional application under 35 U.S.C.
111(a) that is complete as defined by § 1.51(b), with any fees due
under § 1.16 paid on filing. If the application is a utility
application, it must be filed via the Office's electronic filing
system. The request for prioritized examination in compliance with this
paragraph must be present upon filing of the application.
(2) A request for prioritized examination may be filed with or
after a request for continued examination in compliance with §
1.114. If the application is a utility application, the request must be
filed via the Office's electronic filing system. The request must be
filed before the mailing of the first Office action after the filing of
the request for continued examination under § 1.114. Only a single
such request for prioritized examination under this paragraph may be
granted in an application.
December 7, 2011 DAVID J. KAPPOS
Under Secretary of Commerce for Intellectual Property and
Director of the United States Patent and Trademark Office
[1374 OG 107]