| Prioritized Examination |
Referenced Items (247, 248, 249, 250) |
(247) DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Part 1
[Docket No.: PTO-P-2014-0003]
RIN 0651-AC93
Changes to Permit Delayed Submission of Certain Requirements for
Prioritized 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 (also referred to as "Track
I"), which have been implemented by the United States Patent and Trademark
Office (Office) in previous rulemakings. The Office published an interim
rule on March 5, 2014 (prioritized examination interim rule), to simplify
the Track I prioritized examination practice to reduce the number of
requests for prioritized examination that must be dismissed. In order to
enable rapid processing and examination of those applications, the previous
rulemakings provided that a request for Track I prioritized examination
requires, upon filing of the application, an inventor's oath or declaration
and all required fees, and that the application contain no more than four
independent claims, thirty total claims, and no multiple dependent claims.
If a request for Track I prioritized examination failed to meet these
requirements on filing, then the request was dismissed. After operating
under the previous rulemakings for some time, the Office determined that
the time period for meeting the identified requirements could be expanded
and still enable the Office to timely examine the patent application.
Hence, on March 5, 2014, the Office published the prioritized examination
interim rule to expand the time period for meeting the identified
requirements. The Office received no comments from the public in response.
This final rule adopts as final the amendments to the rules of practice
originally set forth in the prioritized examination interim rule.
DATES: Effective Date: This final rule is effective on November 14, 2014.
The prioritized examination interim rule published on March 5, 2014 at 79
FR 12386 was effective on March 5, 2014.
Applicability Date: The changes to 37 CFR 1.102 apply only to
applications filed under 35 U.S.C. 111(a) on or after September 16, 2012,
in which a first action has not been mailed.
FOR FURTHER INFORMATION CONTACT: John R. Cottingham, Director, Office of
Petitions, at (571) 272-7079, or Michael T. Cygan, Senior Legal Advisor,
Office of Patent Legal Administration, at (571) 272-7700.
SUPPLEMENTARY INFORMATION:
Executive Summary: Purpose: The prioritized examination interim rule
simplified prioritized examination ("Track I") practice to reduce the
number of requests for prioritized examination that must be dismissed and
to improve access to prioritized examination. This final rule adopts as
final the amendments to the rules of practice originally set forth in the
prioritized examination interim rule.
Summary of Major Provisions: The prioritized examination provisions (37
CFR 1.102(e)) formerly required that: (1) The inventor's oath or
declaration be present on filing; (2) all fees be paid upon filing; and (3)
the application as filed contain no more than four independent claims, no
more than thirty total claims, and no multiple dependent claims. The
prioritized examination interim rule revised 37 CFR 1.102(e) to provide
that: (1) The filing of an inventor's oath or declaration may be postponed
in accordance with 37 CFR 1.53(f)(3) if an application data sheet meeting
 Top of Notices (247) December 26, 2023 |
US PATENT AND TRADEMARK OFFICE |
1517 CNOG 873 |
the conditions specified in 37 CFR 1.53(f)(3)(i) is present upon filing;
(2) if an application contains more than four independent claims, more than
thirty total claims, or any multiple dependent claim, the applicant is
given a non-extendable one-month period to file an amendment to cancel any
independent claims in excess of four, any total claims in excess of thirty,
and any multiple dependent claim; and (3) any excess claims fees due under
37 CFR 1.16(h), (i), or (j) and any application size fee due under 37 CFR
1.16(s) is not required to be paid on filing. This final rule adopts as
final the amendments to the rules of practice originally set forth in the
prioritized examination interim rule.
Costs and Benefits: This rulemaking is not economically significant
under Executive Order 12866 (Sept. 30, 1993).
Background: Section 11(h) of the Leahy-Smith America Invents Act
provides for prioritized examination of an application. See Public Law
112-29, 125 Stat. 283, 324 (2011). Section 11(h) of the Leahy-Smith America
Invents Act also provides that the Office may by regulation prescribe
conditions for acceptance of a request for prioritized examination. See id.
The Office implemented the Leahy-Smith America Invents Act prioritized
examination provision for applications upon filing, referred to as "Track
I," in a final rule published on September 23, 2011. See 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 (September 23, 2011). The Office subsequently implemented
prioritized examination for pending applications after the filing of a
proper request for continued examination under 35 U.S.C. 132(b) and 37 CFR
1.114. See Changes to Implement the Prioritized Examination for Requests
for Continued Examination, 76 FR 78566 (December 19, 2011).
The rule implementing prioritized examination, 37 CFR 1.102(e), sets
forth the requirements that must be met to permit a request for prioritized
examination to be granted. These requirements were selected after public
discussion with, and feedback from, patent practitioners and stakeholders.
These requirements were selected in such a manner as to permit the Office
to examine applications undergoing prioritized examination in a timely
manner. In furtherance of timely examination, the Office required that
requests for Track I prioritized examination conform to all of the
requirements listed in 37 CFR 1.102(e)(1) as of the filing date of the
application.
Upon review of the implementation of the Track I program, the Office has
found that an unexpected number of requests for prioritized examination
were being dismissed for failure to meet the requirements of 37 CFR
1.102(e) upon filing. In order to improve access to prioritized
examination, the Office reevaluated the necessity for each requirement to
be met upon filing. The Office published the prioritized examination
interim rule simplifying the Track I prioritized examination practice as
the Office determined that permitting certain requirements to be met after
the filing date of the application would avoid dismissal of bona fide
attempts to request Track I prioritized examination and result in only
minimal delay in the processing of the Track I request and the subsequent
examination.
Under the procedure set forth in the prioritized examination interim
rule, the requirements for prioritized examination now permit an applicant
to postpone submission of an inventor's oath and declaration after the
filing date of the application, so long as the application as filed
includes an executed application data sheet meeting the conditions
specified in 37 CFR 1.53(f)(3)(i). Additionally, where a request for
prioritized examination is received for an application having more than
four independent claims, more than thirty total claims, or any multiple
dependent claim, the Office notifies the applicant and provides a
non-extendable period of one month in which the applicant may cancel or
amend the claims accordingly. If the applicant provides the required claim
| Top of Notices (247) December 26, 2023 |
US PATENT AND TRADEMARK OFFICE |
1517 CNOG 874 |
amendment or cancellation within the one-month period, the Track I request
is considered again. If the applicant fails to place the application in
conformance with the above-listed claim requirements within that period, no
further corrective period is given, and the Track I request is dismissed.
Under the procedure set forth in the prioritized examination interim
rule, any excess claims fees due under 37 CFR 1.16(h), (i), or (j) and any
application size fee due under 37 CFR 1.16(s) are not required to be paid
on filing. An application in which excess claims fees or the application
size fee are outstanding is treated under the provisions of 37 CFR
1.53(f)(4), which require that those fees be paid prior to the expiration
of the time period set for reply by the Office in any notice of fee
deficiency.
Discussion of Specific Rules
This final rule adopts as final the amendments to §§ 1.102 originally
set forth in the prioritized examination interim rule. The following is a
discussion of the amendments to Title 37 of the Code of Federal
Regulations, Part 1, in the prioritized examination interim rule.
Section 1.102: The prioritized examination interim rule amended
§ 1.102(e)(1) to eliminate the requirement that the inventor's oath or
declaration be submitted on the filing date. An application having a
properly executed application data sheet that meets the requirements set
forth in § 1.53(f)(3)(i) is eligible for prioritized examination (provided
that the conditions of § 1.102(e) as revised in the prioritized examination
interim rule are met). Pursuant to § 1.41(b), such an application data
sheet sets the inventorship for the application, and the applicant may
delay submission of the inventor's oath or declaration no later than the
date on which the issue fee for the patent is paid. See Changes To
Implement the Inventor's Oath or Declaration Provisions of the Leahy-Smith
America Invents Act, 77 FR 48776, 48779-80 (Aug. 14, 2012), and Changes to
Implement the Patent Law Treaty, 78 FR 62367, 62376 (Oct. 21, 2013).
Accordingly, the prioritized examination interim rule amended § 1.102(e)(1)
to provide that the application must include a specification as prescribed
by 35 U.S.C. 112 including at least one claim, a drawing when necessary,
and the inventor's oath or declaration on filing, except that the filing of
an inventor's oath or declaration may be postponed in accordance with
§ 1.53(f)(3) if an application data sheet meeting the conditions specified
in § 1.53(f)(3)(i) is present upon filing.
The prioritized examination interim rule also amended § 1.102(e)(1) to
eliminate the requirements that an application include any excess claims
fees due under § 1.16(h), (i), or (j) or any application size fee due under
§ 1.16(s) on filing. An application in which excess claims fees or the
application size fee are outstanding is treated under the provisions of
§ 1.53(f)(4), which require that those fees be paid prior to the expiration
of the time period set for reply by the Office in any notice of fee
deficiency in order to avoid abandonment.
The prioritized examination interim rule further amended § 1.102(e)(1)
to eliminate the requirements that an application not contain more than
four independent claims, not contain more than thirty total claims, and not
contain any multiple dependent claim upon filing. Upon review of the Track
I request, the Office will provide the applicant a non-extendable one-month
period in which to submit an amendment cancelling claims, or removing
multiple dependencies. If, upon expiration of that one-month period, the
application still contains more than four independent claims, more than
thirty total claims, or a multiple dependent claim, the request for
prioritized examination will be dismissed.
Section 1.102(e)(1) maintains the requirement that an application for
which prioritized examination is requested must include payment of the
basic filing fee, the search fee, and examination fees on filing, or the
application will be ineligible for Track I. Specifically, § 1.102(e)(1)
| Top of Notices (247) December 26, 2023 |
US PATENT AND TRADEMARK OFFICE |
1517 CNOG 875 |
continues to require that if the application is a utility application, it
must be filed via the Office's electronic filing system and include the
filing fee under § 1.16(a), search fee under § 1.16(k), and examination fee
under § 1.16(o) upon filing. Section 1.102(e)(1) also continues to require
that if the application is a plant application, it must include the filing
fee under § 1.16(c), search fee under § 1.16(m), and examination fee under
§ 1.16(q) upon filing.
Section 1.102(e) further maintains the requirement that an application
for which prioritized examination is sought must be accompanied by the
prioritized examination fee set forth in § 1.17(c), the processing fee set
forth in § 1.17(i)(1), and the publication fee set forth in § 1.18(d). The
request and each of these fees must be present on the same day the
application is filed, or the application is ineligible for Track I.
The prioritized examination interim rule, while providing additional
time for the filing of an inventor's oath or declaration, for payment of
any excess claims fees or any application size fee, and for filing an
amendment to limit an application to four independent claims and thirty
total claims without any multiple dependent claim, does not remove the
requirement that those items be filed within the appropriate time period.
Applicants are reminded that any request for an extension of time will
cause an outstanding Track I request to be dismissed, or cause an
application to lose its Track I status if previously conferred upon that
application. See 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, 59051 (September 23, 2011).
To reduce delays in processing the application, the Office recommends
that all of the requirements under § 1.102(e)(1) be met upon filing. An
applicant should not delay meeting a requirement merely because an
additional time period will be supplied. Applicants should recognize that
the twelve-month goal for final disposition of the application is measured
from the time the Track I request is granted, not from the filing of the
application. As an applicant is seeking Track I prioritized examination to
receive rapid examination, any delay in meeting the requirements for Track
I merely adds processing time onto the twelve-month goal for final
disposition of the application.
The changes in the prioritized examination interim rule apply to any
application filed under 35 U.S.C. 111(a) on or after September 16, 2012,
in which a first action has not been mailed. An applicant may have
previously submitted a Track I request which was dismissed, but would have
been granted, or the applicant would have been provided additional time to
meet a requirement, if the changes to the interim rule had been in effect
at the time of the dismissal. An applicant may file a request for
reconsideration of the dismissal of the previous Track I request based upon
the changes set forth in this interim rule if: (1) The application is still
pending; (2) the application contains, or has been amended to contain, no
more than four independent claims, no more than thirty total claims, and no
multiple dependent claims; and (3) a first Office action has not been
mailed in the application. Any such petition should be directed to the
Office of Petitions.
Comments: The Office received no comments in response to the prioritized
examination interim rule.
Rulemaking Considerations
A. Administrative Procedure Act: This final rule simply adopts as final
changes in the prioritized examination interim rule, which pertain to the
procedures that an applicant must follow in requesting Track I prioritized
examination and do not change the substantive criteria of patentability.
Therefore, the changes in this rulemaking involve rules of agency practice
and procedure, and/or interpretive rules. See JEM Broad. Co. v. FCC, 22 F.
3d 320, 326 (D.C. Cir. 1994) ("[T]he critical feature of the procedural
| Top of Notices (247) December 26, 2023 |
US PATENT AND TRADEMARK OFFICE |
1517 CNOG 876 |
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 (D.C. Cir. 1980)); see also Bachow Commc'ns Inc. v. FCC, 237 F.3d 683,
690 (D.C. Cir. 2001) (rules governing an application process are procedural
under the Administrative Procedure Act); Inova Alexandria Hosp. v. Shalala,
244 F.3d 342, 350 (4th Cir. 2001) (rules for handling appeals were
procedural where they did not change the substantive standard for reviewing
claims).
In addition, the Office, pursuant to authority at 5 U.S.C. 553(b)(3)(B),
found good cause to adopt the changes in the prioritized examination
interim rule without prior notice and an opportunity for public comment, as
such procedures would have been contrary to the public interest. Delay in
the promulgation of the prioritized examination interim rule to provide
prior notice and comment procedures would have caused harm to those
applicants who filed a request for Track I prioritized examination in an
application that did not contain the inventor's oath or declaration, did
not include all required fees on filing, or that contained more than four
independent claims, more than thirty total claims, or a multiple dependent
claim. Immediate implementation of the changes in the prioritized
examination interim rule was in the public interest because: (1) The public
did not need time to conform its conduct as the changes in the prioritized
examination interim rule did not add any additional requirement for
requesting prioritized examination of an application; and (2) those
applicants who were ineligible for prioritized examination due to the
previously stated reasons benefited from the changes in the prioritized
examination interim rule. See Nat'l Customs Brokers & Forwarders Ass'n v.
U.S., 59 F.3d 1219, 1223-24 (Fed. Cir. 1995).
Accordingly, prior notice and opportunity for public comment were not
required pursuant to 5 U.S.C. 553(b) or (c) (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), does not require notice and
comment rulemaking 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, pursuant to authority at 5 U.S.C. 553(d)(1), the
changes in the prioritized examination interim rule were made immediately
effective because they relieved restrictions in the requirements for
requesting prioritized examination of an application.
B. Regulatory Flexibility Act: As prior notice and an opportunity for
public comment were 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
rulemaking 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. 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 rulemaking 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
| Top of Notices (247) December 26, 2023 |
US PATENT AND TRADEMARK OFFICE |
1517 CNOG 877 |
freedom of choice for the public; and (9) ensured the objectivity of
scientific and technological information and processes.
E. Executive Order 13132 (Federalism): This rulemaking 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 rulemaking 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 rulemaking is not a
significant energy action under Executive Order 13211 because this
rulemaking 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): This rulemaking 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 rulemaking 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 rulemaking
will not affect 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 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 rulemaking 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 final rule is not 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
rulemaking 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 rulemaking 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 rulemaking does
not contain provisions which involve the use of technical standards.
| Top of Notices (247) December 26, 2023 |
US PATENT AND TRADEMARK OFFICE |
1517 CNOG 878 |
O. Paperwork Reduction Act: The Paperwork Reduction Act of 1995 (44
U.S.C. 3501 et seq.) requires that the Office consider the impact of
paperwork and other information collection burdens imposed on the public.
This rulemaking involves information collection requirements which are
subject to review by the Office of Management and Budget (OMB) under the
Paperwork Reduction Act of 1995 (44 U.S.C. 3501-3549). An applicant who
wishes to participate in the prioritized examination program must submit a
certification and request to participate in the prioritized examination
program, preferably by using Form PTO/AIA/424. OMB has determined that,
under 5 CFR 1320.3(h), Form PTO/AIA/424 does not collect "information"
within the meaning of the Paperwork Reduction Act of 1995. This rule making
does not impose any 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 recordkeeping requirements, Small
businesses.
For the reasons set forth in the preamble, the interim rule amending 37
CFR part 1 which was published at 79 FR 12386-12390 on March 5, 2014, is
adopted as a final rule without change.
November 6, 2014 MICHELLE K. LEE
Deputy Under Secretary of Commerce for
Intellectual Property and Deputy Director of the
United States Patent and Trademark Office
[1409 OG 291]