| Prioritized Examination |
Referenced Items (247, 248, 249, 250) |
(249) DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
37 CFR Part 1
[Docket No.: PTO-P-2011-0039]
RIN 0651-AC62
Changes To Implement the Prioritized Examination Track (Track I) of the
Enhanced Examination Timing Control Procedures Under the
Leahy-Smith America Invents Act
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Final rule.
SUMMARY: On April 4, 2011, the United States Patent and Trademark
Office (Office) published a final rule that revised the rules of
practice in patent cases to implement a procedure under which
applicants may request prioritized examination at the time of filing of
an application upon payment of appropriate fees and compliance with
certain requirements (Track I final rule). The prioritized examination
procedure is the first track (Track I) of a 3-Track examination process
designed to provide applicants with greater control over when their
utility and plant applications are examined and to promote greater
efficiency in the patent examination process. The Office subsequently
published a final rule on April 29, 2011, indicating that the effective
date of the Track I final rule was delayed until further notice due to
funding limitations. The Leahy-Smith America Invents Act includes
provisions for prioritized examination that emulate the requirements of
the Office's Track I final rule, with revised fee amounts for
prioritized examination (including a small entity discount) and a
provision that addresses the funding limitations that required a delay
in the implementation of the Track I final rule. This final rule
implements the prioritized examination provisions of section 11(h) of
the Leahy-Smith America Invents Act.
DATES: Effective Date: The changes in this final rule are effective on
September 26, 2011. The final rule published at 76 FR 18399-18407 on
April 4, 2011, is withdrawn effective September 23, 2011.
Applicability Date: A request for prioritized examination may be
submitted with any original utility or plant application filed on or
after September 26, 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 or Kathleen Kahler Fonda or Michael T.
Cygan.
SUPPLEMENTARY INFORMATION: In June 2010, the Office requested comments
from the public on a proposal to provide applicants with greater
control over when their original utility or plant applications are
examined and promote work sharing between intellectual property offices
(3-Track). See Enhanced Examination Timing Control Initiative; Notice
of Public Meeting, 75 FR 31763 (June 4, 2010). Specifically, the Office
proposed to implement procedures under which an applicant would be able
to: (1) Request prioritized examination of an original utility or plant
nonprovisional application (Track I); (2) request a delay in docketing
the application for examination, for an original utility or plant
application filed under 35 U.S.C. 111(a), by filing a request for delay
in payment of the search fee, the examination fee, the claims fees, and
the surcharge (if appropriate) for a maximum period not to exceed thirty
months (Track III); or (3) obtain processing under the current examination
procedure (Track II) by not requesting either Track I or Track III
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processing.
In February 2011, the Office published a notice of proposed rule
making to set forth the proposed procedure for prioritized examination
and to seek public comments on the proposed procedure. See Changes to
Implement the Prioritized Examination Track (Track I) of the Enhanced
Examination Timing Control Procedures, 76 FR 6369 (Feb. 4, 2011). Since
the majority of the public comments supported the optional prioritized
examination procedure, on April 4, 2011, the Office published a final
rule that revised the rules of practice in patent cases to implement a
procedure under which applicants may request prioritized examination at
the time of filing of an application upon payment of appropriate fees
and compliance with certain requirements (Track I final rule). See
Changes to Implement the Prioritized Examination Track (Track I) of the
Enhanced Examination Timing Control Procedures, 76 FR 18399 (Apr. 4,
2011). The Office set a goal for the prioritized examination procedure
of providing a final disposition within twelve months of prioritized
status being granted. See Changes to Implement the Prioritized
Examination Track (Track I) of the Enhanced Examination Timing Control
Procedures, 76 FR at 18401.
The Office, however, found it necessary to revise its patent
examiner hiring plan for the remainder of fiscal year 2011 due to
funding limitations. The revised hiring plan for fiscal year 2011 did
not permit the Office to hire a sufficient number of new examiners for
the Office to be able to meet the twelve-month pendency goal in
prioritized examination applications without impacting the examination
of non-prioritized applications. Therefore, the Office published a
subsequent final rule delaying the effective date of the Track I final
rule until further notice. See Changes to Implement the Prioritized
Examination Track (Track I) of the Enhanced Examination Timing Control
Procedures, 76 FR 23876 (Apr. 29, 2011).
After the Office published the final rule delaying the effective
date of Track I, the Leahy-Smith America Invents Act was enacted into
law. The Leahy-Smith America Invents Act includes provisions for
prioritized examination that emulate the requirements of the Office's
Track I final rule, with revised fee amounts for prioritized
examination (including a small entity discount). Specifically, section
11(h) of the Leahy-Smith America Invents Act provides that a fee of
$4,800 shall be established for filing a request for prioritized
examination of a nonprovisional application for an original utility or
plant patent; that this fee is in addition to the filing, search,
examination, processing, and publication fees, as well as any
applicable excess claims or application size fees; and that this $4,800
fee is reduced by fifty percent for small entities under 35 U.S.C.
41(h)(1). Section 11(h) of the Leahy-Smith America Invents Act also
provides that the USPTO may by regulation prescribe conditions for
acceptance of a request for prioritized examination, as well as limit
the number of filings for prioritized examination that may be accepted.
Section 11(h) of the Leahy-Smith America Invents Act further provides
that until such regulations are prescribed, no application for which
prioritized examination is requested may contain or be amended to
contain more than four independent claims or more than thirty total
claims, and that the Office may not accept in any fiscal year more than
10,000 requests for prioritized examination. Finally, Section 11(h)
provides that the prioritized examination provisions are effective ten
days after enactment of the Leahy-Smith America Invents Act (i.e., on
September 26, 2011). This final rule implements the prioritized
examination provisions of section 11(h) of the Leahy-Smith America
Invents Act.
Under prioritized examination, an application will be accorded
special status and placed on the examiner's special docket throughout
its entire course of prosecution before the examiner until a final
disposition is reached in the application. The goal for handling
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applications under prioritized examination is to on average provide a
final disposition within twelve months of prioritized status being
granted. The final disposition for the twelve-month goal means that
within twelve months from the date prioritized status has been granted
that one of the following occur: (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 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
request for continued examination.
The time periods set for reply in Office actions for applications
in Track I will be the same as set forth in section 710.02(b) of the
Manual of Patent Examining Procedure (MPEP) (8th ed. 2001) (Rev. 8,
July 2010). This is a distinction between Track I and the Accelerated
Examination program, where the time period for reply to Office actions
is one month (or at least thirty days) with no extensions under 37 CFR
1.136(a) being permitted. Where, however, an applicant files a petition
for an extension of time to file a reply or a request for a suspension
of action, the prioritized examination of the application will be
terminated. In addition, 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 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 § 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 § 1.312.
To maximize the benefit of prioritized examination, applicants
should consider one or more of the following: (1) Acquiring a good
knowledge of the state of the prior art to be able to file the
application with a clear specification having a complete schedule of
claims from the broadest to which the applicant believes he is entitled
in view of the prior art to the narrowest which the applicant is willing
to accept; (2) submitting an application in condition for examination;
(3) filing replies that are completely responsive to an Office action
and within the shortened statutory period for reply set in the Office
action; and (4) being prepared to conduct interviews with the examiner.
The phrase "in condition for examination" in this context means the
same as it does with respect to the current Accelerated Examination
program, which is discussed at MPEP § 708.02(a) (subsection
VIII.C).
The Office intends to monitor the prioritized examination program
carefully. As the Office gains experience with prioritized examination
as a result of the initial implementation, it may reevaluate the annual
numerical cap of 10,000 prioritized examination applications. Due to
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the need to limit the number of applications in the prioritized
examination program in its initial stages, applications entering the
national stage under 35 U.S.C. 371 are not eligible. However, an
applicant who has filed an international application may participate in
the prioritized examination program by filing a by-pass continuation
under 35 U.S.C. 111(a) rather than entering the national stage under 35
U.S.C. 371. The Office may reconsider the exclusion of applications
entering the national stage under 35 U.S.C. 371 at a future date. The
Office may also consider whether there is a need to limit the number of
requests for prioritized examination that may be filed in each
Technology Center or by any given applicant. Statistical findings about
prioritized examination, including statistics concerning the Office's
ability to meet its stated goals for the program, will be made available
to the public on the Office's Internet Web site.
The requirements for requesting prioritized examination are
summarized below. A patent application may be granted prioritized
examination status under the following conditions:
(1) The application must be an original utility or plant
nonprovisional application filed under 35 U.S.C. 111(a) on or after
September 26, 2011, the new effective date of the Track I final rule.
The procedure for prioritized examination does not apply to
international applications, design applications, reissue applications,
provisional applications, and reexamination proceedings. Applicants may
request prioritized examination for a continuing application (e.g., a
continuation or divisional application). However, a continuing
application will not automatically be given prioritized examination
status based on the request filed in the parent application. Each
application (including each continuing application) must, on its own,
meet all requirements for prioritized examination under 37 CFR
1.102(e).
(2) The application must be complete under 37 CFR 1.51(b) with any
excess claims fees paid on filing, and the application must be filed
via the Office's electronic filing system (EFS-Web) if it is a utility
application. Thus, the application must be filed with an oath or
declaration under 37 CFR 1.63, the basic filing fee, the search fee,
the examination fee, any excess claims fees, and any application size
fee.
(3) The application must 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. While it is
possible to file a preliminary amendment on filing of an application to
reduce the number of claims to no more than four independent claims and
thirty total claims, and to eliminate any multiple dependent claims,
the Office strongly encourages applicants to file applications without
any preliminary amendments. 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 filed with the
application in compliance with 37 CFR 1.102(e), 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 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 request for prioritized examination may be accepted if the
requirements under 37 CFR 1.102(e) are satisfied and the limit for the
number of requests for the year has not been reached. The Office is
limiting requests for prioritized examination under 37 CFR 1.102(e) to
a maximum of 10,000 applications during fiscal year 2011. The Office
will revisit this limit at the end of fiscal year 2011 to evaluate what
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the appropriate maximum should be, if any.
Discussion of Specific Rules
Title 37 of the Code of Federal Regulations, Part 1, is proposed to
be amended as follows:
Section 1.17: The Office is implementing a procedure for
prioritized examination (Track I) under the Leahy-Smith America Invents
Act upon applicant's request and payment of a fee at the time of filing
of the application.
Section 1.17(c) is amended to set the fee for filing a request for
prioritized examination under § 1.102(e) at $4,800.00 ($2,400.00
for small entities). See § 1.102(e). Thus, as of September 26,
2011, the total fee due on filing a utility application for which
prioritized examination is being sought (not including any applicable
excess claims and application size fees) is $6,480 ($3,360 for a small
entity). The total fee due on filing for a utility application is
calculated as follows: (1) The $1,250 ($530 small entity) in filing
fees which includes the $380 ($95 small entity filing by EFS-Web)
filing fee, the $620 ($310 small entity) search fee, and the $250 ($125
small entity) examination fee; (2) the $4,800 ($2,400 small entity)
prioritized examination fee; (3) the $130 processing fee; and (4) the
$300 publication fee.
Section 1.17(i) is amended to add a reference for requesting
prioritized examination of an application under § 1.102(e).
Section 1.102: Section 1.102 is revised to provide for the Track I
procedure in which applicant has the option to request prioritized
examination on the date the application is filed. Particularly,
§ 1.102(a) is revised by adding a reference to paragraph (e) so that
applications may be advanced out of turn for examination or for further
action upon filing a request under § 1.102(e). Section 1.102(e) is
added to set forth the requirements for filing a request for
prioritized examination, which provides that a request for prioritized
examination will not be granted unless: (1) the application is an
original utility or plant nonprovisional application filed under 35
U.S.C. 111(a) that is complete as defined by § 1.51(b), with any
fees due under § 1.16 (the filing fee, search fee, examination fee,
any applicable excess claims fee, and any applicable application size
fee) paid on filing; (2) the application is filed via the Office's
electronic filing system (EFS-Web) if it is a utility application (the
Office will accept a request for prioritized examination in paper when
it accompanies the filing of a plant application, because plant
applications may not be filed via EFS-Web); (3) the request for
prioritized examination, including 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) arepresent upon filing;
and (4) the application contains no more than four independent claims,
no more than thirty total claims, and no multiple dependent claims.
Section 1.102(e) finally provides that prioritized examination under this
paragraph will not be accorded international applications, design
applications, reissue applications, provisional applications, or
reexamination proceedings.
The Leahy-Smith America Invents Act currently limits the number of
requests for prioritized examination under § 1.102(e) that the
Office may accept in each fiscal year to a maximum of 10,000. A request
for prioritized examination may be accepted if the requirements under
§ 1.102(e) are satisfied and the limit for the number of requests
has not been reached.
Rulemaking Considerations
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A. Administrative Procedure Act: This final rule implements the
prioritized examination provisions of section 11(h) of the Leahy-Smith
America Invents Act. 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)).
Accordingly, prior notice and an opportunity for public comment are
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)). Nevertheless,
the changes being adopted in this final rule were proposed for comment
in February of 2011, and those comments have been considered by the
Office. See Changes to Implement the Prioritized Examination Track
(Track I) of the Enhanced Examination Timing Control Procedures, 76 FR
at 18402-06. 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 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: (1) Used the best available techniques to
quantify costs and benefits, and has considered values such as equity,
fairness, and distributive impacts; (2) provided the public with a
meaningful opportunity to participate in the regulatory process,
including soliciting the views of those likely affected prior to
issuing a notice of proposed rule making, and provided on-line access
to the rule making docket; (3) attempted to promote coordination,
simplification, and harmonization across government agencies and
identified goals designed to promote innovation; (4) considered
approaches that reduce burdens and maintain flexibility and freedom of
choice for the public; and (5) ensured the objectivity of scientific
and technological information and processes, to the extent applicable.
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
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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): 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
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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 complete
application via the Office's electronic filing system (EFS-Web) with
any filing and excess claims fees due paid on filing, and limiting
their applications to four independent claims and thirty total claims
with no multiple dependent claims.
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 recordkeeping
requirements, Small businesses.
For the reasons set forth in the preamble, the final rule amending
37 CFR part 1 that was published at 76 FR 18399-18407 on April 4, 2011,
and whose effective date was delayed until further notice at 76 FR
23876 on April 29, 2011, is withdrawn, and 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 1.17 is amended by adding new paragraph (c) and revising
paragraph (i) to read as follows:
§ 1.17 Patent application and reexamination processing fees.
* * * * *
(c) For filing a request for prioritized examination under § 1.102(e):
By a small entity (§ 1.27(a)).............. $2,400.00
By other than a small entity............... $4,800.00
* * * * *
(i) Processing fee for taking action under... $130.00
one of the following sections which refers
to this paragraph.
§ 1.28(c)(3) - for processing a non-itemized fee deficiency
based on an error in small entity status.
§ 1.41 - for supplying the name or names of the inventor or
inventors after the filing date without an oath or declaration as
prescribed by § 1.63, except in provisional applications.
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§ 1.48 - for correcting inventorship, except in provisional
applications.
§ 1.52(d) - for processing a nonprovisional application filed
with a specification in a language other than English.
§ 1.53(b)(3) - to convert a provisional application filed under
§ 1.53(c) into a nonprovisional application under § 1.53(b).
§ 1.55 - for entry of late priority papers.
§ 1.71(g)(2) - for processing a belated amendment under § 1.71(g).
§ 1.99(e) - for processing a belated submission under § 1.99.
§ 1.102(e) - for requesting prioritized examination of an
application.
§ 1.103(b) - for requesting limited suspension of action,
conTinued prosecution application for a design patent (§ 1.53(d)).
§ 1.103(c) - for requesting limited suspension of action,
request for continued examination (§ 1.114).
§ 1.103(d) - for requesting deferred examination of an
application.
§ 1.217 - for processing a redacted copy of a paper submitted in
the file of an application in which a redacted copy was submitted for
the patent application publication.
§ 1.221 - for requesting voluntary publication or republication
of an application.
§ 1.291(c)(5) - for processing a second or subsequent protest by
the same real party in interest.
§ 1.497(d) - for filing an oath or declaration pursuant to 35
U.S.C. 371(c)(4) naming an inventive entity different from the
inventive entity set forth in the international stage.
§ 3.81 - for a patent to issue to assignee, assignment submitted
after payment of the issue fee.
* * * * *
3. Section 1.102 is amended by revising paragraph (a) and adding
paragraph (e) to read as follows:
§ 1.102 Advancement of examination.
(a) Applications will not be advanced out of turn for examination
or for further action except as provided by this part, or upon order of
the Director to expedite the business of the Office, or upon filing of
a request under paragraph (b) or (e) of this section or upon filing a
petition or request under paragraph (c) or (d) of this section with a
showing which, in the opinion of the Director, will justify so
advancing it.
* * * * *
(e) A request for prioritized examination under this paragraph may
be filed only 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). A request for prioritized
examination under this paragraph must be present upon filing and must 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). 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, design applications, reissue
applications, provisional applications, or reexamination proceedings.
September 19, 2011 DAVID J. KAPPOS
Under Secretary of Commerce for Intellectual Property and
Director of the United States Patent and Trademark Office
[1371 OG 151]