Top of Notices Top of Notices   (274)  December 30, 2014 US PATENT AND TRADEMARK OFFICE Print This Notice 1409 CNOG  872 

Prioritized Examination Referenced Items (274, 275, 276, 277)
(274)                       DEPARTMENT OF COMMERCE
                   United States 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: Interim 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. This interim rule simplifies 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 an application having a request for Track I
prioritized examination requires, upon filing of the application, an
inventor's oath or declaration and all required fees, and contains no more
than four independent claims, thirty total claims, and no multiple
dependent claims. Accordingly, any request for Track I prioritized
examination not meeting all of the requirements on filing must be
dismissed. The Office has found that many such dismissals are due to the
application as filed not including a properly executed inventor's oath or
declaration, not including the excess claims fees or application size fee
due, or improperly including a multiple dependent claim or claims in excess
of the permitted number. The Office has determined that the time periods
for meeting those requirements when filing a request for Track I
prioritized examination could be expanded while maintaining the Office's
ability to timely examine the patent application.

DATES: Effective Date: 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.

   Comment Deadline Date: Written comments must be received on or before
May 5, 2014.

ADDRESSES: Comments should be sent by electronic mail message over the
Internet addressed to: AC93.comments@uspto.gov. Comments also may be
submitted by postal mail addressed to: Mail Stop Comments--Patents,
Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450, marked
to the attention of John R. Cottingham, Director, Office of Petitions,
Office of the Deputy Commissioner for Patent Examination Policy.

   Comments further may be sent by electronic mail message over the
Internet via the Federal eRulemaking Portal. See the Federal eRulemaking
Portal Web site (http://www.regulations.gov) for additional instructions on
providing comments via the Federal eRulemaking Portal.

   Although comments may be submitted by postal mail, the Office prefers to
receive comments by electronic mail message over the Internet because
sharing comments with the public is more easily accomplished. Electronic
comments are preferred to be submitted in plain text, but also may be
submitted in ADOBE® portable document format or MICROSOFT WORD®
format. Comments not submitted electronically should be submitted on paper
in a format that facilitates convenient digital scanning into ADOBE®
portable document format.

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   The comments will be available for viewing via the Office's Internet Web
site (http://www.uspto.gov). Because comments will be made available for
public inspection, information that the submitter does not desire to make
public, such as an address or phone number, should not be included in the
comments.

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: This interim rule simplifies 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.

   Summary of Major Provisions: The prioritized examination provisions (37
CFR 1.102(e)) currently require 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. This
interim rule revises 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 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 will be 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.

   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
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found that an unexpected number of requests for prioritized examination are
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 has reevaluated the necessity for each requirement to be met upon
filing. The Office has 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, while
resulting in only minimal delay in the processing of the Track I request
and the subsequent examination.

   Under the procedure set forth in this interim rule, the requirements for
prioritized examination are amended to 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 will
notify the applicant and provide a non-extendable period of one month in
which applicant may cancel or amend the claims accordingly. If applicant
provides the required claim amendment or cancellation within that period,
the Track I request will be 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 will be
given, and the Track I request will be dismissed.

   Under the procedure set forth in this 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) is not required to be paid on filing. An application
in which excess claims fees or the application size fee are outstanding
will be 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

   The following is a discussion of the amendments to Title 37 of the Code
of Federal Regulations, Part 1.

   Section 1.102: Section 1.102(e)(1) is revised 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) will be
eligible for prioritized examination (provided that the conditions of
§ 1.102(e) as revised in this interim rule are met). Pursuant to § 1.41(b),
such an application data sheet sets the inventorship for the application,
and 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, § 1.102(e)(1) is revised 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.

   Section 1.102(e)(1) is also revised 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 will be 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
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avoid abandonment.

   Section 1.102(e)(1) is further revised 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 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) as
revised requires 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, and 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) also 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 will be ineligible for Track I.

   This 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
(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 this 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
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application. Any such petition should be directed to the Office of
Petitions.

Rulemaking Considerations

   A. Administrative Procedure Act: This interim rule revises the
procedures that apply to applications for which an applicant has requested
Track I prioritized examination. The changes in this interim rule 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 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. F.C.C., 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).

   Accordingly, prior notice and opportunity for public comment are 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 this interim rule may be made immediately effective because they
relieve restrictions in the requirements for requesting prioritized
examination of an application.

   Moreover, the Office, pursuant to authority at 5 U.S.C. 553(b)(3)(B),
finds good cause to adopt the changes in this interim rule without prior
notice and an opportunity for public comment, as such procedures are
contrary to the public interest. Delay in the promulgation of this interim
rule to provide prior notice and comment procedures would cause harm to
those applicants who file a request for Track I prioritized examination in
an application that does not contain the inventor's oath or declaration and
to those applicants who filed a request for prioritized examination in an
application containing more than four independent claims, more than thirty
total claims, or a multiple dependent claim. Immediate implementation of
the changes in this interim rule is in the public interest because: (1) The
public does not need time to conform its conduct as the changes in this
interim rule do not add any additional requirement for requesting
prioritized examination of an application; and (2) those applicants who are
currently ineligible for prioritized examination due to the previously
stated reasons will benefit from the changes in this interim rule. See
Nat'l. Customs Brokers & Forwarders Ass'n v. U.S., 59 F.3d 1219, 1223-24
(Fed. Cir. 1995).

   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
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
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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
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 interim rule 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 interim 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
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.
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   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.

   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 interim rule 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, 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)(1) to read as
follows:

§ 1.102 Advancement of examination.

* * * * *

   (e) * * *

   (1) A request for prioritized examination may be filed with an original
utility or plant nonprovisional application under 35 U.S.C. 111(a). 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. 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
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under § 1.16(o) upon filing. 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. The request for
prioritized examination in compliance with this paragraph must be present
upon filing of the application, except that the applicant may file an
amendment to cancel any independent claims in excess of four, any total
claims in excess of thirty, and any multiple dependent claim not later than
one month from a first decision on the request for prioritized examination.
This one-month time period is not extendable.

* * * * *

February 27, 2014                                           MICHELLE K. LEE
           Deputy Under Secretary of Commerce for Intellectual Property and
           Deputy Director of the United States Patent and Trademark Office

                                  [1401 OG 65]