[Federal Register Volume 76, Number 24 (Friday, February 4, 2011)]
[Proposed Rules]
[Pages 6369-6376]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2011-2585]


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DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Part 1

[Docket No. PTO-P-2010-0092]
RIN 0651-AC52


Changes To Implement the Prioritized Examination Track (Track I) 
of the Enhanced Examination Timing Control Procedures

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Notice of proposed rulemaking.

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SUMMARY: The United States Patent and Trademark Office (Office) 
requested comments on a proposal 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 (3-
Track). The Office, in addition to requesting written comments, 
conducted a public meeting to collect input, and has subsequently 
considered the wide range of comments received. The Office is in the 
process of refining the 3-Track proposal in light of the input. While 
that process continues, and in light of the fact that the vast majority 
of public input was supportive of the Track I portion of the 3-Track 
proposal, the Office proposes by this Notice to proceed with immediate 
implementation of the Prioritized Examination Track (Track I), 
providing fast examination for applicants desiring it, upon payment of 
the applicable fee and compliance with the additional requirements as 
described below.

DATES: Comment Deadline Date: Written comments must be received on or 
before March 7, 2011. No public hearing will be held.

ADDRESSES: Comments concerning this notice should be sent by electronic 
mail message over the Internet addressed to [email protected]. Comments may also be submitted by mail addressed 
to: Mail Stop Comments--Patents, Commissioner for Patents, P.O. Box 
1450, Alexandria, VA 22313-1450, marked to the attention of Robert A. 
Clarke, Deputy Director, Office of Patent Legal Administration, Office 
of the Associate Commissioner for Patent Examination Policy. Although 
comments may be submitted by mail, the Office prefers to receive 
comments via the Internet.
    Comments may also 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.
    The comments will be available for public inspection at the Office 
of the Commissioner for Patents, located in Madison East, Tenth Floor, 
600 Dulany Street, Alexandria, Virginia, and will be available via the 
Internet (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: Robert A. Clarke, Eugenia A. Jones, or 
Joni Y. Chang, Office of Patent Legal Administration, Office of the 
Associate Commissioner for Patent Examination Policy, by telephone at 
(571) 272-7735, (571) 272-7727 or (571) 272-7720, or by mail addressed 
to: Mail Stop Comments Patents, Commissioner for Patents, P.O. Box 
1450, Alexandria, VA 22313-1450, marked to the attention of Robert A. 
Clarke.

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. See Enhanced Examination Timing Control Initiative; Notice of 
Public Meeting, 75 FR 31763 (June 4, 2010), 1355 Off. Gaz. Pat. Office 
323 (June 29, 2010) Specifically, the Office proposed to adopt 
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 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 in an 
original utility or plant application filed under 35 U.S.C. 111(a) 
(Track III); or (3) obtain processing under the current examination 
procedure (Track II) by not requesting either Track I or Track III 
processing.
    The Office is proposing to amend the rules of practice to implement 
the proposal to provide applicants with the option to request 
prioritized examination at the time of filing of an application upon 
payment of the appropriate fees (Track I). The Office is limiting 
requests for prioritized examination under 37 CFR 1.102(e) to a maximum 
of 10,000 applications for the first year. The Office will revisit this

[[Page 6370]]

annual cap at the end of the year to evaluate what the appropriate 
maximum should be, if any.
    The Office is also in the process of developing proposed changes to 
the rules of practice to provide applicants with the option to request 
a delay in docketing the application for examination 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 in an original utility or plant application 
filed under 35 U.S.C. 111(a) (Track III).
    The Office is proposing changes to rules of practice to implement 
the option to request prioritized examination of an application (Track 
I) at this time and separately from a proposal to implement Track III 
so that applicants who want to make use of this option will be able to 
do so as quickly as possible. The following proposed changes that were 
considered in the notice published in June of 2010 are not being 
proposed in this rule making: (1) The provision that requires applicant 
to file a copy of the search report (if any), a copy of the first 
office action from the foreign office and an appropriate reply to the 
foreign office action when requesting prioritized examination or to 
obtain processing under the current procedure; and (2) the provision 
for requesting a supplemental search from a participating intellectual 
property granting office.
    Prioritized Examination of a utility or plant patent application: 
For some applicants with a currently financed plan to commercialize or 
exploit their innovation or a need to have more timely examination 
results to seek additional funding, more rapid examination is 
necessary. While some programs are currently available to prioritize 
applications (e.g., the accelerated examination program and the 
petition to make special program), some applicants neither want to 
perform the search and analysis required by the accelerated examination 
program nor can they seek special status based on the conditions set 
forth in 37 CFR 1.102. For such applicants, the Office is proposing 
optional prioritized examination upon applicant's request and payment 
of the appropriate fees upon filing. On granting of prioritized status, 
the application would be placed in the queue for prioritized 
examination.
    The prioritized examination fee is being proposed to be set at a 
level to recover the full cost of the resources necessary to increase 
the work output of the Office so that the non-prioritized applications 
would not be delayed due to resources being diverted to process the 
prioritized applications. In other words, the fee for prioritized 
examination would include the cost of hiring and training a sufficient 
number of new employees to offset the production time used to examine 
prioritized applications. Specifically, the Office plans to hire 
additional examiners above the number of planned hires, based on the 
number of requests for Track I prioritization received by the Office, 
so that the non-prioritized applications would not be delayed due to 
resources being diverted to process the prioritized applications. Under 
the Office's current statutory authority, the Office is not permitted 
to discount the fee for small entity applicants. If legislation is 
passed providing a fifty percent fee reduction for providing 
prioritized examination under 37 CFR 1.102(e) for small entities under 
35 U.S.C. 41(h)(1) and that the prioritized examination fees be set to 
recover the estimated cost of the prioritized examination program, the 
Office would set the prioritized examination fee at $4,800 ($2,400 for 
small entities), since 27.8 percent of the new serialized utility and 
plant applications filed in fiscal year 2010 were by small entities 
(based upon data from the Office's Patent Application Monitoring and 
Locating (PALM) system).
    Under Track I prioritized examination, an application would 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 aggregate goal for 
handling applications under Track I prioritized examination would be to 
provide a final disposition within twelve months of prioritized status 
being granted. The final disposition for the twelve-month goal means: 
(1) Mailing of a notice of allowance, (2) mailing of a final Office 
action, (3) filing of a notice of appeal, (4) declaration of an 
interference by the Board of Patent Appeals and Interferences (BPAI), 
(5) filing of a request for continued examination, or (6) abandonment 
of the application, within twelve months from the date prioritized 
status has been granted. An application in Track I, however, would not 
be accorded special status throughout its entire course of appeal or 
interference before the BPAI.
    The Office is also proposing to require that the application be 
filed via the Office's electronic filing system (EFS-Web) and be 
complete under 37 CFR 1.51(b) with any excess claims fees paid on 
filing, and to limit the number of claims in a prioritized application 
to four independent and thirty total claims. Thus, a request for 
prioritized examination under Track I would require that: (1) The 
application be an original utility or plant nonprovisional application 
filed under 35 U.S.C. 111(a); (2) the application be filed via the 
Office's electronic filing system (EFS-Web) and be complete under 37 
CFR 1.51(b) with any excess claims fees paid on filing; (3) the 
applicant pay the required fees for requesting prioritized examination; 
and (4) the application contains or is amended to contain no more than 
four independent claims and thirty total claims. See proposed 37 CFR 
1.102(e). The request for prioritized examination, 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) must be filed with the application. The proposed procedure for 
Track I would be available only for applications filed on or after the 
implementation date (including new continuing applications filed on or 
after the implementation date).
    Unlike the accelerated examination program, the time periods set in 
Office actions for applications in Track I would 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). Where, however, an applicant 
files a petition for an extension of time to extend the time period for 
filing a reply, the prioritized examination of the application will be 
terminated.
    To maximize the benefit of Track I, applicant 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 state of the 
prior art to the narrowest to which the applicant is willing to accept; 
(2) submitting an application in condition for examination; (3) filing 
replies that are completely responsive to the prior 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. 
What it means for an application to be in condition for examination is 
discussed with respect to the current Accelerated Examination program 
at MPEP Sec.  708.02(a) (subsection VIII.C).

Discussion of Specific Rules

    Title 37 of the Code of Federal Regulations, Part 1, is proposed to 
be amended as follows:

[[Page 6371]]

    Section 1.17: The Office is proposing optional prioritized 
examination (Track I) upon applicant's request and payment of a fee at 
the time of filing of the application, without meeting the requirements 
of the accelerated examination program (e.g., examination support 
document). See proposed Sec.  1.102(e). Section 1.17(c) is proposed to 
be amended to set the fee for filing a request for prioritized 
examination under Sec.  1.102(e) at $4,000.00.
    Section 1.102: Section 1.102 is proposed to be 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, Sec.  1.102(a) is proposed to be 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 
proposed Sec.  1.102(e). Proposed Sec.  1.102(e) would be added to set 
forth the requirements for filing a request for prioritized 
examination, which would provide 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) filed via the Office's electronic filing system (EFS-
Web), that is complete as defined by Sec.  1.51(b), with any fees due 
under Sec.  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 request for prioritized examination, including 
the prioritized examination fee set forth in Sec.  1.17(c), the 
processing fee set forth in Sec.  1.17(i), and the publication fee set 
forth in Sec.  1.18(d) are present upon filing; and (3) the application 
contains or is amended to contain no more than four independent claims, 
no more than thirty total claims, and no multiple dependent claims.
    Response to Comments: The Office published a notice in June of 2010 
inviting the public to submit written comments and participate in a 
public meeting to solicit public opinions on an initiative being 
considered by the Office to provide applicants with greater control 
over when their applications are examined and to promote greater 
efficiency in the patent examination process. See Enhanced Examination 
Timing Control Initiative; Notice of Public Meeting, 75 FR 31763 (June 
4, 2010), 1355 Off. Gaz. Pat. Office 323 (June 29, 2010) (notice). The 
public meeting was held on July 20, 2010, in which members of the 
public made oral presentations. The Web cast and transcript of the 
meeting are available on the Office's Internet Web site (http://www.uspto.gov) at http://www.uspto.gov/patents/announce/3track.jsp. The 
Office received over fifty written comments from government agencies, 
intellectual property organizations, industry, law firms, individual 
patent practitioners and the general public. The Office has considered 
all of the public comments that were received. The comments germane to 
the changes being proposed in this notice (Track I) and the Office's 
responses to those comments are provided below.
    Comment 1: One comment strongly urged that the Office conduct a 
voluntary pilot as a first step for implementing the three examination 
tracks and noted that collecting, analyzing, and publishing data on all 
aspects of the proposal is important for assessing the success of the 
program and making needed adjustments. Another comment stated that a 
thorough study of the three-track proposal is needed before adoption, 
including a study of the fees needed for Track I, expected applicant 
demand, Office resources needed, projected effects of Track I on other 
Office operations, examination quality, pendency, and operations 
management. A few comments encouraged a phased approach for 
implementation so that any unforeseen problems can be identified before 
full implementation. Another comment supported a pilot program with a 
cap as to the number of applications in which an applicant can elect 
prioritized examination under Track I, in order to keep costs 
manageable as demand is measured and resources grow, and with a 
percentage of these applications being reserved for small entities. The 
comment stated that this would allow the Office to better plan how many 
new examiners would be needed, and to add and train examiners in a 
controlled manner.
    Response: The Office is initially limiting requests for prioritized 
examination under Sec.  1.102(e) for applications to a maximum of 
10,000 applications for the first year. Any requests filed after 10,000 
proper requests have been received, will not be processed. This will 
permit the Office to proceed slowly and closely monitor the number of 
applications in the different tracks, gauging the ability of the Office 
to obtain sufficient resources to meet its goals. Elements of 
prioritized examination, including the ability to track applications 
and complete examination within accelerated time frames, have already 
been tested in a number of other programs such as the Accelerated 
Examination program and the Patent Prosecution Highway (PPH). Unlike 
the Accelerated Examination program, which requires the filing of a 
petition and time spent on deciding the petition, there is no petition 
requirement for prioritized examination under Sec.  1.102(e).
    Comment 2: One comment stated that there is no present need to 
include design patent applications in the three-track proposal and it 
would not work effectively with many foreign design protection systems 
(which do not have substantive examination) or the Hague Agreement. The 
comment stated that the expedited procedure for design patent 
applications (Sec.  1.155) is working very well. The comment suggested 
implementation of the Hague Agreement to achieve the best results for 
designs.
    Response: The proposed rules do not apply to design applications. 
Design applications can be expedited under Sec.  1.155. In addition, 
design applications are taken up for examination at a much quicker rate 
and do not have the same backlog concerns as other applications.
    Comment 3: The majority of the comments supported having a track 
that permits an applicant to pay a fee and have examination of their 
application expedited.
    Response: Consistent with the majority of the comments, the Office 
is proposing rule changes that include a prioritized examination track.
    Comment 4: A few comments were opposed to having such a prioritized 
track. One comment stated that it rewards those applicants with money 
and that the patent system should continue to be a level playing field. 
Another comment stated that it would hurt independent inventors, it 
goes against historical traditions of the Office, and establishes a new 
cost barrier to rapid and effective patent protection. The comment 
stated that the Office should represent the interests of all American 
citizens and not just the wealthy. As an alternative, the comment 
suggested raising the patent application fees for all applicants by one 
hundred dollars. One comment suggested converting the Office to a 
government-chartered private corporation and ending the practice of fee 
diversion.
    Response: The Office will continue to provide low cost rapid patent 
protection to applicants through its Accelerated Examination Program. 
The Office will also continue to provide expedited examination for 
certain applications via its other existing programs such as the Green 
Technology Pilot Program or the Petition to Make Special procedure 
based on the applicant's age or health under Sec.  1.102(c), which do 
not require a fee for the petition. The Office is simply providing an 
additional program

[[Page 6372]]

under which applicants may obtain prioritized examination of an 
application. Applicants who cannot afford to or do not wish to pay the 
fees for prioritized examination and who also are not able to 
participate in any of the other programs for accelerating or expediting 
examination will still continue to receive examination of their 
applications in the same time frames as they would have without 
implementation of Track I. The suggestion that all patent application 
fees be increased by one hundred dollars is not within the statutory 
authority of the Office. The suggestion that the Office be converted to 
a government corporation is not germane to the request for comments and 
is also beyond the statutory authority of the Office.
    Comment 5: Several of the comments that supported having a 
prioritized track raised concerns that the pendency of other 
applications would increase and questioned how the Office would be able 
to prevent examination of other applications from being delayed. The 
comments expressed concerns that resources would be diverted from 
examination of applications that are not accelerated. One comment 
questioned how the Office would be able to hire and retain the 
necessary examiners to avoid delays for other applications, given the 
problems with examiner hiring and retention. A few comments stated that 
the Office must institute safeguards to ensure that examination of 
other applications is not delayed, including meaningful metrics. A few 
comments wanted to know how the Office intends to measure whether the 
examination of other applications is adversely affected.
    Response: The Office will continue to publish its anticipated 
hiring and pendency targets on the Office's Internet Web site. The 
prioritized examination fee is being proposed to be set at a level to 
recover the full cost of the resources necessary to increase the work 
output of the Office so that the non-prioritized applications would not 
be delayed due to resources being diverted to examine the prioritized 
applications. Specifically, the Office will use the revenue generated 
by the fees paid for Track I applications to hire a sufficient number 
of additional examiners above planned examiner hires to offset the 
production time used to examine prioritized applications. The ability 
of the Office to meet its goals for prioritized examination will be 
posted on the Office's Internet Web site on a quarterly basis at the 
work group level.
    Comment 6: Some comments that supported having a prioritized track 
were concerned about the fee. A few comments expressed concerns about 
the fee being set too high, which would limit access to the program. A 
few comments expressed concerns about the fee being set too low, which 
could challenge Office resources to timely examine other applications. 
Some comments stated that the fee must be used solely for cost recovery 
for the examination of Track I applications. A few comments raised 
concerns about fee diversion by Congress and indicated that it is 
critical that the fee for prioritized examination not be subject to fee 
diversion. Some comments indicated that the diversion of fees is 
problematic in determining what fees are appropriate. Some comments 
expressed concerns about the disproportionate impact on small entities 
and supported a fee reduction for small entities and micro entities, 
but recognized that the Office does not currently have the statutory 
authority to provide such a fee reduction. A few comments questioned 
how the fee would be set and requested that more detailed information 
be provided, including information on what the mechanism would be for 
ongoing assessment or adjustment of the fee.
    Response: The Office is not setting the prioritized examination fee 
based on any perceived level of participation in Track I. The 
prioritized examination fee is being set based on the estimated average 
cost to the Office of performing the service, per 35 U.S.C. 41(d)(2). 
As discussed above, the Office plans to hire additional examiners above 
the number of planned hires based on the number of requests for Track I 
prioritization received by the Office. The Office is also setting an 
annual cap on the number of applications that can be granted 
prioritized examination in Track I to further ensure that the Office 
will be able to meet its goal of providing a final disposition within 
twelve months of prioritized status being granted. If the 
appropriations that the Office receives are not adjusted to reflect the 
projected fee revenue resulting from the prioritized examination 
program, then the Office will need to consider eliminating the program. 
The Office will monitor the program closely and will assess the 
prioritized examination fee on a regular basis and make any needed 
adjustments through the rule making process. The Office will also 
continue to seek additional fee setting authority that would allow it 
to provide for a small entity fee reduction for the fee for prioritized 
examination.
    Comment 7: Some comments supported having a single queue for 
examination of all applications that are accelerated or prioritized, 
while some comments were opposed to having such a single queue. Some 
comments that supported a single queue identified simplicity and 
administrative efficiency as the reasons. The comments that opposed a 
single queue primarily focused on the different requirements for the 
different programs. One comment stated that it seemed unfair to treat 
applications filed under the Patent Prosecution Highway (PPH) or the 
Petition to Make Special procedure (Accelerated Examination) the same 
as applications filed under Track I or the Project Exchange program 
since applicants under the PPH program or the Petition to Make Special 
program (Accelerated Examination) have incurred the greater burden in 
preparing their applications and thus these applications should be 
placed in separate queues. One comment stated that applications 
expedited for reasons of infringement should have precedence over 
applications expedited merely for policy grounds, such as green 
technology. One comment suggested unifying the programs to provide an 
extendable three-month time period for replies by applicant. One 
comment raised concerns about the PPH fee being reinstated if the 
programs are integrated. One comment wanted to know how the Office 
would be able to determine the additional examiner workload 
attributable to Track I applications if there is a single queue. One 
comment suggested that the Office consider combining all prioritized 
applications into a single program, not just a single queue, and 
provide waivers to accommodate variations. One comment requested 
clarification on whether all applications in the queue are handled on 
an expedited basis for all stages of prosecution.
    Response: In view of the mixed comments and the different goals of 
the different programs, the Office is not proposing to provide a single 
queue in this notice. The Office will continue to monitor the various 
programs. If prioritized examination under Sec.  1.102(e) is requested 
on filing with an application, the examination will be expedited until 
a final disposition is reached (e.g., the filing of a request for 
continued examination or a notice of appeal) or the prioritized 
examination of the application is terminated. Regarding the other 
programs, the Office has posted a comparison chart of domestic 
acceleration initiatives on the Office's Internet Web site that 
identifies to what extent applications in each program are accelerated 
or expedited. See http://www.uspto.gov/patents/process/file/

[[Page 6373]]

accelerated/comp--chart--dom--accel.pdf. For information on the PPH 
program, see http://www.uspto.gov/patents/init_events/pph/index.jsp.
    Comment 8: Some comments supported requiring an applicant who 
requested prioritized examination to pay the required fee again on 
filing of a request for continued examination, while other comments 
stated that a single fee should be sufficient to have prioritized 
examination throughout the pendency of the application. One comment 
stated that the Office would need to justify that there is an 
additional cost to the Office which is not covered by the fee that was 
paid with the original request for prioritized examination. A few 
comments indicated that the initial fee should be sufficient to cover 
the first request for continued examination, but applicants should have 
to pay the required fee again on filing of any subsequent requests for 
continued examination if prioritized examination is still desired. A 
few comments supported requiring a fee for the additional cost of 
prioritization for the request for continued examination, but 
questioned whether the fee should be equal to the initial fee.
    Response: The proposed fee for prioritized examination of an 
application does not take into account the additional costs incurred by 
the Office when a request for continued examination is filed in an 
application. Therefore, the prioritized examination of the application 
will be terminated if a request for continued examination is filed. The 
Office is considering a sui generis practice for prioritized 
applications under which an applicant may file a single submission 
after final for a fee with the next action being made final if the 
submission does not place the application in condition for allowance.
    Comment 9: Several comments supported prioritized examination being 
available at any time during examination or appeal to the BPAI. Several 
comments indicated that the ability to prioritize an application on 
appeal was important. One comment that supported the ability to file a 
request at the appeal stage raised concerns about causing delays in 
other appeals, particularly those appeals that may have been pending a 
long time, and suggested implementing a transition period where appeals 
whose resolution is imminent would remain at the front of the queue. 
One comment questioned whether the fee would be less if the request for 
prioritized examination is submitted after a substantial amount of 
examination has occurred. One comment supported the ability to 
transition in and out of Track I at applicant's discretion at any time 
during prosecution.
    Response: The proposed fee for prioritized examination of an 
application does not take into account the additional costs incurred by 
the Office when an appeal is filed in an application. Therefore, the 
prioritized examination of the application will be terminated in an 
application on appeal upon filing of a notice of appeal to the BPAI. 
The Office is considering a prioritized appeals process.
    Comment 10: Several comments were opposed to limiting the the 
number of claims permitted in a prioritized application, while some 
comments supported limiting the number of claims. One comment supported 
the Office's proposed limit of four independent claims and thirty total 
claims as providing sufficient flexibility for applicants. A few 
comments suggested that the Office consider a lower limit of three 
independent claims and twenty total claims. A few comments suggested 
that the Office consider up to six independent claims and forty total 
claims. One comment suggested that the Office consider different fees 
for applications of different sizes. One comment that was opposed to 
limiting the number of claims suggested an additional prioritization 
surcharge for each excess independent and dependent claim. Another 
comment suggested that the Office consider a steeper claim fee 
structure or a tiered claim fee structure for Track I applications. One 
comment stated that additional surveys or studies should be conducted 
to ascertain whether the proposed limit on claims is proper. A few 
comments that supported a limit stated that the Office should perform a 
cost analysis to determine the relationship between the claim count and 
the corresponding costs of examination of prioritized applications 
before specifying a limit on the number of claims. Another comment that 
expressed concerns about the proposed limitation specifically requested 
that the Office consider the impact of the proposed limitation on small 
entities, provide additional information regarding how the Office 
arrived at the proposed limitation of four independent claims and 
thirty total claims, and seek comments from small entities on the 
proposed limitation.
    Response: The Office is proposing that Track I applications be 
limited to four independent claims and thirty total claims. The Office 
has experience expediting examination under the Accelerated Examination 
program, which has a limit of three independent claims and twenty total 
claims. The Office recognizes that many applicants have expressed 
concerns regarding a limit of three independent claims and twenty total 
claims as not being sufficient in all cases. At the same time, the 
Office is aware from its experience in other programs that there does 
need to be some limit on the number of claims in order for the Office 
to be able to satisfy its goals for prioritized examination. Thus, the 
Office is proposing that an application must be limited to no more than 
four independent and thirty total claims to be eligible for prioritized 
examination.
    Comment 11: Some comments were opposed to having other requirements 
for use of the prioritized track such as limiting the use of extensions 
of time, while some comments supported limiting the use of extensions 
of time. Some comments suggested that if an applicant does request an 
extension of time in a prioritized application, then the application 
should simply be removed from the prioritized examination (Track I). 
One comment suggested that the Office consider permitting extensions of 
time but imposing higher extension fees for Track I applications. One 
comment stated that the Office should consider setting reduced 
shortened statutory time periods for replies to Office actions such as 
one month, with the applicant having the ability to pay for up to a 
five-month extension of time. One comment opposed shortening deadlines 
to reply to Office communications or requiring additional information 
such as an examination support document. One comment stated that any 
additional requirements should not be punitive in nature.
    Response: The Office will not prohibit the use of extensions of 
time for applications that have been granted prioritized examination 
under proposed Sec.  1.102(e) per se. Where, however, an applicant 
files a petition for an extension of time to extend the time period for 
filing a reply, the prioritized examination of the application will be 
terminated.
    Comment 12: Some comments were opposed to early publication of 
applications in Track I, while some comments supported it. One comment 
indicated that early publication should be at applicant's option. A few 
comments indicated that early publication could affect applicant's 
ability to file patent applications on related inventions and thus this 
would discourage applicants from using Track I. A number of comments 
supported eighteen-month publication of applications for all three 
tracks.

[[Page 6374]]

    Response: The Office is not proposing to require early publication 
of applications in Track I. An applicant may, however, request early 
publication of an application in Track I, if desired. Furthermore, an 
applicant may request nonpublication under 35 U.S.C. 122(b)(2)(B)(i) of 
an application in Track I if the applicant can make the certification 
required by 35 U.S.C. 122(b)(2)(B)(i) and Sec.  1.213(a).
    Comment 13: One comment questioned whether final disposition for 
the twelve-month goal means final rejection or allowance, or issuance 
or abandonment.
    Response: The final disposition for the twelve-month goal means: 
(1) Mailing of a notice of allowance, (2) mailing of a final Office 
action, (3) filing of notice of appeal, (4) declaration of an 
interference by the BPAI, (5) filing of a request for continued 
examination, or (6) abandonment of the application, within twelve 
months from the date prioritized status has been granted. The goal is 
an aggregate goal for all prioritized applications. The Office plans to 
post data at the work group level on the Office's Internet Web site 
that will show whether or not the Office is making its goals. As 
discussed previously, the prioritized examination of the application 
will be terminated if applicant files a petition for an extension of 
time to extend the time period for filing a reply.
    Comment 14: A few comments questioned whether the Office will 
refund or at least partially refund the fee if the Office is not able 
to meet its obligations and prioritization does not occur. One comment 
suggested that a better tracking and monitoring system is needed for 
accelerated applications. One comment suggested that the system should 
have prioritized printing once a notice of allowance is mailed. One 
comment questioned whether the Office would grant a partial refund for 
applicants who request prioritized examination and then opt out.
    Response: The Office will not refund the fee required for 
requesting prioritized examination under Sec.  1.102(e). The twelve-
month time period to final disposition is an aggregate goal of the 
Office for the examination of all Track I applications. The fact that 
the Office in a particular application did not meet the goal would not 
entitle the applicant to a refund. It should also be noted that 
applicants will have received advancement of examination even if the 
goals are not met. In addition, even if the prioritized examination of 
the application is terminated, the Office will not refund the fee. The 
prioritized examination fee would not be a fee paid by mistake. Rather, 
it would simply be a change in purpose on the part of the applicant 
after payment of the fee. Therefore, the Office would not have the 
authority to refund the fee under 35 U.S.C. 42(d). As with other 
applications that have been made special, applications that have been 
prioritized under Sec.  1.102(e) will be prioritized in the patent 
publication process. The Office is working on improvements to its 
tracking and monitoring system as part of its Patents End-to-End 
Information Technology (IT) project.
    Comment 15: A few comments were concerned about the availability of 
prior art for applications in Track I and stated that there may be an 
adverse effect on quality if examination occurs before certain prior 
art becomes available, such as applications published at eighteen 
months. One comment questioned how the Office would ensure that 
potential prior art that is not yet available to the public be taken 
into consideration. One comment indicated that the one-year provision 
for interferences (in 35 U.S.C. 135(b)(1)) would give patents granted 
earlier under Track I unfair advantages and stated that it would be 
difficult to justify Track I as long as the U.S. is a first-to-invent 
country.
    Response: The Office currently examines applications where 
potential prior art is not yet available. For example, during 
examination of an application, the examiner may have knowledge of an 
unpublished application that may soon be published or patented, and 
that would be available as prior art in the application under 
examination upon publication or patenting. In these situations, the 
Office may suspend an application that is otherwise allowable until the 
prior art reference becomes available. Furthermore, when a Track I 
application is being allowed, the examiner would conduct a search of 
unpublished applications for interference purposes. Applicants must 
copy claims from a U.S. patent or U.S. patent application within one 
year under 35 U.S.C. 135(b). Issuing patents earlier as a result of 
Track I will encourage earlier resolution of interference situations, 
which would be to the public's benefit. This, of course, assumes that 
the Office failed to suspend the application that issued as a patent to 
await the prior art reference.
    Comment 16: A few comments questioned whether all of the provisions 
of the proposal would be implemented prospectively and thus only apply 
to applications filed on or after the implementation date or whether 
any of the provisions, such as prioritized examination, would be 
available for all pending and future applications. Another comment 
questioned whether continuing applications would be eligible for Track 
I, whether this would depend on whether the parent application was 
filed after the implementation date, and whether the parent application 
was in Track I. One comment questioned whether additional examiners for 
Track I would need to be hired before the program can be implemented. 
Another comment supported the availability of Track I for reissue 
applications and continuing applications.
    Response: The provisions will be available only for applications 
(including new continuing applications) filed on or after the date of 
implementation. Track I will not be available for reissue applications 
since reissue applications are already treated as special applications. 
See MPEP Sec.  1442. Additional examiners for Track I will not need to 
be hired before the program can be implemented.
    Comment 17: One comment suggested that the Office consider 
techniques to encourage compact prosecution for applications in Track I 
such as providing an incentive for the use of interviews, liberalizing 
after-final practice, and offering incentives to encourage applicants 
to reply more promptly. A few comments were concerned about maintaining 
examination quality for Track I applications. One comment suggested 
that Track I include measures to maintain high quality examination such 
as mandatory examiner interviews before a first Office action, required 
information disclosure statement (IDS) submissions, examination only by 
primary examiners or supervisory patent examiners, specialized examiner 
training for fast track processing, incentives for final resolution of 
the application, extension of the period in Sec.  1.99 for a third 
party to submit references after publication to four months, and clear 
instructions for applicants including detailed guidelines. One comment 
emphasized that the level of review for Track I applications should be 
the same as other applications and the record should be complete, 
notwithstanding the accelerated time frame. A few other comments also 
supported providing for an examiner interview prior to a first Office 
action in Track I applications at applicant's option.
    Response: The Office has been encouraging compact prosecution 
techniques in all applications and emphasizing the importance and use 
of interviews over the past few years. It is noted that the suggestion 
regarding after

[[Page 6375]]

final practice would likely increase the number of Office actions and 
not encourage applicants to present the best reply after the first 
Office action, which would extend the examination process and make it 
less likely that the Office would be able to meet its goals. 
Furthermore, as discussed previously, the Office is considering a sui 
generis practice for prioritized applications under which an applicant 
may file a single submission after final for a fee with the next action 
being made final if the submission does not place the application in 
condition for allowance. The level of review for Track I applications 
will be the same as for other applications and examiners will be 
expected to make the record complete and provide the same high quality 
examination as they do for other applications. It is noted that there 
does not appear to be any need as a result of implementation of Track I 
to increase the time period in Sec.  1.99 for a third party to submit 
references after publication.
    Comment 18: One comment suggested a bidding system for Track I in 
which patent applicants could bid on their place in line, with the 
highest bids being given the highest priority, which could create a 
large increase in fee payments and a surplus of resources which could 
be used to decrease the time for other applications to be examined. 
Another comment suggested having a nominal fee for Track I, instead of 
a substantial fee, and permitting any business entity to have a certain 
number of Track I applications per year, which would keep the number 
and costs down.
    Response: The Office does not have the statutory authority to 
implement the suggested bidding system. Likewise, the Office does not 
have the authority to set a nominal fee for requesting prioritized 
examination. The Office only has the statutory authority to establish 
fees to recover the estimated average cost of performing the service.

Rulemaking Considerations

    A. Regulatory Flexibility Act: For the reasons set forth herein, 
the Deputy General Counsel for General Law of the United States Patent 
and Trademark Office has certified to the Chief Counsel for Advocacy of 
the Small Business Administration that changes proposed in this notice 
will not have a significant economic impact on a substantial number of 
small entities. See 5 U.S.C. 605(b).
    This notice proposes changes to implement an optional prioritized 
examination process. The primary impact of the change on the public 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. No applicant is required to 
employ this optional prioritized examination process to obtain 
examination of his or her application under the current procedures for 
examination of an application for patent, or to obtain a patent 
provided that the application meets the current conditions for the 
applicants to be entitled to a patent. In addition, the availability of 
this prioritized examination process will not have any negative impact 
on any applicant who elects not to request the prioritized examination 
process. Therefore, the changes proposed in this notice will not have a 
significant economic impact on a substantial number of small entities.
    B. 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).
    C. 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).
    D. 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).
    E. 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).
    F. 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).
    G. 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).
    H. 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).
    I. 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 U.S. 
Senate, the U.S. 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).
    J. Unfunded Mandates Reform Act of 1995: The changes proposed 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.
    K. National Environmental Policy Act: This rule making will not 
have any effect on the quality of environment and is thus categorically 
excluded from review under the National Environmental Policy Act of 
1969. See 42 U.S.C. 4321 et seq.
    L. 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.
    M. Paperwork Reduction Act: This rulemaking is proposed to 
implement an optional prioritized examination process. The primary 
impact of the

[[Page 6376]]

change on the public 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.
    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, 37 CFR part 1 is 
proposed to be 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 paragraph (c) to read as 
follows:


Sec.  1.17  Patent application and reexamination processing fees.

* * * * *
    (c) For filing a request for prioritized examination under Sec.  
1.102(e)--$4,000.
* * * * *
    3. Section 1.102 is amended by revising paragraph (a) and adding 
paragraph (e) to read as follows:


Sec.  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) filed via the Office's electronic 
filing system (EFS-Web), that is complete as defined by Sec.  1.51(b), 
with any fees due under Sec.  1.16 paid on filing. 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 Sec.  1.17(c), the processing fee set forth in Sec.  1.17(i), 
and the publication fee set forth in Sec.  1.18(d). Prioritized 
examination under this paragraph will not be accorded to a design 
application or reissue application, and will not be accorded to any 
application that contains or is amended to contain more than four 
independent claims, more than thirty total claims, or any multiple 
dependent claim.
* * * * *

    Dated: February 1, 2011.
David J. Kappos,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 2011-2585 Filed 2-3-11; 8:45 am]
BILLING CODE 3510-16-P