[Federal Register Volume 76, Number 243 (Monday, December 19, 2011)]
[Rules and Regulations]
[Pages 78566-78569]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2011-32434]


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DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Part 1

[Docket No. PTO-P-2011-0070]
RIN 0651-AC65


Changes To Implement the Prioritized Examination for Requests for 
Continued Examination

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Final rule.

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SUMMARY: The Leahy-Smith America Invents Act includes provisions for 
prioritized examination of patent applications. The United States 
Patent and Trademark Office (Office) implemented the Leahy-Smith 
America Invents Act prioritized examination provision following the 
prioritized examination track (Track I) of the proposed 3-Track 
examination process in a previous final rule. The final rule was made 
applicable to newly filed patent applications. In order to provide 
patent applicants with the flexibility to accelerate processing of 
their applications in which a request for continued examination has 
been filed, the Office is now permitting applicants to request 
prioritized examination for applications after the filing of a request 
for continued examination.

DATES: Effective Date: The changes in this final rule are effective on 
December 19, 2011.
    Applicability Date: The changes in this final rule are applicable 
to any patent application in which a proper request for continued 
examination has been filed before, on, or after December 19, 2011.

FOR FURTHER INFORMATION CONTACT: By telephone to Eugenia A. Jones, at 
(571) 272-7727, Kathleen Kahler Fonda, at (571) 272-7754, or Michael T. 
Cygan, at (571) 272-7700; or by mail addressed to: United States Patent 
and Trademark Office, Mail Stop Comments--Patents, Commissioner for 
Patents, P.O. Box 1450, Alexandria, VA 22313-1450, marked to the 
attention of Eugenia A. Jones, Kathleen Kahler Fonda or Michael T. 
Cygan.

SUPPLEMENTARY INFORMATION: Under the procedure set forth in this final 
rule, once the application is accorded special status after the filing 
of a request for continued examination it will be placed on the 
examiner's special docket throughout its entire course of continued 
prosecution before the examiner until a final disposition is reached in 
the application. The goal for handling applications under prioritized 
examination for request for continued examination is to, on average, 
provide a final disposition within twelve months of prioritized status 
being granted. For purposes of the twelve-month goal, ``final 
disposition'' can be any of the following: (1) Mailing of a notice of 
allowance; (2) mailing of a final Office action; (3) filing of a notice 
of appeal; (4) completion of examination as defined in 37 CFR 41.102; 
(5) filing of a subsequent request for continued examination; or (6) 
abandonment of the application. An application under prioritized 
examination, however, would not be accorded special status throughout 
its entire course of appeal or interference before the BPAI, or after 
the filing of a subsequent request for continued examination.
    Filing an amendment to the application which results in more than 
four independent claims, more than thirty total claims, or a multiple 
dependent claim will terminate the prioritized examination. Upon 
termination of prioritized examination, the application will be removed 
from the examiner's special docket and placed on the examiner's regular 
docket in accordance with its stage of prosecution. As the termination 
of prioritized examination does not cause the prioritized examination 
fee to have been paid by mistake or in an amount in excess of that 
required, the termination of prioritized examination will not entitle 
the applicant to a refund of the prioritized examination fee. See

[[Page 78567]]

35 U.S.C. 42(d) and Sec.  1.26(a) (permits refunds only for fees ``paid 
by mistake or any amount paid in excess of that required'').
    As discussed previously, the submission of an amendment resulting 
in more than four independent claims or more than thirty total claims 
is not prohibited, but simply terminates the prioritized examination. 
Thus, upon mailing of a final rejection (at which point prioritized 
examination is terminated), applicants may amend the claims to place 
them in independent form where dependent claims were found allowable, 
or add new claims, subject only to the limitations applicable to any 
application under final rejection. See 37 CFR 1.116. Similarly, upon 
mailing of a notice of allowance, applicants may submit amendments to 
the claims, again subject only to the limitations applicable to any 
application that has been allowed. See 37 CFR 1.312.
    The requirements for requesting prioritized examination after the 
filing of a request for continued examination are summarized below. A 
patent application may be granted prioritized examination status under 
the following conditions:
    (1) The request for continued examination must be in an original 
utility or plant nonprovisional application filed under 35 U.S.C. 
111(a) or that has entered the national stage under 35 U.S.C. 371.
    (2) The request for prioritized examination must be filed via the 
Office's electronic filing system (EFS-Web), except in a plant 
application for which the request must be filed in paper (MPEP 
502.05(II)(B)) prior to the mailing of a first Office action after the 
filing of the request for continued examination under 37 CFR 1.114. The 
request for prioritized examination may either be filed concurrently 
with, or subsequently to, the filing of a request for continued 
examination.
    (3) At the time of the request for prioritized examination, the 
application must contain or be amended to contain no more than four 
independent claims and no more than thirty total claims. In addition, 
the application must not contain any multiple dependent claims. If an 
amendment is filed in an application that has been granted prioritized 
examination that results in more than four independent claims or thirty 
total claims, or a multiple dependent claim, then prioritized 
examination will be terminated.
    (4) The request for prioritized examination must be accompanied by 
the prioritized examination fee set forth in 37 CFR 1.17(c), the 
processing fee set forth in 37 CFR 1.17(i), and if not previously paid, 
the publication fee set forth in 37 CFR 1.18(d). Applicants are advised 
to use the certification and request form PTO/SB/424 which is available 
on EFS-Web.
    (5) The Leahy-Smith America Invents Act currently limits the number 
of requests for prioritized examination under Sec.  1.102(e) that the 
Office may accept to a maximum of 10,000 per fiscal year. This includes 
both requests for prioritized examination for initial examination (37 
CFR 1.102(e)(1)) and requests for prioritized examination after filing 
of a request for continued examination (37 CFR 1.102(e)(2)).

Discussion of Specific Rules

    Title 37 of the Code of Federal Regulations, Part 1, is proposed to 
be amended as follows:
    Section 1.102: Section 1.102(e) is revised to set out the general 
requirements for prioritized examination and the specific requirements 
for prioritized examination for initial examination (Track I) (37 CFR 
1.102(e)(1)) and for prioritized examination after the filing of a 
request for continued examination (37 CFR 1.102(e)(2)).
    Section 1.102(e) provides that a request for prioritized 
examination under Sec.  1.102(e) must comply with the requirements of 
Sec.  1.102(e) and 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). Section 
1.102(e) also provides that 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. Section 1.102(e) also provides that 
prioritized examination under this paragraph will not be accorded to 
international applications that have not entered the national stage 
under 35 U.S.C. 371, design applications, reissue applications, 
provisional applications, or reexamination proceedings. Finally, Sec.  
1.102(e) provides that a request for prioritized examination must also 
comply with the requirements of Sec.  1.102(e)(1) or Sec.  1.102(e)(2).
    Section 1.102(e)(1) provides that a request for prioritized 
examination may be filed with an original utility or plant 
nonprovisional application under 35 U.S.C. 111(a) that is complete as 
defined by Sec.  1.51(b), with any fees due under Sec.  1.16 paid on 
filing. If the application is a utility application, it must be filed 
via the Office's electronic filing system (EFS-Web). The request for 
prioritized examination in compliance with Sec.  1.102(e)(1) must be 
present upon filing. The discussion in the final rule to implement 
prioritized examination for initial examination (Track I) (Changes to 
Implement the Prioritized Examination Track (Track I) of the Enhanced 
Examination Timing Control Procedures under the Leahy-Smith America 
Invents Act, 76 FR 59050 (Sept. 23, 2011)) remains applicable to 
request for prioritized examination under Sec.  1.102(e)(1).
    Section 1.102(e)(2) provides that a request for prioritized 
examination may be filed with or after a request for continued 
examination in compliance with Sec.  1.114. Only a single such request 
for prioritized examination under Sec.  1.102(e)(2) may be granted in 
an application. If the application is a utility application, the 
request must be filed via the Office's electronic filing system (EFS-
Web). The request must be filed before the mailing of the first Office 
action after the filing of the request for continued examination under 
Sec.  1.114. The request 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 if not already paid, the publication fee 
set forth in Sec.  1.18(d).

Rule Making Considerations

A. Administrative Procedure Act

    This final rule implements prioritized examination for applications 
after the filing of a request for continued examination under 35 U.S.C. 
132(b) and 37 CFR 1.114. The changes in this final rule that implement 
the fee for prioritized examination and requirements specified in 
section 11(h) of the Leahy-Smith America Invents Act are merely 
interpretative. See Gray Panthers Advocacy Comm. v. Sullivan, 936 F.2d 
1284, 1291-1292 (DC Cir. 1991) (regulation that reiterates statutory 
language does not require notice and comment procedures); See Nat'l 
Org. of Veterans' Advocates v. Sec'y of Veterans Affairs, 260 F.3d 
1365, 1375 (Fed. Cir. 2001). The additional requirements (e.g., filing 
via the Office's electronic filing system (EFS-Web)) merely specify the 
procedures that apply to applications for which an applicant has 
requested prioritized examination and are thus procedural and not 
substantive. See JEM Broad. Co. v. FCC, 22 F.3d 320, 326 (DC Cir. 1994) 
(``[T]he critical feature of the procedural exception [in 5 U.S.C. 
553(b)(A)] is that it covers agency actions that do not themselves 
alter the rights or interests of parties, although [they] may alter the 
manner in which the parties present themselves or their viewpoints to 
the

[[Page 78568]]

agency'') (quoting Batterton v. Marshall, 648 F.2d 694, 707 (DC Cir. 
1980)). Specifying the procedures for according prioritized examination 
for an application in which a request for continued examination has 
been made concerns only the manner in which applicants interact with 
the Office and does not change the substantive rights (condition of 
patentability) of any patent applicant. See Bachow Communications, Inc. 
v. F.C.C., 237 F.3d 683 (DC Cir. 2001) (rule permitting or suspending 
amendments to applications was procedural).
    Accordingly, prior notice and an opportunity for public comment are 
not required pursuant to 5 U.S.C. 553(b)(A) or any other law. See 
Cooper Techs. Co. v. Dudas, 536 F.3d 1330, 1336-37 (Fed. Cir. 2008) 
(stating that 5 U.S.C. 553, and thus 35 U.S.C. 2(b)(2)(B), do not 
require notice and comment rule making for ``interpretative rules, 
general statements of policy, or rules of agency organization, 
procedure, or practice.'') (quoting 5 U.S.C. 553(b)(A)). In addition, 
thirty-day advance publication is not required pursuant to 5 U.S.C. 
553(d) or any other law. See 5 U.S.C. 553(d) (requiring thirty-day 
advance publication for substantive rules).

B. Regulatory Flexibility Act

    As prior notice and an opportunity for public comment are not 
required pursuant to 5 U.S.C. 553 or any other law, neither a 
regulatory flexibility analysis nor a certification under the 
Regulatory Flexibility Act (5 U.S.C. 601 et seq.) is required. See 5 
U.S.C. 603.

C. Executive Order 12866 (Regulatory Planning and Review)

    This rule making has been determined to be not significant for 
purposes of Executive Order 12866 (Sept. 30, 1993).

D. Executive Order 13563 (Improving Regulation and Regulatory Review)

    The Office has complied with Executive Order 13563 (Jan. 18, 2011). 
Specifically, the Office has, to the extent feasible and applicable: 
(1) Made a reasoned determination that the benefits justify the costs 
of the rule; (2) tailored the rule to impose the least burden on 
society consistent with obtaining the regulatory objectives; (3) 
selected a regulatory approach that maximizes net benefits; (4) 
specified performance objectives; (5) identified and assessed available 
alternatives; (6) involved the public in an open exchange of 
information and perspectives among experts in relevant disciplines, 
affected stakeholders in the private sector and the public as a whole, 
and provided on-line access to the rule making docket; (7) attempted to 
promote coordination, simplification and harmonization across 
government agencies and identified goals designed to promote 
innovation; (8) considered approaches that reduce burdens and maintain 
flexibility and freedom of choice for the public; and (9) ensured the 
objectivity of scientific and technological information and processes.

E. Executive Order 13132 (Federalism)

    This rule making does not contain policies with federalism 
implications sufficient to warrant preparation of a Federalism 
Assessment under Executive Order 13132 (Aug. 4, 1999).

F. Executive Order 13175 (Tribal Consultation)

    This rule making will not: (1) Have substantial direct effects on 
one or more Indian tribes; (2) impose substantial direct compliance 
costs on Indian tribal governments; or (3) preempt tribal law. 
Therefore, a tribal summary impact statement is not required under 
Executive Order 13175 (Nov. 6, 2000).

G. Executive Order 13211 (Energy Effects)

    This rule making is not a significant energy action under Executive 
Order 13211 because this rule making is not likely to have a 
significant adverse effect on the supply, distribution, or use of 
energy. Therefore, a Statement of Energy Effects is not required under 
Executive Order 13211 (May 18, 2001).

H. Executive Order 12988 (Civil Justice Reform)

    This rule making meets applicable standards to minimize litigation, 
eliminate ambiguity, and reduce burden as set forth in sections 3(a) 
and 3(b)(2) of Executive Order 12988 (Feb. 5, 1996).

I. Executive Order 13045 (Protection of Children)

    This rule making does not concern an environmental risk to health 
or safety that may disproportionately affect children under Executive 
Order 13045 (Apr. 21, 1997).

J. Executive Order 12630 (Taking of Private Property)

    This rule making will not effect a taking of private property or 
otherwise have taking implications under Executive Order 12630 (Mar. 
15, 1988).

K. Congressional Review Act

    Under the Congressional Review Act provisions of the Small Business 
Regulatory Enforcement Fairness Act of 1996 (5 U.S.C. 801 et seq.), 
prior to issuing any final rule, the United States Patent and Trademark 
Office will submit a report containing the final rule and other 
required information to the United States Senate, the United States 
House of Representatives, and the Comptroller General of the Government 
Accountability Office. The changes in this notice are not expected to 
result in an annual effect on the economy of 100 million dollars or 
more, a major increase in costs or prices, or significant adverse 
effects on competition, employment, investment, productivity, 
innovation, or the ability of United States-based enterprises to 
compete with foreign-based enterprises in domestic and export markets. 
Therefore, this notice is not expected to result in a ``major rule'' as 
defined in 5 U.S.C. 804(2).

L. Unfunded Mandates Reform Act of 1995

    The changes set forth in this notice do not involve a Federal 
intergovernmental mandate that will result in the expenditure by State, 
local, and tribal governments, in the aggregate, of 100 million dollars 
(as adjusted) or more in any one year, or a Federal private sector 
mandate that will result in the expenditure by the private sector of 
100 million dollars (as adjusted) or more in any one year, and will not 
significantly or uniquely affect small governments. Therefore, no 
actions are necessary under the provisions of the Unfunded Mandates 
Reform Act of 1995. See 2 U.S.C. 1501 et seq.

M. National Environmental Policy Act

    This rule making will not have any effect on the quality of the 
environment and is thus categorically excluded from review under the 
National Environmental Policy Act of 1969. See 42 U.S.C. 4321 et seq.

N. National Technology Transfer and Advancement Act

    The requirements of section 12(d) of the National Technology 
Transfer and Advancement Act of 1995 (15 U.S.C. 272 note) are not 
applicable because this rule making does not contain provisions which 
involve the use of technical standards.

O. Paperwork Reduction Act

    This rule making implements a prioritized examination process. The 
primary impact on the public of this change is that applicants will 
have the option to request prioritized examination by paying 
appropriate fees, filing a request via the Office's electronic filing 
system (EFS-Web), and limiting their applications to four independent 
claims and thirty total

[[Page 78569]]

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 record keeping 
requirements, Small Businesses.

    For the reasons set forth in the preamble, 37 CFR part 1 is amended 
as follows:

PART 1--RULES OF PRACTICE IN PATENT CASES

0
1. The authority citation for 37 CFR Part 1 continues to read as 
follows:

    Authority:  35 U.S.C. 2(b)(2).


0
2. Section 1.102 is amended by revising paragraph (e) to read as 
follows:


Sec.  1.102  Advancement of examination.

* * * * *
    (e) A request for prioritized examination under this paragraph must 
comply with the requirements of this paragraph and be accompanied by 
the prioritized examination fee set forth in Sec.  1.17(c), the 
processing fee set forth in Sec.  1.17(i), and if not already paid, the 
publication fee set forth in Sec.  1.18(d). An application for which 
prioritized examination has been requested may not contain or be 
amended to contain more than four independent claims, more than thirty 
total claims, or any multiple dependent claim. Prioritized examination 
under this paragraph will not be accorded to international applications 
that have not entered the national stage under 35 U.S.C. 371, design 
applications, reissue applications, provisional applications, or 
reexamination proceedings. A request for prioritized examination must 
also comply with the requirements of paragraph (e)(1) or paragraph 
(e)(2) of this section.
    (1) A request for prioritized examination may be filed with an 
original utility or plant nonprovisional application under 35 U.S.C. 
111(a) that is complete as defined by Sec.  1.51(b), with any fees due 
under Sec.  1.16 paid on filing. If the application is a utility 
application, it must be filed via the Office's electronic filing 
system. The request for prioritized examination in compliance with this 
paragraph must be present upon filing of the application.
    (2) A request for prioritized examination may be filed with or 
after a request for continued examination in compliance with Sec.  
1.114. If the application is a utility application, the request must be 
filed via the Office's electronic filing system. The request must be 
filed before the mailing of the first Office action after the filing of 
the request for continued examination under Sec.  1.114. Only a single 
such request for prioritized examination under this paragraph may be 
granted in an application.

    Dated: December 7, 2011.
David J. Kappos,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 2011-32434 Filed 12-16-11; 8:45 am]
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