[Federal Register Volume 79, Number 43 (Wednesday, March 5, 2014)]
[Rules and Regulations]
[Pages 12386-12390]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2014-04806]


-----------------------------------------------------------------------

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: [email protected]. 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://

[[Page 12387]]

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[supreg] portable 
document format or MICROSOFT WORD[supreg] format. Comments not 
submitted electronically should be submitted on paper in a format that 
facilitates convenient digital scanning into ADOBE[supreg] portable 
document format.
    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 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 Sec.  1.53(f)(3)(i) will 
be eligible for prioritized examination (provided that the conditions 
of Sec.  1.102(e) as revised in this interim rule are met). Pursuant to 
Sec.  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

[[Page 12388]]

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, Sec.  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 
Sec.  1.53(f)(3) if an application data sheet meeting the conditions 
specified in Sec.  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 Sec.  
1.16(h), (i), or (j) or any application size fee due under Sec.  
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 Sec.  1.53(f)(4), which require that those fees be paid 
prior to the expiration of the time period set for reply by the Office 
in any notice of fee deficiency in order to avoid abandonment.
    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, Sec.  
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 Sec.  1.16(a), search fee under Sec.  
1.16(k), and examination fee under Sec.  1.16(o) upon filing, and that 
if the application is a plant application, it must include the filing 
fee under Sec.  1.16(c), search fee under Sec.  1.16(m), and 
examination fee under Sec.  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 Sec.  1.17(c), the processing 
fee set forth in Sec.  1.17(i)(1), and the publication fee set forth in 
Sec.  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 Sec.  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 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

[[Page 12389]]

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 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.
    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

[[Page 12390]]

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

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)(1) to read as 
follows:


Sec.  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 Sec.  1.53(f)(3) if an application data sheet meeting 
the conditions specified in Sec.  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 
Sec.  1.16(a), search fee under Sec.  1.16(k), and examination fee 
under Sec.  1.16(o) upon filing. If the application is a plant 
application, it must include the filing fee under Sec.  1.16(c), search 
fee under Sec.  1.16(m), and examination fee under Sec.  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.
* * * * *

    Dated: 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.
[FR Doc. 2014-04806 Filed 3-4-14; 8:45 am]
BILLING CODE 3510-16-P