[Federal Register Volume 79, Number 220 (Friday, November 14, 2014)]
[Rules and Regulations]
[Pages 68124-68127]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2014-27037]


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DEPARTMENT OF COMMERCE

 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: Final rule.

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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. The Office 
published an interim rule on March 5, 2014 (prioritized examination 
interim rule), to simplify 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 a request 
for Track I prioritized examination requires, upon filing of the 
application, an inventor's oath or declaration and all required fees, 
and that the application contain no more than four independent claims, 
thirty total claims, and no multiple dependent claims. If a request for 
Track I prioritized examination failed to meet these requirements on 
filing, then the request was dismissed. After operating under the 
previous rulemakings for some time, the Office determined that the time 
period for meeting the identified requirements could be expanded and 
still enable the Office to timely examine the patent application. 
Hence, on March 5, 2014, the Office published the prioritized 
examination interim rule to expand the time period for meeting the 
identified requirements. The Office received no comments from the 
public in response. This final rule adopts as final the amendments to 
the rules of practice originally set forth in the prioritized 
examination interim rule.

DATES: Effective Date: This final rule is effective on November 14, 
2014. The prioritized examination interim rule published on March 5, 
2014 at 79 FR 12386 was effective on 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.

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: The prioritized examination interim 
rule simplified 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. This final 
rule adopts as final the amendments to the rules of practice originally 
set forth in the prioritized examination interim rule.
    Summary of Major Provisions: The prioritized examination provisions 
(37 CFR 1.102(e)) formerly required 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. The prioritized examination interim rule revised 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 is 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. This final rule adopts as 
final the amendments to the rules of practice originally set forth in 
the prioritized examination interim rule.
    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

[[Page 68125]]

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 were 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 reevaluated the necessity for each 
requirement to be met upon filing. The Office published the prioritized 
examination interim rule simplifying the Track I prioritized 
examination practice as the Office 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 and result in only minimal delay in the processing of the 
Track I request and the subsequent examination.
    Under the procedure set forth in the prioritized examination 
interim rule, the requirements for prioritized examination now 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 notifies the 
applicant and provides a non-extendable period of one month in which 
the applicant may cancel or amend the claims accordingly. If the 
applicant provides the required claim amendment or cancellation within 
the one-month period, the Track I request is 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 is given, and the Track I request is dismissed.
    Under the procedure set forth in the prioritized examination 
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) are not 
required to be paid on filing. An application in which excess claims 
fees or the application size fee are outstanding is 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

    This final rule adopts as final the amendments to Sec. Sec.  1.102 
originally set forth in the prioritized examination interim rule. The 
following is a discussion of the amendments to Title 37 of the Code of 
Federal Regulations, Part 1, in the prioritized examination interim 
rule.
    Section 1.102: The prioritized examination interim rule amended 
Sec.  1.102(e)(1) 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) is eligible for prioritized 
examination (provided that the conditions of Sec.  1.102(e) as revised 
in the prioritized examination interim rule are met). Pursuant to Sec.  
1.41(b), such an application data sheet sets the inventorship for the 
application, and the applicant may delay submission of the inventor's 
oath or declaration no later than the date on which the issue fee for 
the patent is paid. See Changes To Implement the Inventor's Oath or 
Declaration Provisions of the Leahy-Smith America Invents Act, 77 FR 
48776, 48779-80 (Aug. 14, 2012), and Changes to Implement the Patent 
Law Treaty, 78 FR 62367, 62376 (Oct. 21, 2013). Accordingly, the 
prioritized examination interim rule amended Sec.  1.102(e)(1) 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.
    The prioritized examination interim rule also amended Sec.  
1.102(e)(1) 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 
is 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.
    The prioritized examination interim rule further amended Sec.  
1.102(e)(1) 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 the 
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) continues to require 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. Section 
1.102(e)(1) also continues to require 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) further 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 is ineligible for Track I.
    The prioritized examination 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, 59051 (September 23, 2011).

[[Page 68126]]

    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 the prioritized examination 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.
    Comments: The Office received no comments in response to the 
prioritized examination interim rule.

Rulemaking Considerations

    A. Administrative Procedure Act: This final rule simply adopts as 
final changes in the prioritized examination interim rule, which 
pertain to the procedures that an applicant must follow in requesting 
Track I prioritized examination and 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. FCC, 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).
    In addition, the Office, pursuant to authority at 5 U.S.C. 
553(b)(3)(B), found good cause to adopt the changes in the prioritized 
examination interim rule without prior notice and an opportunity for 
public comment, as such procedures would have been contrary to the 
public interest. Delay in the promulgation of the prioritized 
examination interim rule to provide prior notice and comment procedures 
would have caused harm to those applicants who filed a request for 
Track I prioritized examination in an application that did not contain 
the inventor's oath or declaration, did not include all required fees 
on filing, or that contained more than four independent claims, more 
than thirty total claims, or a multiple dependent claim. Immediate 
implementation of the changes in the prioritized examination interim 
rule was in the public interest because: (1) The public did not need 
time to conform its conduct as the changes in the prioritized 
examination interim rule did not add any additional requirement for 
requesting prioritized examination of an application; and (2) those 
applicants who were ineligible for prioritized examination due to the 
previously stated reasons benefited from the changes in the prioritized 
examination interim rule. See Nat'l Customs Brokers & Forwarders Ass'n 
v. U.S., 59 F.3d 1219, 1223-24 (Fed. Cir. 1995).
    Accordingly, prior notice and opportunity for public comment were 
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 the 
prioritized examination interim rule were made immediately effective 
because they relieved restrictions in the requirements for requesting 
prioritized examination of an application.
    B. Regulatory Flexibility Act: As prior notice and an opportunity 
for public comment were 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

[[Page 68127]]

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 
rulemaking 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 final 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 rulemaking 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 rulemaking involves information collection requirements 
which are subject to review by the Office of Management and Budget 
(OMB) under the Paperwork Reduction Act of 1995 (44 U.S.C. 3501-3549). 
An applicant who wishes to participate in the prioritized examination 
program must submit a certification and request to participate in the 
prioritized examination program, preferably by using Form PTO/AIA/424. 
OMB has determined that, under 5 CFR 1320.3(h), Form PTO/AIA/424 does 
not collect ``information'' within the meaning of the Paperwork 
Reduction Act of 1995. This rule making does not impose any additional 
collection requirements under the Paperwork Reduction Act which are 
subject to further review by OMB.
    Notwithstanding any other provision of law, no person is required 
to respond to, nor shall a person be subject to a penalty for failure 
to comply with, a collection of information subject to the requirements 
of the Paperwork Reduction Act unless that collection of information 
displays a currently valid OMB control number.

List of Subjects in 37 CFR Part 1

    Administrative practice and procedure, Courts, Freedom of 
information, Inventions and patents, Reporting and recordkeeping 
requirements, Small businesses.

0
For the reasons set forth in the preamble, the interim rule amending 37 
CFR part 1 which was published at 79 FR 12386-12390 on March 5, 2014, 
is adopted as a final rule without change.

    Dated: November 6, 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. 2014-27037 Filed 11-13-14; 8:45 am]
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