[Federal Register Volume 86, Number 183 (Friday, September 24, 2021)]
[Rules and Regulations]
[Pages 52988-52991]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2021-20530]
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DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Part 1
[Docket No. PTO-P-2021-0038]
RIN 0651-AD56
2021 Increase of the Annual Limit on Accepted Requests for Track
One Prioritized Examination
AGENCY: United States Patent and Trademark Office, Department of
Commerce.
ACTION: Interim rule.
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SUMMARY: The Leahy-Smith America Invents Act (America Invents Act)
includes provisions for prioritized examination of patent applications
that have been implemented by the United States Patent and Trademark
Office (USPTO or Office) in previous rulemakings. The America Invents
Act provides that the Office may not accept more than 10,000 requests
for prioritization in any fiscal year (October 1 to September 30) until
regulations setting another limit are prescribed. The Office published
an interim rule in 2019 expanding the availability of prioritized
examination by increasing the limit on the number of prioritized
examination requests that may be accepted in a fiscal year to 12,000.
The current interim rule further expands the availability of
prioritized examination by increasing the limit on the number of
prioritized examination requests that may be accepted in a fiscal year
to 15,000.
DATES:
Effective Date: September 24, 2021.
Applicability Date: The limit of 15,000 requests for prioritized
examination accepted per year is applicable for fiscal year 2021.
Comment Deadline Date: Written comments must be received on or
before November 23, 2021.
ADDRESSES: For reasons of Government efficiency, comments must be
submitted through the Federal eRulemaking Portal at
www.regulations.gov. To submit comments via the portal, enter docket
number PTO-P-2021-0038 on the homepage and click ``Search.'' The site
will provide a search results page listing all documents associated
with this docket. Find a reference to this notice
[[Page 52989]]
and click on the ``Comment Now!'' icon, complete the required fields,
and enter or attach your comments. Attachments to electronic comments
will be accepted in ADOBE[supreg] portable document format or MICROSOFT
WORD[supreg] format. 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.
Visit the Federal eRulemaking Portal website (www.regulations.gov)
for additional instructions on providing comments via the portal. If
electronic submission of comments is not feasible due to a lack of
access to a computer and/or the internet, please contact the USPTO
using the contact information below for special instructions.
FOR FURTHER INFORMATION CONTACT: Kery Fries, Senior Legal Advisor,
Office of Patent Legal Administration, at 571-272-7757; or Parikha
Mehta, Legal Advisor, Office of Patent Legal Administration, at 571-
272-3248.
SUPPLEMENTARY INFORMATION:
Executive Summary: Purpose: This interim rule expands prioritized
examination (Track One) practice to increase the number of applications
that may be accepted for prioritized examination in a fiscal year to
15,000.
Summary of Major Provisions: The prioritized examination provisions
(37 CFR 1.102(e)) currently provide that a request for prioritized
examination may be filed with an original utility or plant
nonprovisional application under 35 U.S.C. 111(a). The America Invents
Act provides that the Office may not accept more than 10,000 requests
for prioritization in any fiscal year until regulations setting another
limit are prescribed. The Office published an interim rule in 2019
expanding the availability of prioritized examination by increasing the
limit on the number of prioritized examination requests that may be
accepted in a fiscal year to 12,000. The current interim rule further
expands the availability of prioritized examination by increasing the
limit on the number of prioritized examination requests that may be
accepted in a fiscal year to 15,000.
Background: Section 11(h) of the America Invents Act provides for
prioritized examination of an application. See Public Law 112-29, 125
Stat. 284, 324 (2011). Section 11(h)(1)(B)(i) of the America Invents
Act also provides that the Office may, by regulation, prescribe
conditions for the acceptance of a request for prioritized examination,
and section 11(h)(1)(B)(iii) provides that ``[t]he Director may not
accept in any fiscal year more than 10,000 requests for prioritization
until regulations are prescribed under this subparagraph setting
another limit.'' Id.
The Office implemented the prioritized examination provision of the
America Invents Act for applications on filing 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 (Sept. 23, 2011) (codified in 37 CFR 1.102(e)). Following its
implementation, the Office improved its processes for carrying out
prioritized examination and expanded the scope of prioritized
examination in view of those improvements. First, the Office
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 (Dec.
19, 2011). Next, the prioritized examination procedures further
expanded to permit the delayed submission of certain filing
requirements while maintaining the Office's ability to timely examine
the patent application. See Changes to Permit Delayed Submission of
Certain Requirements for Prioritized Examination, 79 FR 12386 (Mar. 5,
2014).
The number of requests for prioritized examination has been
increasing steadily over the years. The Office published an interim
rule in 2019 expanding the availability of prioritized examination by
increasing the limit on the number of prioritized examination requests
that may be accepted in a fiscal year from 10,000 to 12,000. See
Increase of the Annual Limit on Accepted Requests for Track I
Prioritized Examination, 84 FR 45907 (Sept. 3, 2019). The current
interim rule further expands the availability of prioritized
examination by increasing the limit on the number of prioritized
examination requests that may be accepted in a fiscal year to 15,000.
Through continued monitoring of the implementation of the Track One
program, the Office has determined that the program may be further
expanded to permit more applications to undergo prioritized examination
while maintaining the ability to timely examine all prioritized
applications. Quality metrics used by the Office continue to reveal no
loss in examination quality for applications given prioritized
examination. In addition, the number of applications accepted for
prioritized examination will remain a small fraction of the patent
examinations completed in a fiscal year (the Office examines
approximately 640,000 applications and requests for continued
examination in total per fiscal year). Accordingly, the Office is
further expanding the availability of prioritized examination by
increasing the limit on the number of prioritized examination requests
that may be accepted in a fiscal year to 15,000, beginning in fiscal
year 2021 (October 1, 2020, through September 30, 2021) and continuing
every fiscal year thereafter until further notice.
Discussion of Specific Rules
The following is a discussion of the amendments to 37 CFR part 1.
Section 1.102: Section 1.102(e) is revised to increase the limit on
the total number of requests for prioritized examination that may be
accepted (granted) in any fiscal year from 12,000 to 15,000.
Rulemaking Considerations
A. Administrative Procedure Act: This interim rule revises the
procedures that apply to applications for which an applicant has
requested Track One 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. F.C.C., 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), do not require notice and comment rulemaking for
``interpretative rules, general statements of policy, or rules of
agency organization, procedure, or
[[Page 52990]]
practice'' (quoting 5 U.S.C. 553(b)(A)). In addition, the changes in
this interim rule may be made immediately effective because this
interim rule is not a substantive rule under 35 U.S.C. 553(d).
Moreover, the Office, pursuant to authority at 5 U.S.C. 553(b)(B),
finds good cause to adopt the changes in this interim rule without
prior notice and an opportunity for public comment, as such procedures
would be 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 desire to file a request for Track
One prioritized examination with a new application or request for
continued examination. 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 would
otherwise be ineligible for prioritized examination will benefit from
the immediate implementation of the changes in this interim rule. See
Nat'l Customs Brokers & Forwarders Ass'n of Am., Inc. v. United States,
59 F.3d 1219, 1223-24 (Fed. Cir. 1995). In addition, pursuant to
authority at 5 U.S.C. 553(d)(3), the Office finds good cause to adopt
the changes in this interim rule without the 30-day delay in
effectiveness as such delay would be contrary to the public interest.
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 would otherwise be ineligible
for prioritized examination will benefit from the immediate
implementation of the changes in this interim rule.
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 (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 online 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 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 USPTO
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 rulemaking are not expected
to result in an annual effect on the economy of $100 million 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
rulemaking 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 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 (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 (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 of 1969: 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 of 1995: 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 that involve the use of
technical standards.
O. Paperwork Reduction Act of 1995: 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
[[Page 52991]]
burdens imposed on the public. This interim rule does not involve
information collection requirements that 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 program, preferably by using Form PTO/
AIA/424. However, 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. Therefore, this rulemaking does not
impose any additional collection requirements under the Paperwork
Reduction Act that are subject to further review by OMB.
P. E-Government Act Compliance: The USPTO is committed to
compliance with the E-Government Act to promote the use of the internet
and other information technologies, to provide increased opportunities
for citizen access to Government information and services, and for
other purposes.
List of Subjects in 37 CFR Part 1
Administrative practice and procedure, Biologics, 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), unless otherwise noted.
0
2. Section 1.102 is amended by revising paragraph (e) introductory text
to read as follows:
Sec. 1.102 Advancement of examination.
* * * * *
(e) A request for prioritized examination under this paragraph (e)
must comply with the requirements of this paragraph (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 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 (e) 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 (2) of this section. No more than 15,000 requests
for such prioritized examination will be accepted in any fiscal year.
* * * * *
Andrew Hirshfeld,
Commissioner for Patents, Performing the Functions and Duties of the
Under Secretary of Commerce for Intellectual Property and Director of
the United States Patent and Trademark Office.
[FR Doc. 2021-20530 Filed 9-23-21; 8:45 am]
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