[Federal Register Volume 88, Number 46 (Thursday, March 9, 2023)]
[Notices]
[Pages 14607-14609]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2023-04695]



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DEPARTMENT OF COMMERCE

Patent and Trademark Office

[Docket No.: PTO-P-2022-0042]


First-Time Filer Expedited Examination Pilot Program

AGENCY: United States Patent and Trademark Office, Department of 
Commerce.

ACTION: Notice.

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SUMMARY: The United States Patent and Trademark Office (USPTO or 
Office) and its Council for Inclusive Innovation (CI\2\) are developing 
strategies to create a more equitable and diverse innovation ecosystem. 
As one strategy, the USPTO is implementing the First-Time Filer 
Expedited Examination Pilot Program, designed to increase accessibility 
to the patent system for inventors who are new to the patent 
application process, including those in historically underserved 
geographic and economic areas. The program expedites the first Office 
action for program participants. Expediting the first Office action 
reduces time-based barriers for inventors who may otherwise be unable 
to participate in the patent system, thereby advancing opportunity in 
the innovation ecosystem. The program requires participants to be 
reasonably trained in the patent application process so they can engage 
effectively with the Office and maximize the benefit of expedited 
examination. The pilot program website identifies a collection of free 
training resources for anyone interested in learning more about the 
patent application filing process. This notice outlines the conditions, 
eligibility requirements, and guidelines of the program.

DATES: The USPTO will accept petitions to make special under the First-
Time Filer Expedited Examination Pilot Program beginning March 9, 2023, 
until either March 11, 2024, or the date the USPTO grants 1,000 
petitions to participate in the program, whichever occurs earlier.
    The USPTO may exercise its discretion to terminate this pilot 
program at any time. In the event of any such termination, the USPTO 
will notify the public. The USPTO will publish on its website an 
ongoing count of the number of petitions granted for participation in 
the program.

FOR FURTHER INFORMATION CONTACT: Questions or comments regarding this 
pilot program may be directed to: Parikha Mehta, Senior Legal Advisor, 
Office of Patent Legal Administration, Office of the Deputy 
Commissioner for Patents, at 571-272-3248 or [email protected], 
or Brannon Smith, Legal Advisor, Office of Patent Legal Administration, 
Office of the Deputy Commissioner for Patents, at 571-270-1601 or 
[email protected].
    Questions regarding electronic application filing may be directed 
to the Electronic Business Center at 866-217-9197 during its operating 
hours of 6 a.m. to midnight ET, Monday-Friday, or at [email protected].
    Questions regarding a filed petition to make special under this 
pilot may be directed to the Office of Petitions at 571-272-3282 during 
its operating hours of 8:30 a.m. to 5 p.m. ET, Monday-Friday.

SUPPLEMENTARY INFORMATION: Under current USPTO policy, examiners 
normally take up nonprovisional patent applications filed under 35 
U.S.C. 111(a) for examination in the order they were filed. See section 
708 of the Manual of Patent Examining Procedure (MPEP) (9th ed., rev. 
10.2019, June 2020). An application can be advanced out of turn for 
examination (that is, accorded special status) when the applicant 
successfully petitions to make special under 37 CFR 1.102(c) or (d) or 
requests prioritized examination under 37 CFR 1.102(e). See 37 CFR 
1.102(c)-(e) and MPEP sections 708.02, 708.02(a), and 708.02(b).
    Generally, petitions to make special under 37 CFR 1.102(c) and (d) 
must comply with all requirements of the accelerated examination 
program set forth in MPEP Sec.  708.02(a) unless the petition is based 
on the inventor's age or health. See Changes to Practice for Petitions 
in Patent Applications to Make Special and for Accelerated Examination, 
71 FR 36323 (June 26, 2006), 1308 Off. Gaz. Pat. Office 106 (July 18, 
2006).
    The USPTO is implementing a new First-Time Filer Expedited 
Examination Pilot Program under the Council for Inclusive Innovation, 
in alignment with Executive Order 13985 and as previously announced in 
the 2022 U.S. Department of Commerce Cabinet-Level Equity Action Plan. 
This program aligns with and supports the Executive Order by creating 
opportunities for underserved communities. The program enables micro 
entity first-time filers who meet the requirements detailed in Part I 
to have their applications examined out of turn. This program is 
established under 37 CFR 1.102(d) without requiring either the 37 CFR 
1.17(h) fee for a petition to make special or all conditions of the 
accelerated examination program. See MPEP Sec.  708.02(a)(I). No other 
fees or requirements are waived for participants in this program.

Part I. Program Eligibility Requirements

A. Applicant and Inventor Eligibility

    To qualify for this program, the applicant and the inventor must 
meet the following requirements as of the filing date of the petition 
to make special:
    1. The applicant must certify that the inventor or, where there are 
joint inventors, each joint inventor has not been named as the sole 
inventor or a joint inventor on any other U.S. nonprovisional 
application.
    2. The applicant must certify that the applicant and the inventor 
or, where there are joint inventors, the applicant and each joint 
inventor qualify for micro entity status under the gross income basis 
requirement. See 37 CFR 1.29 and MPEP section 509.04. Note that the 
applicant must separately and properly establish micro entity status by 
filing USPTO Form SB/15A (Certification of Micro Entity Status--Gross 
Income Basis) no later than the date that the petition to participate 
in this pilot is filed. For more information regarding micro entity 
status requirements, see the USPTO Micro Entity Status web page 
(https://www.uspto.gov/PatentMicroentity).
    3. The applicant must certify that the inventor, or, where there 
are joint inventors, each joint inventor, named on the application is 
reasonably trained on the basics of the USPTO's patent application 
process. For applicants who are unsure whether they meet this 
requirement, exemplary patent application training resources that could 
be used to meet this requirement are available at the pilot program web 
page (https://www.uspto.gov/FirstTimePatentFiler).

B. Eligible Applications

    This program is available for original, noncontinuing, 
nonprovisional utility applications filed under 35 U.S.C. 111(a). The 
application must be filed electronically via Patent Center. The 
abstract, specification, and claim(s) must be provided on filing in 
DOCX format.
    The petition to make special under this program should not be filed 
until the application is complete under 37 CFR 1.51(b). To be complete 
under 37 CFR 1.51(b), the application must include a specification, 
drawing(s) if necessary, at least one claim, a properly executed 
inventor's oath or declaration under 37 CFR 1.63, and payment of all

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appropriate fees (that is, basic filing, search, and examination fees, 
and an application size fee if required). If the application is not 
complete under 37 CFR 1.51(b) on the date the petition to make special 
under this program is filed, the petition will be dismissed without 
further opportunity to request participation in the program.
    Applications claiming the benefit of the filing date of one or more 
provisional applications under 35 U.S.C. 119(e) are eligible for this 
program. Applications claiming the benefit of the filing date of any 
previously filed nonprovisional U.S. applications or international 
applications designating the United States under 35 U.S.C. 120, 121, 
365(c), or 386(c) (for example, continuation, continuation-in-part, 
divisional, and bypass applications) are not eligible for this program. 
In addition, applications claiming a right of foreign priority under 35 
U.S.C. 119(a)-(d) or (f) to one or more foreign applications are not 
eligible for this program. This ensures that the benefits of the 
program are reserved for inventors who are new to the patent 
application process. Other expedited programs under petitions to make 
special and prioritized examination are still available as provided by 
37 CFR 1.102(c)-(e) for applications that are otherwise ineligible for 
this program.
    Applications entering the national stage under the Patent 
Cooperation Treaty (PCT) as set forth in 35 U.S.C. 371 are not eligible 
for this program. National stage applications may be advanced out of 
turn under 37 CFR 1.496 or the Patent Prosecution Highway program.
    Applications in this pilot program may not have special status 
under any other category or pilot program under 37 CFR 1.102 (for 
example, if the application has been granted special status for age of 
inventor, it is not eligible for participation in this pilot).

C. Claim Requirements

    The application must meet the following claim requirements for a 
petition to make special under this program to be granted, and for the 
remainder of prosecution (that is, until abandonment or issuance as a 
patent):
    1. There are no more than three independent claims.
    2. There are no more than 20 claims total, and
    3. There are no multiple dependent claims.
    An applicant may file a petition to make special under this program 
in a previously filed application, if an Office action has not yet been 
issued in that application. In this situation, if the claims do not 
already conform to the program requirements, the applicant should file 
a preliminary amendment in compliance with 37 CFR 1.121 canceling any 
excess claims and any multiple dependent claims. This should be done no 
later than the date the petition to make special is filed. Applicants 
may choose to wait to file their petition to make special under this 
program until after the claims have been amended to conform with the 
program requirements, but the petition must nevertheless be filed prior 
to a first Office action as detailed in Part I(E) of this notice. 
Therefore, the petition should be filed as soon as the application 
conforms with the program requirements.

D. Must File Specific PTO Form Electronically To Participate

    To participate in this program, an applicant must file a petition 
to make special using form PTO/SB/464, titled ``Certification and 
Petition for the First-Time Filer Expedited Examination Pilot Program'' 
(available at https://www.uspto.gov/PatentForms). The PTO/SB/464 form 
contains all required certifications detailed in Part (I)(A) of this 
notice. The form must be filed electronically via Patent Center. 
Modified versions of form PTO/SB/464 will not be accepted. If the 
petition is not properly signed, it will be dismissed. See 37 CFR 
1.33(b) for signature requirements. If there are multiple joint 
inventors filing the application as the applicant (that is, the 
applicant consists of joint inventor-applicants), either a single copy 
of the form must be signed by a patent practitioner or each joint 
inventor-applicant must sign a separate copy of the form. Multiple 
forms must be submitted if more than one signature is required.
    Under 5 CFR 1320.3(h), form PTO/SB/464 does not collect 
``information'' within the meaning of the Paperwork Reduction Act of 
1995.

E. Time for Filing the Petition To Make Special

    The Certification and Petition for the First-Time Filer Expedited 
Examination Pilot Program (that is, form PTO/SB/464) must be filed 
before a first Office action (including an action containing only a 
restriction requirement) is issued in the application.

Part II. Procedures After the Petition To Make Special Is Filed

A. Petition Decision

    The USPTO Office of Petitions will review and decide petitions to 
make special under this program after the corresponding application has 
undergone initial pre-examination processing. Petition review will not 
be delayed or held back in view of outstanding notices to file missing 
items. If the application does not meet all requirements noted in Part 
I at the time the petition is reviewed, the petition will be dismissed. 
The petition decision will identify the specific deficiencies for which 
the petition is being dismissed. In the event of a dismissal, applicant 
may be able to correct certain deficiencies and file a new petition to 
make special under this program, as detailed in Part II(A)(i).
i. Correctable Deficiencies
    If the USPTO determines that a petition to make special under this 
program does not comply with the requirements set forth in Part I of 
this notice, the USPTO will dismiss the petition. If each identified 
deficiency is correctable, the applicant will be given a single 
opportunity to correct each identified deficiency and file a new 
petition to participate in the pilot program. This means that the 
applicant must file a reply via Patent Center that includes appropriate 
corrections and a new, properly signed petition form PTO/SB/464 within 
two months of the mailing notification date of the deficiency notice. 
This two-month time period for replying is not extendable under 37 CFR 
1.136(a). Deficiencies for which applicants may be given one 
opportunity to correct include:

 Not using form PTO/SB/464
 Not filing the petition via Patent Center
 Not signing the petition according to 37 CFR 1.33(b)
 Filing more than 20 claims total
 Filing more than three independent claims
 Filing any multiple dependent claims
 Not properly establishing micro entity status using form PTO/
SB/15A

    If the applicant fails to submit a paper correcting the 
deficiencies identified in the petition decision, accompanied by a 
properly signed petition form within the two-month reply period, there 
will be no further opportunity for applicant to petition to make 
special under this program; the application will instead be examined in 
regular turn.
ii. Non-Correctable Deficiencies
    The petition will be dismissed without any opportunity for 
correction if any of the following deficiencies exist:
     The initial petition was not filed before a first Office 
action was issued in the application.

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     The inventor or, where there are joint inventors, at least 
one joint inventor has been named as the sole inventor or a joint 
inventor on a previously filed nonprovisional application.
     The application was not filed electronically using Patent 
Center.
     The specification, claim(s), and abstract on filing were 
not submitted in DOCX format.
     The application does any of the following:
    [cir] Claims the benefit of the filing date of one or more prior 
filed applications that are nonprovisional applications and/or 
international applications designating the United States,
    [cir] Claims a right to priority to one or more foreign 
applications, and
    [cir] Is entering the national stage under the Patent Cooperation 
Treaty (PCT) as set forth in 35 U.S.C. 371.
     The application was not complete under 37 CFR 1.51(b) as 
of the filing of the petition to make special under this program.
     The application was previously granted special status.
iii. Special Status After the Petition Is Granted
    If a petition to make an application special under this program is 
granted, the application will be accorded special status and placed on 
an examiner's special docket until the first Office action (including 
an action that contains only a restriction requirement). After the 
examiner issues the first Office action, special status for the 
application will conclude under this program, and any subsequent reply 
filed by the applicant will place the application on the examiner's 
regular amended docket.
    Amendments that do not meet the claim requirements of Part (I)(C) 
of this notice will be considered non-responsive, as further detailed 
in Part (II)(C) of this notice.

B. Adding Joint Inventors After a Petition Has Been Granted

    If any joint inventor is added to the application after a petition 
has been granted under this program, the applicant must certify (for 
example, on a separate letter) that the added joint inventor(s) meet 
the criteria in Part (I)(A).

C. Claim Amendments During Prosecution

    A reply to an Office action must be fully responsive to the 
rejections, objections, and requirements made by the examiner. A reply 
may include amendments to the claims. If an applicant amends the claims 
during prosecution such that the amended claims do not conform to the 
claim requirements in Part (I)(C) of this notice, the amendment may be 
treated by the examiner as nonresponsive.
    In this situation, if the amendment was a bona fide reply, the 
examiner may notify the applicant of the initial deficiency by issuing 
a notice of nonresponsive amendment, which will have a shortened 
statutory period for reply of two months. Any subsequent nonresponsive 
amendment filed by the applicant will typically be treated as non-bona 
fide, and the time period set in the initial notice of nonresponsive 
amendment will continue to run.
    For example, if the applicant responds to the first Office action 
by filing an amendment with four independent claims, 21 total claims, 
no multiple dependent claims, and the appropriate excess claim fees 
under 37 CFR 1.16(h) and (i), the examiner may send a notice of 
nonresponsive amendment identifying two deficiencies in the amendment: 
more than three independent claims and more than 20 claims total. The 
examiner's notice will have a shortened statutory period for reply of 
two months, extendable under 37 CFR 1.136(a), but not extendable beyond 
the maximum time period of six months set by statute. See 35 U.S.C. 
133. If the applicant responds to the examiner's notice by timely 
filing an appropriate amendment that cancels one of the independent 
claims such that there are now three independent claims, 20 claims 
total, and no multiple dependent claims, the amendment will conform to 
all requirements of Part (I)(C) and the deficiencies identified in the 
original notice of nonresponsive amendment will be considered 
corrected.
    However, if the applicant timely responds to the examiner's notice 
with an amendment that only cancels one of the dependent claims (that 
is, there are now four independent claims, 20 claims total, and no 
multiple dependent claims), this reply may be treated as non-bona fide 
because there are still more than three independent claims. In this 
situation, the time period for filing a responsive reply (that is, an 
amendment conforming to all requirements of Part (I)(C)) will continue 
to run from the date of the examiner's initial notice of nonresponsive 
amendment. If there is sufficient time remaining for the applicant's 
reply to be filed within the time period set forth in the initial 
notice of nonresponsive amendment (or within any extension of time 
pursuant to 37 CFR 1.136(a)), the examiner will notify the applicant of 
the deficiency by issuing another notice of nonresponsive amendment 
without setting a new time period for reply. If the applicant does not 
file a responsive reply within the remaining time period for reply (or 
within any extension of time pursuant to 37 CFR 1.136(a)), the 
application will be abandoned.

D. Extensions of Time Permitted for Replies to Office Actions

    Extensions of time under 37 CFR 1.136(a) are permitted for replies 
to Office actions, but are not extendable beyond the maximum time 
period of six months set by statute. See 35 U.S.C. 133.
    Note that responses to notices of defective petitions are not 
eligible for extensions of time, as detailed under Part (II)(A)(i) of 
this notice. The availability of extensions of time during pre-
examination and appeal are not impacted by this program.

E. Additional Support

    The USPTO provides additional support and resources for inventors 
and entrepreneurs at https://www.uspto.gov/CES.

F. Withdrawal From the Program

    There is no provision for withdrawal from this program. An 
applicant may abandon the application granted special status under the 
program in favor of a continuing application. However, any continuing 
application would not be eligible for special status under this 
program, for the reasons detailed in Part I of this notice. Requests 
for deferred examination under 37 CFR 1.103(d) are considered to be 
requests for withdrawal from the program and will not be granted.

Part III. Voluntary Demographic Survey

    The USPTO currently intends to survey pilot program participants to 
collect limited inventor demographic information. Participation in the 
survey would be strictly voluntary, and the information collected would 
only be used for USPTO process improvement purposes. Survey responses 
would not impact pilot program eligibility for applicants, would not be 
part of the application file or otherwise accessible by examiners, and 
would not impact examination decisions in pilot program participants' 
applications. The USPTO would notify the public before implementing any 
such survey.

Katherine K. Vidal,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 2023-04695 Filed 3-8-23; 8:45 am]
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