[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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