[Federal Register Volume 88, Number 230 (Friday, December 1, 2023)]
[Notices]
[Pages 83926-83929]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2023-26340]


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DEPARTMENT OF COMMERCE

Patent and Trademark Office

[Docket No.: PTO-P-2023-0041]


Semiconductor Technology 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) is 
implementing the Semiconductor Technology Pilot Program, which is 
designed to accelerate improvements in the semiconductor industry by 
expediting examination of patent applications for certain semiconductor 
manufacturing innovations. The pilot program is intended to encourage 
research, development, and innovation in the semiconductor 
manufacturing space and provide equitable intellectual property 
protection to incentivize investments in the semiconductor 
manufacturing area. Expediting examination of patent applications 
directed to semiconductor manufacturing under this pilot program 
encourages innovations that increase semiconductor device production, 
reduce semiconductor manufacturing costs, and strengthen the 
semiconductor supply chain. Applications accepted into the pilot 
program will be advanced out of turn (accorded special status) for 
examination until a first Office action is issued. This notice outlines 
the conditions, requirements, and guidelines of the pilot program.

DATES: Pilot Duration: The Semiconductor Technology Pilot Program will 
accept petitions to make special beginning December 1, 2023 until 
either December 2, 2024 or the date the USPTO accepts a total of 1,000 
grantable petitions, whichever occurs first. The USPTO may, at its sole 
discretion, terminate the pilot program depending on factors such as 
workload and resources needed to administer the program, feedback from 
the public, and the effectiveness of the program. If the pilot program 
is terminated, the USPTO will notify the public. The USPTO will 
indicate on its website at www.uspto.gov/SemiconductorTechnology the 
total number of petitions filed and the number of applications accepted 
into the pilot program.

FOR FURTHER INFORMATION CONTACT: For general questions regarding this 
pilot program, please contact Steven J. Fulk, Legal Advisor, at 571-
270-0072 or [email protected]; Nalini Mummalaneni, Senior Legal 
Advisor, at 571-270-1647 or [email protected]; or Susy 
Tsang-Foster, Senior Legal Advisor, at 571-272-7711 or [email protected], all from the Office of Patent Legal Administration, 
Office of the Deputy Commissioner for Patent Examination Policy. For 
questions relating to a particular petition, please contact Bumsuk Won, 
Management Quality Assurance Specialist, at 571-272-2713 or 
[email protected]; or William Kraig, Supervisory Patent Examiner, at 
571-272-8660 or [email protected], both of Technology Center 
2800. For questions on electronic filing, please contact the Patent 
Electronic Business Center (EBC) at 866-217-9197 (during its operating 
hours of 6 a.m. to midnight ET, Monday-Friday) or [email protected].

SUPPLEMENTARY INFORMATION: New patent applications are normally taken 
up for examination in the order of their U.S. filing date or national 
stage entry date. See sections 708 and 1893.03(b) of

[[Page 83927]]

the Manual of Patent Examining Procedure (9th ed., Rev. 07.2022, 
February 2023) (MPEP). The USPTO has procedures under which an 
application will be advanced out of turn (accorded special status) for 
examination if the applicant files (1) a petition to make special under 
37 CFR 1.102(c) or (d) with the appropriate showing, or (2) a request 
for prioritized examination under 37 CFR 1.102(e). See 37 CFR 1.102(c)-
(e) and MPEP 708.02, 708.02(a), and 708.02(b). The USPTO revised its 
accelerated examination procedures effective August 25, 2006, requiring 
that all petitions to make special comply with the requirements of the 
revised accelerated examination (AE) program set forth in MPEP 
708.02(a), except those based on an inventor's health or age or the 
Patent Prosecution Highway (PPH) Pilot Program. See Changes to Practice 
for Petitions in Patent Applications to Make Special and for 
Accelerated Examination, 71 FR 36323 (June 26, 2006).
    The USPTO is implementing the Semiconductor Technology Pilot 
Program to support the Creating Helpful Incentives to Produce 
Semiconductors (CHIPS) Act of 2022 (see Pub. L. 117-167, 136 Stat. 1366 
(2022)), which provides appropriations to implement the semiconductor 
provisions included in the William M. (Mac) Thornberry National Defense 
Authorization Act for Fiscal Year 2021 (see Pub. L. 116-283, 134 Stat. 
3388 (2021)). The pilot program also supports Executive Order 14080, 
dated August 25, 2022, which implements the incentives for 
semiconductor manufacturing provided by the CHIPS Act. See Executive 
Order 14080 of August 25, 2022, Implementation of the CHIPS Act of 
2022, 87 FR 52847 (August 30, 2022). The CHIPS Act allocates 
transformative investments that are designed to increase semiconductor 
manufacturing capacity and improve the resilience of the semiconductor 
supply chain. The Semiconductor Technology Pilot Program supports the 
CHIPS Act by encouraging research, development, and innovation in the 
semiconductor manufacturing space and providing equitable intellectual 
property protection to incentivize investments in the semiconductor 
manufacturing area. Expediting examination of patent applications 
directed to certain processes and apparatuses for manufacturing 
semiconductor devices under this pilot program can help achieve the 
goals of the CHIPS Act by encouraging innovations that increase 
semiconductor device production, reduce semiconductor manufacturing 
costs, and strengthen the semiconductor supply chain.
    The pilot program permits an application that claims certain 
processes or apparatuses for manufacturing semiconductor devices to be 
advanced out of turn (accorded special status) until a first Office 
action is issued without meeting all of the requirements of the 
accelerated examination program set forth in MPEP 708.02(a) (for 
example, examination support document) if the applicant files a 
petition to make special under 37 CFR 1.102(d) meeting all of the 
requirements set forth in this notice.
    To qualify for the pilot program, the applicant must file a 
petition to make special under the pilot program, and the application 
must claim an invention directed to certain processes or apparatuses 
for manufacturing semiconductor devices. The applicant must certify in 
the petition to make special that: (1) the applicant has a good faith 
belief that the claimed invention(s) meeting the technology requirement 
of the pilot program improves the manufacturing of semiconductor 
devices; (2) the process or apparatus covered by the claimed 
invention(s) meeting the technology requirement of the pilot program is 
disclosed in the specification as being primarily focused on the 
manufacturing of semiconductor devices; (3) the applicant has a good 
faith belief that expediting examination of the application will have a 
positive impact on the semiconductor manufacturing industry, such as 
increasing semiconductor device production, lowering semiconductor 
manufacturing costs, or increasing the resilience of the semiconductor 
supply chain; and (4) the inventor or any joint inventor has not been 
named as the inventor or a joint inventor on more than four other 
nonprovisional applications in which a petition to make special under 
this pilot program has been filed. Applications accepted into the pilot 
program will be advanced out of turn (accorded special status) until a 
first Office action is issued without meeting all of the current 
requirements, including any extra fee payments, of the accelerated 
examination program (for example, the requirement for an examination 
support document) or the prioritized examination program (for example, 
the prioritized examination fee or processing fee).
    All other requirements of the accelerated examination program that 
are not required by this notice, including the 37 CFR 1.17(h) fee for a 
petition to make special under 37 CFR 1.102(d), are hereby waived based 
upon the special procedure specified in this notice. No fees or 
requirements other than those discussed above are waived by this pilot 
program. The USPTO will periodically evaluate the pilot program to 
determine whether and to what extent its coverage should be expanded or 
limited.

Part I. Requirements To Participate

    A petition to make special under the pilot program may be granted 
in an application provided that the following conditions are satisfied:

(1) Types of Applications and Time for Filing Petition

    The petition to make special under the pilot program must be filed:
    (a) with the filing of a noncontinuing original utility 
nonprovisional application or entry into the national stage under 35 
U.S.C. 371, or within 30 days of the filing date or entry date of the 
application; or
    (b) with the filing of an original utility nonprovisional 
application claiming the benefit of an earlier filing date under 35 
U.S.C. 120, 121, 365(c), or 386(c) of only one prior nonprovisional 
application or only one prior international application designating the 
United States or within 30 days of the filing date of such application.
Definition
    Noncontinuing application: A noncontinuing application is an 
application that is not a continuation, divisional, or continuation-in-
part application filed under the conditions specified in 35 U.S.C. 120, 
121, 365(c), or 386(c) and 37 CFR 1.78. See MPEP 201.02.
    The pilot program is reserved for the nonprovisional applications 
described above that have not received a first Office action (including 
a written restriction requirement). Any application that claims the 
benefit of the filing date of two or more prior filed applications that 
are nonprovisional U.S. applications and/or international applications 
designating the United States is not eligible for participation in the 
pilot program. Claiming the benefit under 35 U.S.C. 119(e) of one or 
more prior provisional applications or claiming a right of priority 
under 35 U.S.C. 119(a)-(d) or (f) to one or more foreign applications 
will not affect eligibility for the pilot program.

(2) Office Form Required for Filing Petition

    To participate in this pilot program, an applicant must file a 
petition to make special using form PTO/SB/467, titled ``CERTIFICATION 
AND PETITION TO

[[Page 83928]]

MAKE SPECIAL UNDER THE SEMICONDUCTOR TECHNOLOGY PILOT PROGRAM'' 
(available at www.uspto.gov/PatentForms). Form PTO/SB/467 contains the 
necessary certifications for qualification to participate in the pilot 
program. Use of the form will enable the USPTO to quickly identify and 
timely process the petition. In addition, use of the form will help 
applicants understand and comply with the petition requirements of the 
pilot program. Under 5 CFR 1320.3(h), form PTO/SB/467 does not collect 
``information'' within the meaning of the Paperwork Reduction Act of 
1995.

(3) The Application Must Include at Least One Claim That Meets the 
Technology Requirement

    The application must contain at least one claim that covers a 
process or an apparatus for manufacturing a semiconductor device and 
corresponds to one or more of the technical concepts within H10 
(Semiconductor Devices; Electric Solid-State Devices Not Otherwise 
Provided For) or H01L (Semiconductor Devices Not Covered by Class H10) 
in the Cooperative Patent Classification (CPC) system.
    The full schemes of the H10 class and the H01L subclass are 
available at www.uspto.gov/web/patents/classification/.

(4) Required Certifications

    The petition to make special must certify that: (a) the applicant 
has a good faith belief that the claimed invention(s) meeting the 
technology requirement of the pilot program improves the manufacturing 
of semiconductor devices; (b) the process or apparatus covered by the 
claimed invention(s) meeting the technology requirement of the pilot 
program is disclosed in the specification as being primarily focused on 
the manufacturing of semiconductor devices; (c) the applicant has a 
good faith belief that expediting examination of the application will 
have a positive impact on the semiconductor manufacturing industry, 
such as increasing semiconductor device production, lowering 
semiconductor manufacturing costs, or increasing the resilience of the 
semiconductor supply chain; and (d) the inventor or any joint inventor 
has not been named as the inventor or a joint inventor on more than 
four other nonprovisional applications in which a petition to make 
special under this pilot program has been filed. Form PTO/SB/467 
contains these certifications.

(5) Publication Requirement for Applications

    If the applicant files the petition to make special on the date of 
filing of an application, the application may not be filed with a 
nonpublication request. If the applicant previously filed a 
nonpublication request in the application, the applicant should file a 
rescission of the nonpublication request no later than the time the 
petition to make special is filed. The applicant may use form PTO/SB/36 
to rescind the nonpublication request.

(6) Claim Limits and No Multiple Dependent Claims

    The application must contain no more than three independent claims 
and no more than 20 total claims (``program claim limits'') and must 
not contain any multiple dependent claims. If an application exceeds 
three independent claims or 20 total claims, or if it contains any 
multiple dependent claims, the applicant should file a preliminary 
amendment in compliance with 37 CFR 1.121 to cancel any excess claims 
or multiple dependent claims no later than the date the petition to 
make special under the pilot program is filed. After an application has 
been granted special status under the pilot program, any amendment that 
does not comply with the program claim limits or adds a multiple 
dependent claim is not permitted. The petition must include a statement 
that the applicant agrees not to exceed the program claim limits or add 
any multiple dependent claims during the remainder of prosecution of 
the application if the application has been granted special status 
under the pilot program. The examiner may refuse entry of any amendment 
filed in reply to an Office action that, if entered, would result in a 
set of pending claims that exceeds the program claim limits or adds a 
multiple dependent claim. See Part V of this notice.

(7) Statement Regarding Restriction Requirement, Elected Invention and 
Claim Requirements

    The petition must include a statement that the applicant agrees to 
the following if the application is granted special status under the 
pilot program:
    (a) If a requirement for restriction or unity of invention is made, 
the applicant will make an election to an invention that meets the 
technology requirement of this pilot program, and
    (b) During the remainder of prosecution of the application: (i) the 
applicant will not exceed the program claim limits or add any multiple 
dependent claims; and (ii) the applicant will not cancel all claims to 
the elected invention or all claims that meet the technology 
requirement of this pilot program.

(8) Electronic Filing of Application and Petition Required

    The petition to make special may only be made by filing form PTO/
SB/467, which must be filed electronically using the USPTO's Patent 
Center (at https://patentcenter.uspto.gov). Applicants must file the 
petition using the document description (``Petition for Semiconductor 
Pilot'') indicated on form PTO/SB/467. In addition, the application or 
national stage entry must be filed using Patent Center.

(9) Required Use of DOCX Format for Specification, Claim(s), and 
Abstract on Filing or on National Stage Entry

    The specification, claim(s), and abstract of the application must 
be submitted in DOCX format at the time the application is filed or 
enters the national stage. Prior to submitting the application for 
filing in DOCX format, applicants will receive a feedback document. 
Applicants may find it beneficial to review the feedback document and 
make corrections to the application before filing the application. By 
making the necessary corrections before filing, applicants may avoid 
delays that can occur in the pre-examination process. For more 
information on DOCX filing in Patent Center, please see www.uspto.gov/patents/docx. Applicants can direct any inquiries concerning electronic 
filing of the petition and application to the EBC at 866-217-9197 or 
[email protected].

(10) Filing Limitations

    An applicant may file a petition to participate in the pilot 
program if the inventor or any joint inventor has not been named as the 
inventor or a joint inventor on more than four other nonprovisional 
patent applications in which a petition to make special under this 
pilot program has been filed. In other words, the inventor or any joint 
inventor named on the application can only be named as the inventor or 
a joint inventor on a maximum of five nonprovisional applications in 
which a petition under the pilot program has been filed. Therefore, if 
the inventor or any one of the joint inventors of the instant 
application has been named as the inventor or a joint inventor on more 
than four other nonprovisional applications in which petitions under 
this pilot program have been filed, then the petition for the instant 
application may not be appropriately filed.

[[Page 83929]]

Part II. Internal Processing of the Petition Under the Pilot Program

    If the applicant files a petition to make special under the pilot 
program, the USPTO will not render a decision on the petition until the 
application has completed pre-examination processing. Any inquiries 
concerning a particular petition to make special should be directed to 
the appropriate Technology Center handling the petition. If the 
petition is granted, the application will be accorded special status 
under the pilot program. The application will be placed on an 
examiner's special docket until a first Office action is issued. After 
the first Office action, the application will no longer be treated as 
special during examination. For example, if an amendment is filed in 
response to a first Office action, it will be placed on the examiner's 
regular amended docket.
    If the petition to make special under the pilot program does not 
comply with the requirements set forth in this notice, the USPTO may 
notify the applicant of the deficiency by issuing a notice. The notice 
will give the applicant only one opportunity to correct the deficiency. 
If the applicant still wishes to participate in the pilot program, the 
applicant must file a reply via Patent Center that includes appropriate 
corrections and a properly signed petition form PTO/SB/467 within one 
month or 30 days, whichever is longer, from the mail/notification date 
of the notice informing the applicant of the deficiency. The time 
period for reply is not extendable under 37 CFR 1.136(a). If the 
applicant fails to correct the deficiency indicated in the notice 
within the time period set, the application will not be accepted into 
the pilot program and will be taken up for examination in accordance 
with standard examination procedures.
    In addition, the petition will be dismissed without an opportunity 
for correction if any of the following deficiencies exists: (1) the 
application does not contain a claim that meets the technology 
requirement of the pilot program; (2) the process or apparatus for the 
manufacturing of semiconductor devices covered by the claim meeting the 
technology requirement is not disclosed in the specification as being 
primarily focused on the manufacturing of semiconductor devices; (3) 
the application or national stage entry was not filed electronically in 
Patent Center; (4) the specification, claim(s), and abstract of the 
application were not submitted in DOCX format at the time of filing or 
national stage entry; (5) the application is not an original (non-
reissue), nonprovisional utility application filed under 35 U.S.C. 
111(a), or an international application that has entered the national 
stage under 35 U.S.C. 371; (6) the application claims the benefit of 
the filing date of two or more prior filed applications that are 
nonprovisional U.S. applications and/or international applications 
designating the United States; and (7) the petition was not filed with 
the application or national stage entry or within 30 days of the 
application's filing date or national stage entry date.

Part III. Requirement for Restriction or Unity of Invention

    If the claims in the application are directed to multiple 
inventions, the examiner may make a requirement for restriction or 
unity of invention in accordance with current restriction practice. If 
such a requirement is made, the applicant must make an election to an 
invention that meets the technology requirement of this pilot program.

Part IV. Period for Reply by the Applicant

    The time periods set for reply in Office actions for an application 
granted special status under the pilot program will be the same as 
those set forth in MPEP 710.02(b).

Part V. Replies by the Applicant Under the Pilot Program

    During the remainder of prosecution of an application granted 
special status under the pilot program, the applicant's replies to 
Office actions must be fully responsive to the rejections, objections, 
and requirements made by the examiner. Any amendment or election filed 
in reply to an Office action may be treated as not fully responsive if 
it attempts to: (1) add claims that would result in more than three 
independent claims or more than 20 total claims pending in the 
application; (2) add any multiple dependent claim(s); (3) cancel all 
claims that meet the technology requirement of the pilot program; (4) 
elect an invention that does not meet the technology requirement of the 
pilot program, or (5) cancel all claims to the elected invention.
    If a reply to a nonfinal Office action is not fully responsive for 
any of the reasons set forth above but is a genuine attempt to advance 
the application to final action, the examiner may, at their discretion, 
issue a notice of nonresponsive amendment and provide a shortened 
statutory period of two months for the applicant to supply a fully 
responsive reply. Extensions of this time period under 37 CFR 1.136(a) 
to the notice of nonresponsive amendment will be permitted, but in no 
case can any extension carry the date for reply to this notice beyond 
the maximum period of SIX MONTHS set by statute (35 U.S.C. 133). 
However, any further nonresponsive amendment typically will not be 
treated as genuine, and therefore, the time period set in the prior 
notice will continue to run.

Part VI. After-Final and Appeal Procedures

    Any amendment, affidavit, or other evidence after a final Office 
action and prior to appeal must comply with 37 CFR 1.116. During the 
appeal process, the application will be treated in accordance with the 
normal appeal procedure (see MPEP Chapter 1200).

Part VII. Withdrawal From the Pilot Program

    There is no provision for withdrawal from the pilot program. An 
applicant may abandon an application that has been granted special 
status under the pilot program in favor of a continuing application. 
However, a continuing application will not automatically be granted 
special status based on the petition filed in the parent application. 
Each application (including each continuing application) must, on its 
own merit, meet all requirements for special status under the pilot 
program, and be accompanied by its own petition as detailed in Part I 
above.

Katherine Kelly Vidal,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 2023-26340 Filed 11-30-23; 8:45 am]
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