[Federal Register Volume 90, Number 110 (Tuesday, June 10, 2025)]
[Rules and Regulations]
[Pages 24324-24327]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2025-10498]
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DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Part 1
[Docket No. PTO-P-2025-0007]
RIN 0651-AD84
Discontinuation of the Accelerated Examination Program for
Utility Applications
AGENCY: United States Patent and Trademark Office, Department of
Commerce.
ACTION: Final rule.
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SUMMARY: In order to efficiently allocate examination-related resources
to address pendency, and in view of the low number of requests for
Accelerated Examination and the availability of a statutory program to
expedite the prosecution of applications (Track One, prioritized
examination), the United States Patent and Trademark Office (USPTO) is
discontinuing the Accelerated Examination program for utility
applications. The USPTO is also modifying the rules of practice to
clarify the grounds for which a petition to make special may be granted
and when a fee is required for such petition.
DATES: This rule is effective July 10, 2025. The USPTO will no longer
accept petitions under the Accelerated Examination program filed on or
after July 10, 2025 in utility applications.
FOR FURTHER INFORMATION CONTACT: Pinchus M. Laufer, Senior Patent
Attorney, Office of Patent Legal Administration, at 571-272-7726; or
Brannon Smith, Legal Advisor, Office of Patent Legal Administration, at
571-270-1601.
SUPPLEMENTARY INFORMATION:
I. Background
USPTO regulations at 37 CFR 1.102 provide that patent applications
may be advanced out of turn for examination based on a ``petition to
make an application special.'' In June 2006, the USPTO published a
notice to implement the Accelerated Examination program (2006 AE
Notice) under which an application would be advanced out of turn for
examination if the applicant filed a petition to make special with the
appropriate showing (``Accelerated Examination Petition''). See Changes
to Practice for Petitions in Patent Applications To Make Special and
for Accelerated Examination, 71 FR 36323 (June 26, 2006). The 2006 AE
Notice explained that petitions to make special (except those based on
applicant's health or age) would be processed and examined under the
new Accelerated Examination program. 71 FR 36324. The Accelerated
Examination program proved to be relatively popular as it was one of
the few options for applicants to receive expedited examination. The
program was updated on August 16, 2016, to reflect changes in the law
and examination practice. See Changes in Accelerated Examination
Practice, 81 FR 54564 (August 16, 2016).
On September 26, 2011, the USPTO implemented the prioritized
examination program (often referred to as ``Track One'') provided for
in the America Invents Act (AIA). 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). Track One provides the ability to
advance any utility or plant application out of turn, regardless of
subject matter, by paying a fee and without an applicant having to meet
several of the requirements of the Accelerated Examination program,
such as performing a pre-examination search and supplying an
examination support document. See 37 CFR 1.102(e).
The introduction of the Track One program has greatly reduced
participation in the Accelerated Examination program. In each of the
fiscal years 2014 to 2024, fewer than 100 applicants have taken
advantage of the Accelerated Examination program.
In contrast, Track One has become a significantly more popular
program than Accelerated Examination. Due to the steady increase in the
number of requests for prioritized examination under Track One, the
USPTO raised the annual limit on the number of prioritized examination
requests that may be accepted from 10,000 to 12,000 in 2019, and to
15,000 in 2021. See Increase of the Annual Limit on Accepted Requests
for Track I Prioritized Examination, 84 FR 45907 (September 3, 2019),
and 2021 Increase of the Annual Limit on Accepted Requests for Track
One Prioritized Examination, 86 FR 52988 (September 24, 2021). The
USPTO anticipates further raising the annual limit on the number of
prioritized examination requests that may be accepted from 15,000 to
20,000 in 2025.
As opposed to the more straightforward Track One program, the
resource demands of the Accelerated Examination program are in tension
with the USPTO's broader efforts to reduce overall pendency (i.e., the
time that the application is pending or awaiting a decision). First-
action pendency has increased since 2019, impacting the USPTO's ability
to reduce the incidence of patent term adjustments, which are required
if first-action pendency reaches 14 months (see 37 CFR 1.703(a)(1)). In
particular, the overall first-action pendency in fiscal year 2019 was
approximately 14.7 months but rose to approximately 19.9 months in
fiscal year 2024. Petitions for Accelerated Examination are decided by
technology centers. Deciding the petitions and monitoring compliance
with program requirements throughout prosecution requires extensive
evaluation and diverts substantial technology center resources that
could be applied more efficiently to the examination of older
applications. In addition, many petitions for Accelerated Examination
are ultimately denied and the applications examined in their ordinary
turn, thereby incurring costs with little benefit to applicants or the
public. In fiscal year 2024, for example, approximately one-third of
finally decided petitions for Accelerated Examination were denied.
Further, reducing the number of programs involving special handling
reduces administrative overhead and improves overall processing
efficiency. Finally, the low number of applicants requesting
Accelerated Examination indicates that the Track One program can
accommodate applicants who require
[[Page 24325]]
expedited examination for utility applications. Thus, discontinuing the
Accelerated Examination program for utility applications allows more
examining resources to be devoted to older, unexamined utility
applications, thereby reducing the number of these applications and
supporting the USPTO's broader efforts to reduce pendency.
Due to the need to reduce overall first-action pendency, the low
usage of the Accelerated Examination program, the popularity of the
Track One program, and the inconvenience to practitioners and the USPTO
of retaining a seemingly redundant program with its own special
handling procedures (See Manual of Patent Examining Procedure
708.02(a)), the Accelerated Examination program does not provide a
sufficient benefit to the public or the patent system to justify the
cost of continuing the program for utility applications. Accordingly,
the USPTO is discontinuing the Accelerated Examination program for
utility applications. The Accelerated Examination program will remain
in effect for design applications, which do not currently have an
alternative expedited examination program. Any petition or request for
reconsideration of a petition to make special under the Accelerated
Examination program filed with a utility application on or after July
10, 2025 will not be granted, irrespective of the filing date and time
of any prior Accelerated Examination petition and without regard to the
USPTO's determination that applicant was afforded an opportunity to
correct a prior deficient Accelerated Examination petition under the
program. The effective date of July 10, 2025 will provide sufficient
time for applicants currently preparing an Accelerated Examination
petition to complete it prior to the elimination of the Accelerated
Examination program.
Under the Accelerated Examination program, petitions to make
special for inventions enhancing the quality of the environment,
contributing to the development or conservation of energy resources, or
contributing to countering terrorism would be granted if the petition
complied with the requirements of the Accelerated Examination program
including performing a pre-examination search and drafting an
examination support document. For these inventions, pursuant to 37 CFR
1.102(c)(2), the 37 CFR 1.17(h) fee for a petition to make special was
not required.
After the Accelerated Examination program is discontinued for
utility applications, applicants can still receive expedited
examination of their applications directed to these inventions without
having to prepare and file an examination support document by taking
advantage of the Track One program under 37 CFR 1.102(e). Instead of
preparing and filing an examination support document, Track One
applicants pay a fee to receive expedited examination. Qualified small
and micro entity applicants receive discounts for the prioritized
examination fee of 60% and 80%, respectively. Accordingly, 37 CFR
1.102(c) is being amended to remove the grounds listed in Sec.
1.102(c)(2). The grounds found in 37 CFR 1.102(c)(1) (age and health),
which are available without a fee, are retained and are moved into 37
CFR 1.102(c).
Additionally, to reflect changes in law and practice due to the
Leahy-Smith America Invents Act (AIA), Public Law 112-29, 125 Stat. 284
(2011), the rules of practice are revised to clarify that it is the
inventor's or a joint inventor's age or health (not the applicant's age
or health) that is relevant to 37 CFR 1.102(c) when filing a petition
to make special.
II. Discussion of Specific Rules
Title 37 of the Code of Federal Regulations, part 1, is amended as
follows:
Section 1.102: Section 1.102(c)(2) is removed to reflect that
advancement of examination for inventions on the grounds that they
materially enhance the quality of the environment, contribute to the
development or conservation of energy resources, or contribute to
countering terrorism is no longer available without a fee. After the
2006 AE Notice, petitions to advance examination of these inventions
were subsumed under the Accelerated Program and were no longer
independent grounds for obtaining special status. These types of
invention were accepted into the Accelerated Examination program
without requiring the fee under Sec. 1.17(h) upon appropriate showing.
Instead, applicants can seek advancement of examination of these types
of inventions under the Track One program. Small and micro entities can
pay reduced fees for Track One applications.
Further, Sec. 1.102(c) is amended to state that the inventor's or
a joint inventor's age or health may be a ground to file a petition to
make special without a fee. Previously, the rule stated that a petition
to make special may be filed without a fee if the basis for the
petition is applicant's age or health. However, after the passage of
the AIA, the terms ``inventor'' and ``applicant'' are no longer
synonymous and, thus, an applicant may be an entity or individual other
than the inventor. Therefore, to clarify that it is the inventor's or a
joint inventor's age or health that is relevant, Sec. 1.102(c) is
amended accordingly. Section 1.102(c) now only permits the petition to
make special without a fee for petitions based on an inventor's or a
joint inventor's age or health.
III. Rulemaking Considerations
A. Administrative Procedure Act: This final rule revises the
procedures available to expedite the prosecution of patent
applications. The changes in this final 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 and do not require notice-and-comment rulemaking,
pursuant to 5 U.S.C. 553(b)(A)). See Perez v. Mortg. Bankers Ass'n, 575
U.S. 92, 97, 101 (2015) (explaining that interpretive rules ``advise
the public of the agency's construction of the statutes and rules which
it administers'' and do not require notice-and-comment when issued or
amended); 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 practice''); In re Chestek PLLC, 92 F.4th 1105, 1110
(Fed. Cir. 2024) (noting that rule changes that ``do[ ] not alter the
substantive standards by which the USPTO evaluates trademark
applications'' are procedural in nature and, thus, ``exempted from
notice-and-comment rulemaking.''); and JEM Broadcasting Co. v. F.C.C.,
22 F.3d 320, 328 (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))).
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 Act 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 (September 30, 1993).
D. Executive Order 13563 (Improving Regulation and Regulatory
Review): The
[[Page 24326]]
USPTO has complied with Executive Order 13563 (January 18, 2011).
Specifically, and as discussed above, the USPTO has, to the extent
feasible and applicable: (1) reasonably determined that the benefits of
the rule justify its costs; (2) tailored the rule to impose the least
burden on society consistent with obtaining the agency's 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
while maintaining flexibility and freedom of choice for the public; and
(9) ensured the objectivity of scientific and technological information
and processes.
E. Executive Order 14192 (Deregulation): This regulation is not an
Executive Order 14192 regulatory action because it has been determined
to be not significant.
F. Executive Order 13132 (Federalism): This rulemaking pertains
strictly to Federal agency procedures and does not contain policies
with federalism implications sufficient to warrant preparation of a
Federalism Assessment under Executive Order 13132 (August 4, 1999).
G. 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 (November
6, 2000).
H. 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).
I. 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 (February 5, 1996).
J. 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 (April
21, 1997).
K. 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 (March 15, 1988).
L. 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.), 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).
M. 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.
N. 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.
O. 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.
P. Paperwork Reduction Act of 1995: The Paperwork Reduction Act of
1995 (44 U.S.C. 3501 et seq.) requires that the USPTO consider the
impact of paperwork and other information collection burdens imposed on
the public. The collections of information involved in this final rule
have been reviewed and previously approved by OMB under control numbers
0651-0031 and 0651-0059. In view of this final rule, the USPTO will
submit an update to the 0651-0059 information collection in the form of
a nonsubstantive change request. This final rule does not materially
change the information collections approved under OMB control number
0651-0031. Therefore, the USPTO will not submit an update to the 0651-
0031 information collection.
Notwithstanding any other provision of law, no person is required
to respond to, nor shall any 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.
Q. 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 record keeping
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).
0
2. Section 1.102 is amended by revising paragraph (c) to read as
follows:
Sec. 1.102 Advancement of examination.
* * * * *
(c) A petition to make an application special may be filed without
a fee if the
[[Page 24327]]
basis for the petition is the inventor's or a joint inventor's age or
health.
* * * * *
Coke Morgan Stewart,
Acting Under Secretary of Commerce for Intellectual Property and Acting
Director of the United States Patent and Trademark Office.
[FR Doc. 2025-10498 Filed 6-9-25; 8:45 am]
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