[Federal Register Volume 90, Number 128 (Tuesday, July 8, 2025)]
[Rules and Regulations]
[Pages 29990-29993]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2025-12644]
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DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Part 1
[Docket No.: PTO-P-2025-0009]
RIN 0651-AD86
2025 Increase of the Annual Limit on Accepted Requests for
Prioritized Examination
AGENCY: United States Patent and Trademark Office, Department of
Commerce.
ACTION: Final rule.
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SUMMARY: The Leahy-Smith America Invents Act (AIA) includes provisions
for prioritized examination of patent applications. Those provisions
have been implemented by the United States Patent and Trademark Office
(USPTO) in previous rulemakings. The AIA provides that the USPTO 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. In 2019 and 2021, the USPTO published interim
rules that expanded the limit on the number of requests to 12,000 and
15,000, respectively. The current final 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 20,000.
DATES: Effective Date: July 8, 2025.
Applicability Date: The limit of 20,000 requests for prioritized
examination accepted per year is applicable beginning with fiscal year
2025 and continuing for each fiscal year thereafter, until further
notice.
FOR FURTHER INFORMATION CONTACT: Kery Fries, Senior Legal Advisor,
Office of Patent Legal Administration, at 571-272-7757; or Parikha
Solanki, Senior Legal Advisor, Office of Patent Legal Administration,
at 571-272-3248.
SUPPLEMENTARY INFORMATION:
I. Background
Section 11(h) of the AIA provides for prioritized examination of an
application. See Pub. L. 112-29, 125 Stat. 284, 324 (2011). Section
11(h)(1)(B)(i) of the AIA also provides that the USPTO 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 USPTO implemented the prioritized examination provision of the
AIA for original utility or plant nonprovisional applications under 35
U.S.C. 111(a) 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 (September 23, 2011) (codified in 37
CFR 1.102(e)). Following implementation of that rule, the USPTO
improved its processes for carrying out prioritized examination and
expanded
[[Page 29991]]
the scope of prioritized examination in view of those improvements.
First, the USPTO 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 (December 19, 2011). Next, the USPTO further
expanded the prioritized examination procedures to permit the delayed
submission of certain filing requirements while maintaining the USPTO's
ability to timely examine the patent application. See Changes to Permit
Delayed Submission of Certain Requirements for Prioritized Examination,
79 FR 12386 (March 5, 2014).
The number of requests for prioritized examination has been
increasing steadily over the years. The USPTO 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 (September 3, 2019). In response
to a continued rise in these requests, the USPTO published an interim
rule in 2021 further increasing the limit on the number of prioritized
examination requests that may be accepted in a fiscal year from 12,000
to 15,000. See 2021 Increase of the Annual Limit on Accepted Requests
for Track One Prioritized Examination, 86 FR 52988 (September 24,
2021).
In fiscal year 2024, the USPTO received more than 15,000 requests
for prioritized examination. The current final rule increases the
number of prioritized examination requests that may be accepted in a
fiscal year to 20,000, so that the USPTO can continue to accommodate
the number of applicants wishing to utilize this program.
This increase in the maximum number of prioritized examination
requests accepted in any fiscal year will not negatively impact overall
pendency across all applications. First, the number of applications
accepted for prioritized examination will remain a small fraction of
the patent examinations completed in a fiscal year. Second, the USPTO
has recently terminated, or allowed to expire, a number of pilot
programs that permitted patent applications meeting certain eligibility
criteria the opportunity to be advanced out of turn for examination.
The USPTO has determined that any potential pendency or workflow
impacts of these 5,000 additional prioritized examination applications
is offset by the cumulative effect of the termination or expiration of
programs such as: the Semiconductor Technology Pilot Program, the
Cancer Moonshot Expedited Examination Pilot Program, the First-Time
Filer Expedited Examination Pilot Program, and the current suspension
of the Climate Change Mitigation Pilot Program. In other words, the
additional prioritized examination availability combined with the
sunset of these pilot programs is expected to have a net neutral or
positive effect on overall pendency. Furthermore, an increase in
prioritized examination opportunities provides the USPTO with
additional resources for building capacity to examine all patent
applications in a more timely manner.
Accordingly, the USPTO 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 20,000, beginning in fiscal year 2025 (October 1, 2024, through
September 30, 2025) and continuing every fiscal year thereafter until
further notice.
II. Discussion of Specific Rule
The following is a discussion of the amendment 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 15,000 to 20,000.
III. Rulemaking Considerations
A. Administrative Procedure Act: This final rule revises the
procedures that apply to applications for which an applicant has
requested Track One prioritized examination. 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. 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))).
Moreover, the USPTO, pursuant to authority at 5 U.S.C. 553(b)(B),
finds good cause to adopt the changes in this final 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
final rule to provide prior notice and comment procedures would cause
harm to those applicants who desire to file a request for prioritized
examination with a new application or request for continued
examination. Immediate implementation of the changes in this final rule
is in the public interest because: (1) the public does not need time to
conform its conduct, as the changes in this final 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 final rule. See Nat'l Customs
Brokers & Forwarders Ass'n of Am., Inc. v. United States, 59 F.3d 1219,
1223-24 (Fed. Cir. 1995). Thus, the USPTO implements this final rule
without prior notice and opportunity for comment.
In addition, pursuant to authority at 5 U.S.C. 553(d)(3), the USPTO
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 final 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
[[Page 29992]]
from the immediate implementation of the changes in this final 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 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 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.) (PRA) requires that the USPTO consider
the impact of paperwork and other information collection burdens
imposed on the public. This final rule does not involve information
collection requirements that are subject to review by the Office of
Management and Budget (OMB) under the PRA. 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. OMB has determined that, under 5 CFR 1320.3(h),
Form PTO/AIA/424 does not collect ``information'' within the meaning of
the PRA. Therefore, this rulemaking to increase the limit on the number
of prioritized examination requests that may be accepted in a fiscal
year does not impose any additional information collection requirements
under the PRA that are subject to review by OMB.
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
has 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 recordkeeping
requirements, Small businesses.
[[Page 29993]]
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 the last sentence of the
paragraph (e) introductory text to read as follows:
Sec. 1.102 Advancement of examination.
* * * * *
(e) * * * No more than 20,000 requests for such prioritized
examination will be accepted in any fiscal year.
* * * * *
Coke Morgan Stewart,
Acting Under Secretary of Commerce for Intellectual Property and Acting
Director of the United States Patent and Trademark Office.
[FR Doc. 2025-12644 Filed 7-7-25; 8:45 am]
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