[Federal Register Volume 79, Number 43 (Wednesday, March 5, 2014)]
[Rules and Regulations]
[Pages 12386-12390]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2014-04806]
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DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
37 CFR Part 1
[Docket No.: PTO-P-2014-0003]
RIN 0651-AC93
Changes to Permit Delayed Submission of Certain Requirements for
Prioritized Examination
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Interim rule.
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SUMMARY: The Leahy-Smith America Invents Act includes provisions for
prioritized examination of patent applications (also referred to as
``Track I''), which have been implemented by the United States Patent
and Trademark Office (Office) in previous rulemakings. This interim
rule simplifies the Track I prioritized examination practice to reduce
the number of requests for prioritized examination that must be
dismissed. In order to enable rapid processing and examination of those
applications, the previous rulemakings provided that an application
having a request for Track I prioritized examination requires, upon
filing of the application, an inventor's oath or declaration and all
required fees, and contains no more than four independent claims,
thirty total claims, and no multiple dependent claims. Accordingly, any
request for Track I prioritized examination not meeting all of the
requirements on filing must be dismissed. The Office has found that
many such dismissals are due to the application as filed not including
a properly executed inventor's oath or declaration, not including the
excess claims fees or application size fee due, or improperly including
a multiple dependent claim or claims in excess of the permitted number.
The Office has determined that the time periods for meeting those
requirements when filing a request for Track I prioritized examination
could be expanded while maintaining the Office's ability to timely
examine the patent application.
DATES: Effective Date: March 5, 2014.
Applicability Date: The changes to 37 CFR 1.102 apply only to
applications filed under 35 U.S.C. 111(a) on or after September 16,
2012, in which a first action has not been mailed.
Comment Deadline Date: Written comments must be received on or
before May 5, 2014.
ADDRESSES: Comments should be sent by electronic mail message over the
Internet addressed to: [email protected]. Comments also may be
submitted by postal mail addressed to: Mail Stop Comments--Patents,
Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450,
marked to the attention of John R. Cottingham, Director, Office of
Petitions, Office of the Deputy Commissioner for Patent Examination
Policy.
Comments further may be sent by electronic mail message over the
Internet via the Federal eRulemaking Portal. See the Federal
eRulemaking Portal Web site (http://
[[Page 12387]]
www.regulations.gov) for additional instructions on providing comments
via the Federal eRulemaking Portal.
Although comments may be submitted by postal mail, the Office
prefers to receive comments by electronic mail message over the
Internet because sharing comments with the public is more easily
accomplished. Electronic comments are preferred to be submitted in
plain text, but also may be submitted in ADOBE[supreg] portable
document format or MICROSOFT WORD[supreg] format. Comments not
submitted electronically should be submitted on paper in a format that
facilitates convenient digital scanning into ADOBE[supreg] portable
document format.
The comments will be available for viewing via the Office's
Internet Web site (http://www.uspto.gov). Because comments will be made
available for public inspection, information that the submitter does
not desire to make public, such as an address or phone number, should
not be included in the comments.
FOR FURTHER INFORMATION CONTACT: John R. Cottingham, Director, Office
of Petitions, at (571) 272-7079, or Michael T. Cygan, Senior Legal
Advisor, Office of Patent Legal Administration, at (571) 272-7700.
SUPPLEMENTARY INFORMATION:
Executive Summary: Purpose: This interim rule simplifies
prioritized examination (``Track I'') practice to reduce the number of
requests for prioritized examination that must be dismissed and to
improve access to prioritized examination.
Summary of Major Provisions: The prioritized examination provisions
(37 CFR 1.102(e)) currently require that: (1) The inventor's oath or
declaration be present on filing, (2) all fees be paid upon filing, and
(3) the application as filed contain no more than four independent
claims, no more than thirty total claims, and no multiple dependent
claims. This interim rule revises 37 CFR 1.102(e) to provide that: (1)
The filing of an inventor's oath or declaration may be postponed in
accordance with 37 CFR 1.53(f)(3) if an application data sheet meeting
the conditions specified in 37 CFR 1.53(f)(3)(i) is present upon
filing; (2) if an application contains more than four independent
claims, more than thirty total claims, or any multiple dependent claim,
the applicant will be given a non-extendable one-month period to file
an amendment to cancel any independent claims in excess of four, any
total claims in excess of thirty, and any multiple dependent claim; and
(3) any excess claims fees due under 37 CFR 1.16(h), (i), or (j) and
any application size fee due under 37 CFR 1.16(s) is not required to be
paid on filing.
Costs and Benefits: This rulemaking is not economically significant
under Executive Order 12866 (Sept. 30, 1993).
Background: Section 11(h) of the Leahy-Smith America Invents Act
provides for prioritized examination of an application. See Public Law
112-29, 125 Stat. 283, 324 (2011). Section 11(h) of the Leahy-Smith
America Invents Act also provides that the Office may by regulation
prescribe conditions for acceptance of a request for prioritized
examination. See id.
The Office implemented the Leahy-Smith America Invents Act
prioritized examination provision for applications upon filing,
referred to as ``Track I,'' 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). The
Office subsequently 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).
The rule implementing prioritized examination, 37 CFR 1.102(e),
sets forth the requirements that must be met to permit a request for
prioritized examination to be granted. These requirements were selected
after public discussion with, and feedback from, patent practitioners
and stakeholders. These requirements were selected in such a manner as
to permit the Office to examine applications undergoing prioritized
examination in a timely manner. In furtherance of timely examination,
the Office required that requests for Track I prioritized examination
conform to all of the requirements listed in 37 CFR 1.102(e)(1) as of
the filing date of the application.
Upon review of the implementation of the Track I program, the
Office has found that an unexpected number of requests for prioritized
examination are being dismissed for failure to meet the requirements of
37 CFR 1.102(e) upon filing. In order to improve access to prioritized
examination, the Office has reevaluated the necessity for each
requirement to be met upon filing. The Office has determined that
permitting certain requirements to be met after the filing date of the
application would avoid dismissal of bona fide attempts to request
Track I prioritized examination, while resulting in only minimal delay
in the processing of the Track I request and the subsequent
examination.
Under the procedure set forth in this interim rule, the
requirements for prioritized examination are amended to permit an
applicant to postpone submission of an inventor's oath and declaration
after the filing date of the application, so long as the application as
filed includes an executed application data sheet meeting the
conditions specified in 37 CFR 1.53(f)(3)(i). Additionally, where a
request for prioritized examination is received for an application
having more than four independent claims, more than thirty total
claims, or any multiple dependent claim, the Office will notify the
applicant and provide a non-extendable period of one month in which
applicant may cancel or amend the claims accordingly. If applicant
provides the required claim amendment or cancellation within that
period, the Track I request will be considered again. If the applicant
fails to place the application in conformance with the above-listed
claim requirements within that period, no further corrective period
will be given, and the Track I request will be dismissed.
Under the procedure set forth in this interim rule, any excess
claims fees due under 37 CFR 1.16(h), (i), or (j) and any application
size fee due under 37 CFR 1.16(s) is not required to be paid on filing.
An application in which excess claims fees or the application size fee
are outstanding will be treated under the provisions of 37 CFR
1.53(f)(4), which require that those fees be paid prior to the
expiration of the time period set for reply by the Office in any notice
of fee deficiency.
Discussion of Specific Rules
The following is a discussion of the amendments to Title 37 of the
Code of Federal Regulations, Part 1.
Section 1.102: Section 1.102(e)(1) is revised to eliminate the
requirement that the inventor's oath or declaration be submitted on the
filing date. An application having a properly executed application data
sheet that meets the requirements set forth in Sec. 1.53(f)(3)(i) will
be eligible for prioritized examination (provided that the conditions
of Sec. 1.102(e) as revised in this interim rule are met). Pursuant to
Sec. 1.41(b), such an application data sheet sets the inventorship for
the application, and applicant may delay submission of the inventor's
oath or declaration no later than the date on which the issue fee for
the patent is paid. See Changes
[[Page 12388]]
To Implement the Inventor's Oath or Declaration Provisions of the
Leahy-Smith America Invents Act, 77 FR 48776, 48779-80 (Aug. 14, 2012),
and Changes to Implement the Patent Law Treaty, 78 FR 62367, 62376
(Oct. 21, 2013). Accordingly, Sec. 1.102(e)(1) is revised to provide
that the application must include a specification as prescribed by 35
U.S.C. 112 including at least one claim, a drawing when necessary, and
the inventor's oath or declaration on filing, except that the filing of
an inventor's oath or declaration may be postponed in accordance with
Sec. 1.53(f)(3) if an application data sheet meeting the conditions
specified in Sec. 1.53(f)(3)(i) is present upon filing.
Section 1.102(e)(1) is also revised to eliminate the requirements
that an application include any excess claims fees due under Sec.
1.16(h), (i), or (j) or any application size fee due under Sec.
1.16(s) on filing. An application in which excess claims fees or the
application size fee are outstanding will be treated under the
provisions of Sec. 1.53(f)(4), which require that those fees be paid
prior to the expiration of the time period set for reply by the Office
in any notice of fee deficiency in order to avoid abandonment.
Section 1.102(e)(1) is further revised to eliminate the
requirements that an application not contain more than four independent
claims, not contain more than thirty total claims, and not contain any
multiple dependent claim upon filing. Upon review of the Track I
request, the Office will provide applicant a non-extendable one-month
period in which to submit an amendment cancelling claims, or removing
multiple dependencies. If, upon expiration of that one-month period,
the application still contains more than four independent claims, more
than thirty total claims, or a multiple dependent claim, the request
for prioritized examination will be dismissed.
Section 1.102(e)(1) maintains the requirement that an application
for which prioritized examination is requested must include payment of
the basic filing fee, the search fee, and examination fees on filing,
or the application will be ineligible for Track I. Specifically, Sec.
1.102(e)(1) as revised requires that if the application is a utility
application, it must be filed via the Office's electronic filing system
and include the filing fee under Sec. 1.16(a), search fee under Sec.
1.16(k), and examination fee under Sec. 1.16(o) upon filing, and that
if the application is a plant application, it must include the filing
fee under Sec. 1.16(c), search fee under Sec. 1.16(m), and
examination fee under Sec. 1.16(q) upon filing.
Section 1.102(e) also maintains the requirement that an application
for which prioritized examination is sought must be accompanied by the
prioritized examination fee set forth in Sec. 1.17(c), the processing
fee set forth in Sec. 1.17(i)(1), and the publication fee set forth in
Sec. 1.18(d). The request and each of these fees must be present on
the same day the application is filed, or the application will be
ineligible for Track I.
This interim rule, while providing additional time for the filing
of an inventor's oath or declaration, for payment of any excess claims
fees or any application size fee, and for filing an amendment to limit
an application to four independent claims and thirty total claims
without any multiple dependent claim, does not remove the requirement
that those items be filed within the appropriate time period.
Applicants are reminded that any request for an extension of time will
cause an outstanding Track I request to be dismissed, or cause an
application to lose its Track I status if previously conferred upon
that application. 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).
To reduce delays in processing the application, the Office
recommends that all of the requirements under Sec. 1.102(e)(1) be met
upon filing. An applicant should not delay meeting a requirement merely
because an additional time period will be supplied. Applicants should
recognize that the twelve-month goal for final disposition of the
application is measured from the time the Track I request is granted,
not from the filing of the application. As an applicant is seeking
Track I prioritized examination to receive rapid examination, any delay
in meeting the requirements for Track I merely adds processing time
onto the twelve-month goal for final disposition of the application.
The changes in this interim rule apply to any application filed
under 35 U.S.C. 111(a) on or after September 16, 2012, in which a first
action has not been mailed. An applicant may have previously submitted
a Track I request which was dismissed, but would have been granted, or
the applicant would have been provided additional time to meet a
requirement, if the changes to the interim rule had been in effect at
the time of the dismissal. An applicant may file a request for
reconsideration of the dismissal of the previous Track I request based
upon the changes set forth in this interim rule if: (1) The application
is still pending; (2) the application contains, or has been amended to
contain, no more than four independent claims, no more than thirty
total claims, and no multiple dependent claims; and (3) a first Office
action has not been mailed in the application. Any such petition should
be directed to the Office of Petitions.
Rulemaking Considerations
A. Administrative Procedure Act: This interim rule revises the
procedures that apply to applications for which an applicant has
requested Track I prioritized examination. The changes in this interim
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. See JEM Broad. Co.
v. FCC, 22 F.3d 320, 326 (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)); see also
Bachow Commc'ns Inc. v. F.C.C., 237 F.3d 683, 690 (D.C. Cir. 2001)
(rules governing an application process are procedural under the
Administrative Procedure Act); Inova Alexandria Hosp. v. Shalala, 244
F.3d 342, 350 (4th Cir. 2001) (rules for handling appeals were
procedural where they did not change the substantive standard for
reviewing claims).
Accordingly, prior notice and opportunity for public comment are
not required pursuant to 5 U.S.C. 553(b) or (c) (or any other law). See
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), does not
require notice and comment rulemaking for ``interpretative rules,
general statements of policy, or rules of agency organization,
procedure, or practice'') (quoting 5 U.S.C. 553(b)(A)). In addition,
pursuant to authority at 5 U.S.C. 553(d)(1), the changes in this
interim rule may be made immediately effective because they relieve
restrictions in the requirements for requesting prioritized examination
of an application.
Moreover, the Office, pursuant to authority at 5 U.S.C.
553(b)(3)(B), finds good cause to adopt the changes in this interim
rule without prior notice and an opportunity for public comment, as
[[Page 12389]]
such procedures are contrary to the public interest. Delay in the
promulgation of this interim rule to provide prior notice and comment
procedures would cause harm to those applicants who file a request for
Track I prioritized examination in an application that does not contain
the inventor's oath or declaration and to those applicants who filed a
request for prioritized examination in an application containing more
than four independent claims, more than thirty total claims, or a
multiple dependent claim. 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
interim rule do not add any additional requirement for requesting
prioritized examination of an application; and (2) those applicants who
are currently ineligible for prioritized examination due to the
previously stated reasons will benefit from the changes in this interim
rule. See Nat'l. Customs Brokers & Forwarders Ass'n v. U.S., 59 F.3d
1219, 1223-24 (Fed. Cir. 1995).
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 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 (Sept. 30, 1993).
D. Executive Order 13563 (Improving Regulation and Regulatory
Review): The Office has complied with Executive Order 13563.
Specifically, the Office has, to the extent feasible and applicable:
(1) Made a reasoned determination that the benefits justify the costs
of the rule; (2) tailored the rule to impose the least burden on
society consistent with obtaining the 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 on-line 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 and maintain
flexibility and freedom of choice for the public; and (9) ensured the
objectivity of scientific and technological information and processes.
E. Executive Order 13132 (Federalism): This rulemaking does not
contain policies with federalism implications sufficient to warrant
preparation of a Federalism Assessment under Executive Order 13132
(Aug. 4, 1999).
F. 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 (Nov. 6,
2000).
G. 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).
H. 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 (Feb. 5, 1996).
I. 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 (Apr.
21, 1997).
J. Executive Order 12630 (Taking of Private Property): This
rulemaking will not affect a taking of private property or otherwise
have taking implications under Executive Order 12630 (Mar. 15, 1988).
K. 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.), prior to issuing any final rule, the
United States Patent and Trademark Office will submit a report
containing the 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
interim rule are not expected to result in an annual effect on the
economy of 100 million dollars 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 interim rule is not a ``major
rule'' as defined in 5 U.S.C. 804(2).
L. Unfunded Mandates Reform Act of 1995: The changes set forth in
this notice 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 dollars (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 dollars (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.
M. National Environmental Policy Act: 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.
N. National Technology Transfer and Advancement Act: 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 which involve the use of
technical standards.
O. Paperwork Reduction Act: The Paperwork Reduction Act of 1995 (44
U.S.C. 3501 et seq.) requires that the Office consider the impact of
paperwork and other information collection burdens imposed on the
public. This interim rule involves information collection requirements
which are subject to review by the Office of Management and Budget
(OMB) under the Paperwork Reduction Act of 1995 (44 U.S.C. 3501-3549).
An applicant who wishes to participate in the prioritized examination
program must submit a certification and request to participate in the
prioritized examination 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 Paperwork
Reduction Act of 1995. This rule making does not impose any additional
collection requirements under the Paperwork Reduction Act which are
subject to further review by OMB.
Notwithstanding any other provision of law, no person is required
to respond to, nor shall a person be subject to a
[[Page 12390]]
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.
List of Subjects in 37 CFR Part 1
Administrative practice and procedure, Courts, Freedom of
information, Inventions and patents, Reporting and recordkeeping
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 (e)(1) to read as
follows:
Sec. 1.102 Advancement of examination.
* * * * *
(e) * * *
(1) A request for prioritized examination may be filed with an
original utility or plant nonprovisional application under 35 U.S.C.
111(a). The application must include a specification as prescribed by
35 U.S.C. 112 including at least one claim, a drawing when necessary,
and the inventor's oath or declaration on filing, except that the
filing of an inventor's oath or declaration may be postponed in
accordance with Sec. 1.53(f)(3) if an application data sheet meeting
the conditions specified in Sec. 1.53(f)(3)(i) is present upon filing.
If the application is a utility application, it must be filed via the
Office's electronic filing system and include the filing fee under
Sec. 1.16(a), search fee under Sec. 1.16(k), and examination fee
under Sec. 1.16(o) upon filing. If the application is a plant
application, it must include the filing fee under Sec. 1.16(c), search
fee under Sec. 1.16(m), and examination fee under Sec. 1.16(q) upon
filing. The request for prioritized examination in compliance with this
paragraph must be present upon filing of the application, except that
the applicant may file an amendment to cancel any independent claims in
excess of four, any total claims in excess of thirty, and any multiple
dependent claim not later than one month from a first decision on the
request for prioritized examination. This one-month time period is not
extendable.
* * * * *
Dated: February 27, 2014.
Michelle K. Lee,
Deputy Under Secretary of Commerce for Intellectual Property and Deputy
Director of the United States Patent and Trademark Office.
[FR Doc. 2014-04806 Filed 3-4-14; 8:45 am]
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