Changes To Implement the Prioritized Examination Track (Track I) of the Enhanced Examination Timing Control Procedures Under the Leahy-Smith America Invents Act, 59050-59055 [2011-24467]
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spend 76 hours to respond to this
requirement at a total cost of $1,900.
The total cost of these requirements for
small IHEs is, therefore, $4,250; $2,068
of this cost will be borne by small
private IHEs, and $2,182 of the cost will
be borne by small public IHEs. Based on
the total number of small IHEs across
the Nation, the estimated cost per small
private IHE is approximately $10, and
the estimated cost per small public IHE
is $66. The Department has, therefore,
determined that the requirements will
not represent a significant burden on
small not-for-profit IHEs. It is also
important to note that States may use
their Government Services Fund
allocations to help small IHEs meet the
costs of complying with the
requirements that affect them, and
public IHEs may use Education
Stabilization Fund dollars they receive
for that purpose.
In addition, the Department believes
the benefits provided under this
regulatory action will outweigh the
burdens on these institutions of
complying with the requirements. One
of these benefits will be the provision of
better information on student success in
postsecondary education to
policymakers, educators, parents, and
other stakeholders. The Department
believes that the information gathered
and reported as a result of these
requirements will improve public
accountability for performance; help
States, LEAs, and schools learn from
one another and improve their decisionmaking; and inform Federal
policymaking.
A second major benefit is that better
public information on State and local
progress in the four reform areas will
likely spur more rapid progress on those
reforms, because States and LEAs that
appear to be lagging in one area or
another may see a need to redouble their
efforts. The Department believes that
more rapid progress on the essential
educational reforms will have major
benefits nationally, and that these
reforms have the potential to drive
dramatic improvements in student
outcomes. The requirements that apply
to IHEs should, in particular, spur more
rapid implementation of pre-K–16 State
longitudinal data systems.
Accessible Format: Individuals with
disabilities can obtain this document in
an accessible format (e.g., braille, large
print, audiotape, or compact disc) on
request to the program contact person
listed under FOR FURTHER INFORMATION
CONTACT.
Electronic Access to This Document:
The official version of this document is
the document published in the Federal
Register. Free Internet access to the
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official edition of the Federal Register
and the Code of Federal Regulations is
available via the Federal Digital System
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Program Authority: American Recovery
and Reinvestment Act of 2009, Division A,
Title XIV—State Fiscal Stabilization Fund,
Pub. L. 111–5; 20 U.S.C. 1221e-3 and 3474.
Catalog of Federal Domestic Assistance
(CFDA) Numbers: 84.394 (Education
Stabilization Fund) and 84.397 (Government
Services Fund).
Dated: September 19, 2011.
Arne Duncan,
Secretary of Education.
[FR Doc. 2011–24407 Filed 9–22–11; 8:45 am]
BILLING CODE 4000–01–P
DEPARTMENT OF COMMERCE
United States Patent and Trademark
Office
37 CFR Part 1
[Docket No.: PTO–P–2011–0039]
RIN 0651–AC62
Changes To Implement the Prioritized
Examination Track (Track I) of the
Enhanced Examination Timing Control
Procedures Under the Leahy-Smith
America Invents Act
AGENCY: United States Patent and
Trademark Office, Commerce.
ACTION: Final rule.
SUMMARY: On April 4, 2011, the United
States Patent and Trademark Office
(Office) published a final rule that
revised the rules of practice in patent
cases to implement a procedure under
which applicants may request
prioritized examination at the time of
filing of an application upon payment of
appropriate fees and compliance with
certain requirements (Track I final rule).
The prioritized examination procedure
is the first track (Track I) of a 3-Track
examination process designed to
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provide applicants with greater control
over when their utility and plant
applications are examined and to
promote greater efficiency in the patent
examination process. The Office
subsequently published a final rule on
April 29, 2011, indicating that the
effective date of the Track I final rule
was delayed until further notice due to
funding limitations. The Leahy-Smith
America Invents Act includes
provisions for prioritized examination
that emulate the requirements of the
Office’s Track I final rule, with revised
fee amounts for prioritized examination
(including a small entity discount) and
a provision that addresses the funding
limitations that required a delay in the
implementation of the Track I final rule.
This final rule implements the
prioritized examination provisions of
section 11(h) of the Leahy-Smith
America Invents Act.
DATES: Effective Date: The changes in
this final rule are effective on September
26, 2011. The final rule published at 76
FR 18399–18407 on April 4, 2011, is
withdrawn effective September 23,
2011.
Applicability Date: A request for
prioritized examination may be
submitted with any original utility or
plant application filed on or after
September 26, 2011.
FOR FURTHER INFORMATION CONTACT: By
telephone to Eugenia A. Jones, at (571)
272–7727, Kathleen Kahler Fonda, at
(571) 272–7754, or Michael T. Cygan, at
(571) 272–7700; or by mail addressed to:
United States Patent and Trademark
Office, Mail Stop Comments—Patents,
Commissioner for Patents, P.O. Box
1450, Alexandria, VA 22313–1450,
marked to the attention of Eugenia A.
Jones or Kathleen Kahler Fonda or
Michael T. Cygan.
SUPPLEMENTARY INFORMATION: In June
2010, the Office requested comments
from the public on a proposal to provide
applicants with greater control over
when their original utility or plant
applications are examined and promote
work sharing between intellectual
property offices (3-Track). See
Enhanced Examination Timing Control
Initiative; Notice of Public Meeting, 75
FR 31763 (June 4, 2010). Specifically,
the Office proposed to implement
procedures under which an applicant
would be able to: (1) Request prioritized
examination of an original utility or
plant nonprovisional application (Track
I); (2) request a delay in docketing the
application for examination, for an
original utility or plant application filed
under 35 U.S.C. 111(a), by filing a
request for delay in payment of the
search fee, the examination fee, the
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claims fees, and the surcharge (if
appropriate) for a maximum period not
to exceed thirty months (Track III); or
(3) obtain processing under the current
examination procedure (Track II) by not
requesting either Track I or Track III
processing.
In February 2011, the Office
published a notice of proposed rule
making to set forth the proposed
procedure for prioritized examination
and to seek public comments on the
proposed procedure. See Changes to
Implement the Prioritized Examination
Track (Track I) of the Enhanced
Examination Timing Control
Procedures, 76 FR 6369 (Feb. 4, 2011).
Since the majority of the public
comments supported the optional
prioritized examination procedure, on
April 4, 2011, the Office published a
final rule that revised the rules of
practice in patent cases to implement a
procedure under which applicants may
request prioritized examination at the
time of filing of an application upon
payment of appropriate fees and
compliance with certain requirements
(Track I final rule). See Changes to
Implement the Prioritized Examination
Track (Track I) of the Enhanced
Examination Timing Control
Procedures, 76 FR 18399 (Apr. 4, 2011).
The Office set a goal for the prioritized
examination procedure of providing a
final disposition within twelve months
of prioritized status being granted. See
Changes to Implement the Prioritized
Examination Track (Track I) of the
Enhanced Examination Timing Control
Procedures, 76 FR at 18401.
The Office, however, found it
necessary to revise its patent examiner
hiring plan for the remainder of fiscal
year 2011 due to funding limitations.
The revised hiring plan for fiscal year
2011 did not permit the Office to hire
a sufficient number of new examiners
for the Office to be able to meet the
twelve-month pendency goal in
prioritized examination applications
without impacting the examination of
non-prioritized applications. Therefore,
the Office published a subsequent final
rule delaying the effective date of the
Track I final rule until further notice.
See Changes to Implement the
Prioritized Examination Track (Track I)
of the Enhanced Examination Timing
Control Procedures, 76 FR 23876 (Apr.
29, 2011).
After the Office published the final
rule delaying the effective date of Track
I, the Leahy-Smith America Invents Act
was enacted into law. The Leahy-Smith
America Invents Act includes
provisions for prioritized examination
that emulate the requirements of the
Office’s Track I final rule, with revised
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fee amounts for prioritized examination
(including a small entity discount).
Specifically, section 11(h) of the LeahySmith America Invents Act provides
that a fee of $4,800 shall be established
for filing a request for prioritized
examination of a nonprovisional
application for an original utility or
plant patent; that this fee is in addition
to the filing, search, examination,
processing, and publication fees, as well
as any applicable excess claims or
application size fees; and that this
$4,800 fee is reduced by fifty percent for
small entities under 35 U.S.C. 41(h)(1).
Section 11(h) of the Leahy-Smith
America Invents Act also provides that
the USPTO may by regulation prescribe
conditions for acceptance of a request
for prioritized examination, as well as
limit the number of filings for
prioritized examination that may be
accepted. Section 11(h) of the LeahySmith America Invents Act further
provides that until such regulations are
prescribed, no application for which
prioritized examination is requested
may contain or be amended to contain
more than four independent claims or
more than thirty total claims, and that
the Office may not accept in any fiscal
year more than 10,000 requests for
prioritized examination. Finally,
Section 11(h) provides that the
prioritized examination provisions are
effective ten days after enactment of the
Leahy-Smith America Invents Act (i.e.,
on September 26, 2011). This final rule
implements the prioritized examination
provisions of section 11(h) of the LeahySmith America Invents Act.
Under prioritized examination, an
application will be accorded special
status and placed on the examiner’s
special docket throughout its entire
course of prosecution before the
examiner until a final disposition is
reached in the application. The goal for
handling applications under prioritized
examination is to on average provide a
final disposition within twelve months
of prioritized status being granted. The
final disposition for the twelve-month
goal means that within twelve months
from the date prioritized status has been
granted that one of the following occur:
(1) Mailing of a notice of allowance; (2)
mailing of a final Office action; (3) filing
of a notice of appeal; (4) completion of
examination as defined in 37 CFR
41.102; (5) filing of a request for
continued examination; or (6)
abandonment of the application. An
application under prioritized
examination, however, would not be
accorded special status throughout its
entire course of appeal or interference
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before the BPAI, or after the filing of a
request for continued examination.
The time periods set for reply in
Office actions for applications in Track
I will be the same as set forth in section
710.02(b) of the Manual of Patent
Examining Procedure (MPEP) (8th ed.
2001) (Rev. 8, July 2010). This is a
distinction between Track I and the
Accelerated Examination program,
where the time period for reply to Office
actions is one month (or at least thirty
days) with no extensions under 37 CFR
1.136(a) being permitted. Where,
however, an applicant files a petition for
an extension of time to file a reply or a
request for a suspension of action, the
prioritized examination of the
application will be terminated. In
addition, filing an amendment to the
application which results in more than
four independent claims, more than
thirty total claims, or a multiple
dependent claim will terminate the
prioritized examination. Upon
termination of prioritized examination,
the application will be removed from
the examiner’s special docket and
placed on the examiner’s regular docket
in accordance with its stage of
prosecution. As the termination of
prioritized examination does not cause
the prioritized examination fee to have
been paid by mistake or in an amount
in excess of that required, the
termination of prioritized examination
will not entitle the applicant to a refund
of the prioritized examination fee. See
35 U.S.C. 42(d) and § 1.26(a) (permits
refunds only for fees ‘‘paid by mistake
or any amount paid in excess of that
required’’).
As discussed previously, the
submission of an amendment resulting
in more than four independent claims or
more than thirty total claims is not
prohibited, but simply terminates the
prioritized examination. Thus, upon
mailing of a final rejection (at which
point prioritized examination is
terminated), applicants may amend the
claims to place them in independent
form where dependent claims were
found allowable, or add new claims,
subject only to the limitations
applicable to any application under
final rejection. See § 1.116. Similarly,
upon mailing of a notice of allowance,
applicants may submit amendments to
the claims, again subject only to the
limitations applicable to any application
that has been allowed. See § 1.312.
To maximize the benefit of prioritized
examination, applicants should
consider one or more of the following:
(1) Acquiring a good knowledge of the
state of the prior art to be able to file the
application with a clear specification
having a complete schedule of claims
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from the broadest to which the
applicant believes he is entitled in view
of the prior art to the narrowest which
the applicant is willing to accept; (2)
submitting an application in condition
for examination; (3) filing replies that
are completely responsive to an Office
action and within the shortened
statutory period for reply set in the
Office action; and (4) being prepared to
conduct interviews with the examiner.
The phrase ‘‘in condition for
examination’’ in this context means the
same as it does with respect to the
current Accelerated Examination
program, which is discussed at MPEP
§ 708.02(a) (subsection VIII.C).
The Office intends to monitor the
prioritized examination program
carefully. As the Office gains experience
with prioritized examination as a result
of the initial implementation, it may
reevaluate the annual numerical cap of
10,000 prioritized examination
applications. Due to the need to limit
the number of applications in the
prioritized examination program in its
initial stages, applications entering the
national stage under 35 U.S.C. 371 are
not eligible. However, an applicant who
has filed an international application
may participate in the prioritized
examination program by filing a by-pass
continuation under 35 U.S.C. 111(a)
rather than entering the national stage
under 35 U.S.C. 371. The Office may
reconsider the exclusion of applications
entering the national stage under 35
U.S.C. 371 at a future date. The Office
may also consider whether there is a
need to limit the number of requests for
prioritized examination that may be
filed in each Technology Center or by
any given applicant. Statistical findings
about prioritized examination,
including statistics concerning the
Office’s ability to meet its stated goals
for the program, will be made available
to the public on the Office’s Internet
Web site.
The requirements for requesting
prioritized examination are summarized
below. A patent application may be
granted prioritized examination status
under the following conditions:
(1) The application must be an
original utility or plant nonprovisional
application filed under 35 U.S.C. 111(a)
on or after September 26, 2011, the new
effective date of the Track I final rule.
The procedure for prioritized
examination does not apply to
international applications, design
applications, reissue applications,
provisional applications, and
reexamination proceedings. Applicants
may request prioritized examination for
a continuing application (e.g., a
continuation or divisional application).
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However, a continuing application will
not automatically be given prioritized
examination status based on the request
filed in the parent application. Each
application (including each continuing
application) must, on its own, meet all
requirements for prioritized
examination under 37 CFR 1.102(e).
(2) The application must be complete
under 37 CFR 1.51(b) with any excess
claims fees paid on filing, and the
application must be filed via the Office’s
electronic filing system (EFS-Web) if it
is a utility application. Thus, the
application must be filed with an oath
or declaration under 37 CFR 1.63, the
basic filing fee, the search fee, the
examination fee, any excess claims fees,
and any application size fee.
(3) The application must contain no
more than four independent claims and
no more than thirty total claims. In
addition, the application must not
contain any multiple dependent claims.
While it is possible to file a preliminary
amendment on filing of an application
to reduce the number of claims to no
more than four independent claims and
thirty total claims, and to eliminate any
multiple dependent claims, the Office
strongly encourages applicants to file
applications without any preliminary
amendments. If an amendment is filed
in an application that has been granted
prioritized examination that results in
more than four independent claims or
thirty total claims, or a multiple
dependent claim, then prioritized
examination will be terminated.
(4) The request for prioritized
examination must be filed with the
application in compliance with 37 CFR
1.102(e), accompanied by the prioritized
examination fee set forth in 37 CFR
1.17(c), the processing fee set forth in 37
CFR 1.17(i), and the publication fee set
forth in 37 CFR 1.18(d). Applicants are
advised to use the certification and
request form PTO/SB/424 which is
available on EFS-Web.
(5) The request for prioritized
examination may be accepted if the
requirements under 37 CFR 1.102(e) are
satisfied and the limit for the number of
requests for the year has not been
reached. The Office is limiting requests
for prioritized examination under 37
CFR 1.102(e) to a maximum of 10,000
applications during fiscal year 2011.
The Office will revisit this limit at the
end of fiscal year 2011 to evaluate what
the appropriate maximum should be, if
any.
Discussion of Specific Rules
Title 37 of the Code of Federal
Regulations, Part 1, is proposed to be
amended as follows:
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Section 1.17: The Office is
implementing a procedure for
prioritized examination (Track I) under
the Leahy-Smith America Invents Act
upon applicant’s request and payment
of a fee at the time of filing of the
application.
Section 1.17(c) is amended to set the
fee for filing a request for prioritized
examination under § 1.102(e) at
$4,800.00 ($2,400.00 for small entities).
See § 1.102(e). Thus, as of September 26,
2011, the total fee due on filing a utility
application for which prioritized
examination is being sought (not
including any applicable excess claims
and application size fees) is $6,480
($3,360 for a small entity). The total fee
due on filing for a utility application is
calculated as follows: (1) The $1,250
($530 small entity) in filing fees which
includes the $380 ($95 small entity
filing by EFS-Web) filing fee, the $620
($310 small entity) search fee, and the
$250 ($125 small entity) examination
fee; (2) the $4,800 ($2,400 small entity)
prioritized examination fee; (3) the $130
processing fee; and (4) the $300
publication fee.
Section 1.17(i) is amended to add a
reference for requesting prioritized
examination of an application under
§ 1.102(e).
Section 1.102: Section 1.102 is revised
to provide for the Track I procedure in
which applicant has the option to
request prioritized examination on the
date the application is filed.
Particularly, § 1.102(a) is revised by
adding a reference to paragraph (e) so
that applications may be advanced out
of turn for examination or for further
action upon filing a request under
§ 1.102(e). Section 1.102(e) is added to
set forth the requirements for filing a
request for prioritized examination,
which provides that a request for
prioritized examination will not be
granted unless: (1) the application is an
original utility or plant nonprovisional
application filed under 35 U.S.C. 111(a)
that is complete as defined by § 1.51(b),
with any fees due under § 1.16 (the
filing fee, search fee, examination fee,
any applicable excess claims fee, and
any applicable application size fee) paid
on filing; (2) the application is filed via
the Office’s electronic filing system
(EFS-Web) if it is a utility application
(the Office will accept a request for
prioritized examination in paper when
it accompanies the filing of a plant
application, because plant applications
may not be filed via EFS-Web); (3) the
request for prioritized examination,
including the prioritized examination
fee set forth in § 1.17(c), the processing
fee set forth in § 1.17(i), and the
publication fee set forth in § 1.18(d) are
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present upon filing; and (4) the
application contains no more than four
independent claims, no more than thirty
total claims, and no multiple dependent
claims. Section 1.102(e) finally provides
that prioritized examination under this
paragraph will not be accorded
international applications, design
applications, reissue applications,
provisional applications, or
reexamination proceedings.
The Leahy-Smith America Invents Act
currently limits the number of requests
for prioritized examination under
§ 1.102(e) that the Office may accept in
each fiscal year to a maximum of
10,000. A request for prioritized
examination may be accepted if the
requirements under § 1.102(e) are
satisfied and the limit for the number of
requests has not been reached.
Rulemaking Considerations
A. Administrative Procedure Act: This
final rule implements the prioritized
examination provisions of section 11(h)
of the Leahy-Smith America Invents
Act. The changes in this final rule that
implement the fee for prioritized
examination and requirements specified
in section 11(h) of the Leahy-Smith
America Invents Act are merely
interpretative. See Gray Panthers
Advocacy Comm. v. Sullivan, 936 F.2d
1284, 1291–1292 (DC Cir. 1991)
(regulation that reiterates statutory
language does not require notice and
comment procedures); See Nat’l Org. of
Veterans’ Advocates v. Sec’y of Veterans
Affairs, 260 F.3d 1365, 1375 (Fed. Cir.
2001). The additional requirements (e.g.,
filing via the Office’s electronic filing
system (EFS-Web)) merely specify the
procedures that apply to applications
for which an applicant has requested
prioritized examination and are thus
procedural and not substantive. See JEM
Broad. Co. v. FCC, 22 F.3d 320, 326 (DC
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 (DC Cir. 1980)).
Accordingly, prior notice and an
opportunity for public comment are not
required pursuant to 5 U.S.C. 553(b)(A)
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), do not require
notice and comment rule making for
‘‘interpretative rules, general statements
of policy, or rules of agency
organization, procedure, or practice.’’)
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(quoting 5 U.S.C. 553(b)(A)).
Nevertheless, the changes being adopted
in this final rule were proposed for
comment in February of 2011, and those
comments have been considered by the
Office. See Changes to Implement the
Prioritized Examination Track (Track I)
of the Enhanced Examination Timing
Control Procedures, 76 FR at 18402–06.
In addition, thirty-day advance
publication is not required pursuant to
5 U.S.C. 553(d) or any other law. See 5
U.S.C. 553(d) (requiring thirty-day
advance publication for substantive
rules).
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 rule making
has been determined to be 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: (1) Used the best available
techniques to quantify costs and
benefits, and has considered values
such as equity, fairness, and distributive
impacts; (2) provided the public with a
meaningful opportunity to participate in
the regulatory process, including
soliciting the views of those likely
affected prior to issuing a notice of
proposed rule making, and provided online access to the rule making docket;
(3) attempted to promote coordination,
simplification, and harmonization
across government agencies and
identified goals designed to promote
innovation; (4) considered approaches
that reduce burdens and maintain
flexibility and freedom of choice for the
public; and (5) ensured the objectivity of
scientific and technological information
and processes, to the extent applicable.
E. Executive Order 13132
(Federalism): This rule making 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 rule making 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
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required under Executive Order 13175
(Nov. 6, 2000).
G. Executive Order 13211 (Energy
Effects): This rule making is not a
significant energy action under
Executive Order 13211 because this rule
making 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 rule making 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 rule making 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 rule making will
not effect 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 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 notice 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 foreignbased enterprises in domestic and
export markets. Therefore, this notice is
not expected to result in 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
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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 rule making 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 rule making
does not contain provisions which
involve the use of technical standards.
O. Paperwork Reduction Act: This
rule making implements a prioritized
examination process. The primary
impact on the public of this change is
that applicants will have the option to
request prioritized examination by
paying appropriate fees, filing a
complete application via the Office’s
electronic filing system (EFS-Web) with
any filing and excess claims fees due
paid on filing, and limiting their
applications to four independent claims
and thirty total claims with no multiple
dependent claims.
An applicant who wishes to
participate in the program must submit
a certification and request to participate
in the prioritized examination program,
preferably by using Form PTO/SB/424.
The Office of Management and Budget
(OMB) has determined that, under 5
CFR 1320.3(h), Form PTO/SB/424 does
not collect ‘‘information’’ within the
meaning of the Paperwork Reduction
Act of 1995. Therefore, this rule making
does not impose 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
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, the final rule amending 37
CFR part 1 that was published at 76 FR
18399–18407 on April 4, 2011, and
whose effective date was delayed until
further notice at 76 FR 23876 on April
29, 2011, is withdrawn, and 37 CFR part
1 is amended as follows:
PART 1—RULES OF PRACTICE IN
PATENT CASES
1. The authority citation for 37 CFR
part 1 continues to read as follows:
■
Authority: 35 U.S.C. 2(b)(2).
2. Section 1.17 is amended by adding
new paragraph (c) and revising
paragraph (i) to read as follows:
■
§ 1.17 Patent application and
reexamination processing fees.
*
*
*
*
*
(c) For filing a request for prioritized
examination under § 1.102(e):
By a small entity (§ 1.27(a)) .....................................................................................................................................................................
By other than a small entity ....................................................................................................................................................................
*
*
*
*
*
erowe on DSK2VPTVN1PROD with RULES
(i) Processing fee for taking action under one of the following sections which refers to this paragraph ..........................................
§ 1.28(c)(3)—for processing a nonitemized fee deficiency based on an
error in small entity status.
§ 1.41—for supplying the name or
names of the inventor or inventors after
the filing date without an oath or
declaration as prescribed by § 1.63,
except in provisional applications.
§ 1.48—for correcting inventorship,
except in provisional applications.
§ 1.52(d)—for processing a
nonprovisional application filed with a
specification in a language other than
English.
§ 1.53(b)(3)—to convert a provisional
application filed under § 1.53(c) into a
nonprovisional application under
§ 1.53(b).
§ 1.55—for entry of late priority
papers.
§ 1.71(g)(2)—for processing a belated
amendment under § 1.71(g).
§ 1.99(e)—for processing a belated
submission under § 1.99.
§ 1.102(e)—for requesting prioritized
examination of an application.
§ 1.103(b)—for requesting limited
suspension of action, continued
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$2,400.00
$4,800.00
14:40 Sep 22, 2011
Jkt 223001
prosecution application for a design
patent (§ 1.53(d)).
§ 1.103(c)—for requesting limited
suspension of action, request for
continued examination (§ 1.114).
§ 1.103(d)—for requesting deferred
examination of an application.
§ 1.217—for processing a redacted
copy of a paper submitted in the file of
an application in which a redacted copy
was submitted for the patent application
publication.
§ 1.221—for requesting voluntary
publication or republication of an
application.
§ 1.291(c)(5)—for processing a second
or subsequent protest by the same real
party in interest.
§ 1.497(d)—for filing an oath or
declaration pursuant to 35 U.S.C.
371(c)(4) naming an inventive entity
different from the inventive entity set
forth in the international stage.
§ 3.81—for a patent to issue to
assignee, assignment submitted after
payment of the issue fee.
*
*
*
*
*
PO 00000
Frm 00052
Fmt 4700
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$130.00
3. Section 1.102 is amended by
revising paragraph (a) and adding
paragraph (e) to read as follows:
■
§ 1.102
Advancement of examination.
(a) Applications will not be advanced
out of turn for examination or for further
action except as provided by this part,
or upon order of the Director to expedite
the business of the Office, or upon filing
of a request under paragraph (b) or (e)
of this section or upon filing a petition
or request under paragraph (c) or (d) of
this section with a showing which, in
the opinion of the Director, will justify
so advancing it.
*
*
*
*
*
(e) A request for prioritized
examination under this paragraph may
be filed only with an original utility or
plant nonprovisional application under
35 U.S.C. 111(a) that is complete as
defined by § 1.51(b), with any fees due
under § 1.16 paid on filing. If the
application is a utility application, it
must be filed via the Office’s electronic
filing system (EFS-Web). A request for
prioritized examination under this
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paragraph must be present upon filing
and must be accompanied by the
prioritized examination fee set forth in
§ 1.17(c), the processing fee set forth in
§ 1.17(i), and the publication fee set
forth in § 1.18(d). An application for
which prioritized examination has been
requested may not contain or be
amended to contain more than four
independent claims, more than thirty
total claims, or any multiple dependent
claim. Prioritized examination under
this paragraph will not be accorded to
international applications, design
applications, reissue applications,
provisional applications, or
reexamination proceedings.
Dated: September 19, 2011.
David J. Kappos,
Under Secretary of Commerce for Intellectual
Property and Director of the United States
Patent and Trademark Office.
[FR Doc. 2011–24467 Filed 9–22–11; 8:45 am]
BILLING CODE 3510–16–P
DEPARTMENT OF COMMERCE
United States Patent and Trademark
Office
37 CFR Part 1
[Docket No. PTO–P–2011–0037]
RIN 0651–AC61
Revision of Standard for Granting an
Inter Partes Reexamination Request
erowe on DSK2VPTVN1PROD with RULES
AGENCY: United States Patent and
Trademark Office, Commerce.
ACTION: Final rule.
SUMMARY: The United States Patent and
Trademark Office (Office) is revising the
rules of practice governing inter partes
reexamination to implement a transition
provision of the Leahy-Smith America
Invents Act that changes the standard
for granting a request for inter partes
reexamination. The Office is also
revising the rules governing inter partes
reexamination to reflect the termination
of inter partes reexamination effective
September 16, 2012, which is provided
for in the Act. The Leahy-Smith
America Invents Act replaces inter
partes reexamination by a new inter
partes review process effective one year
after the date of enactment of the LeahySmith America Invents Act (i.e.,
September 16, 2012), and provides that
any request for inter partes
reexamination filed on or after
September 16, 2011, will not be granted
unless the information presented in the
request establishes that there is a
reasonable likelihood that the requester
will prevail with respect to at least one
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14:40 Sep 22, 2011
Jkt 223001
of the claims challenged in the request.
This replaces the prior standard for
granting a request for inter partes
reexamination that required a
substantial new question of
patentability (SNQ) affecting any claim
of the patent raised by the request. The
Leahy-Smith America Invents Act does
not revise the SNQ standard for granting
an ex parte reexamination request.
DATES: Effective Date: September 23,
2011. Applicability Date: The changes in
this final rule apply to any request for
inter partes reexamination filed on or
after September 16, 2011, and before
September 16, 2012.
FOR FURTHER INFORMATION CONTACT: By
telephone to Kenneth M. Schor, at (571)
272–7710, or Joseph F. Weiss, Jr., at
(571) 272–7759; or by mail addressed to
United States Patent and Trademark
Office, Mail Stop Comments—Patents,
Commissioner for Patents, P.O. Box
1450, Alexandria, VA 22313–1450,
marked to the attention of Kenneth M.
Schor and Joseph F. Weiss, Jr.
SUPPLEMENTARY INFORMATION: Section
6(a) of the Leahy-Smith America Invents
Act replaces the inter partes
reexamination process that was
established by the American Inventors
Protection Act of 1999 (AIPA) (Pub. L.
106–113, 113 Stat. 1501, 1501A–552
through 1501A–591 (1999)) with a new
inter partes review process. The
replacement of inter partes
reexamination with inter partes review
is effective on September 16, 2012.
Section 6(c)(3)(A) of the Leahy-Smith
America Invents Act provides a
transition provision under which a
request for inter partes reexamination
will not be granted unless the
information presented in the request
shows that there is a reasonable
likelihood that the requester will prevail
with respect to at least one of the claims
challenged in the request.
The Office is revising the rules of
practice to (1) conform the standard for
granting an inter partes reexamination
to the one specified in section 6(c)(3)(A)
of the Leahy-Smith America Invents
Act, and (2) provide for termination of
inter partes reexamination on
September 16, 2012, as set forth in
section 6(c)(3) of the Leahy-Smith
America Invents Act.
The Leahy-Smith America Invents Act
also creates a new inter partes review
process to replace inter partes
reexamination. The Office will
implement the new inter partes review
proceedings in a separate rule making.
I. Background
Prior to the enactment of the LeahySmith America Invents Act, 35 U.S.C.
PO 00000
Frm 00053
Fmt 4700
Sfmt 4700
59055
312(a) provided, as to the standard for
granting an inter partes reexamination
request, that ‘‘the Director shall
determine whether a substantial new
question of patentability affecting any
claim of the patent concerned is raised
by the request, with or without
consideration of other patents or printed
publications * * *.’’ The Office has
referred to this standard as ‘‘SNQ.’’ The
SNQ standard for granting an inter
partes reexamination request was
enacted in the AIPA.
Section 6(c)(3)(A) of the Leahy-Smith
America Invents Act amended 35 U.S.C.
312 and 313 to delete any reference to
the SNQ standard, and provide, in place
of each deletion, language requiring the
information presented in a request for
inter partes reexamination (filed
pursuant to 35 U.S.C. 311) to show that
there is a reasonable likelihood that the
requester will prevail with respect to at
least one of the claims challenged in the
request.
With respect to the reasonable
likelihood standard, House Rep. 112–98
(Part 1), 112th Cong., 1st Sess., provides,
in connection with inter partes review,
the following:
‘‘The threshold for initiating an inter partes
review is elevated from ‘significant new
question of patentability’—a standard that
currently allows 95% of all requests to be
granted—to a standard requiring petitioners
to present information showing that their
challenge has a reasonable likelihood of
success.’’ H.R. Rep. No. 112–98 (Part 1), at
47.
The Office is revising the rules of
practice for inter partes reexamination
in title 37 of the Code of Federal
Regulations (CFR) by amending
§§ 1.915, 1.923, 1.927, and 1.931 to
delete any reference to the SNQ
standard for granting reexamination,
and insert in its place reference to the
newly enacted ‘‘reasonable likelihood’’
standard.
The SNQ standard for granting ex
parte reexamination has not been
revised by the Leahy-Smith America
Invents Act, and accordingly, the rules
of practice for ex parte reexamination
are not being revised.
When the standards for Office
jurisdiction over the proceeding are
effective: Section 6(c)(3)(B) of the LeahySmith America Invents Act provides
that this transition provision applies to
any request for inter partes
reexamination filed on or after the date
of enactment of the Leahy-Smith
America Invents Act (i.e., September 16,
2011), but before the effective date of
the inter partes review provisions of the
Leahy-Smith America Invents Act (i.e.,
September 16, 2012). Section 6(c)(3)(C)
of the Leahy-Smith America Invents Act
E:\FR\FM\23SER1.SGM
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]]>Agencies
[Federal Register Volume 76, Number 185 (Friday, September 23, 2011)]
[Rules and Regulations]
[Pages 59050-59055]
From the Federal Register Online via the Government Printing Office [www.gpo.gov]
[FR Doc No: 2011-24467]
=======================================================================
-----------------------------------------------------------------------
DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
37 CFR Part 1
[Docket No.: PTO-P-2011-0039]
RIN 0651-AC62
Changes To Implement the Prioritized Examination Track (Track I)
of the Enhanced Examination Timing Control Procedures Under the Leahy-
Smith America Invents Act
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Final rule.
-----------------------------------------------------------------------
SUMMARY: On April 4, 2011, the United States Patent and Trademark
Office (Office) published a final rule that revised the rules of
practice in patent cases to implement a procedure under which
applicants may request prioritized examination at the time of filing of
an application upon payment of appropriate fees and compliance with
certain requirements (Track I final rule). The prioritized examination
procedure is the first track (Track I) of a 3-Track examination process
designed to provide applicants with greater control over when their
utility and plant applications are examined and to promote greater
efficiency in the patent examination process. The Office subsequently
published a final rule on April 29, 2011, indicating that the effective
date of the Track I final rule was delayed until further notice due to
funding limitations. The Leahy-Smith America Invents Act includes
provisions for prioritized examination that emulate the requirements of
the Office's Track I final rule, with revised fee amounts for
prioritized examination (including a small entity discount) and a
provision that addresses the funding limitations that required a delay
in the implementation of the Track I final rule. This final rule
implements the prioritized examination provisions of section 11(h) of
the Leahy-Smith America Invents Act.
DATES: Effective Date: The changes in this final rule are effective on
September 26, 2011. The final rule published at 76 FR 18399-18407 on
April 4, 2011, is withdrawn effective September 23, 2011.
Applicability Date: A request for prioritized examination may be
submitted with any original utility or plant application filed on or
after September 26, 2011.
FOR FURTHER INFORMATION CONTACT: By telephone to Eugenia A. Jones, at
(571) 272-7727, Kathleen Kahler Fonda, at (571) 272-7754, or Michael T.
Cygan, at (571) 272-7700; or by mail addressed to: United States Patent
and Trademark Office, Mail Stop Comments--Patents, Commissioner for
Patents, P.O. Box 1450, Alexandria, VA 22313-1450, marked to the
attention of Eugenia A. Jones or Kathleen Kahler Fonda or Michael T.
Cygan.
SUPPLEMENTARY INFORMATION: In June 2010, the Office requested comments
from the public on a proposal to provide applicants with greater
control over when their original utility or plant applications are
examined and promote work sharing between intellectual property offices
(3-Track). See Enhanced Examination Timing Control Initiative; Notice
of Public Meeting, 75 FR 31763 (June 4, 2010). Specifically, the Office
proposed to implement procedures under which an applicant would be able
to: (1) Request prioritized examination of an original utility or plant
nonprovisional application (Track I); (2) request a delay in docketing
the application for examination, for an original utility or plant
application filed under 35 U.S.C. 111(a), by filing a request for delay
in payment of the search fee, the examination fee, the
[[Page 59051]]
claims fees, and the surcharge (if appropriate) for a maximum period
not to exceed thirty months (Track III); or (3) obtain processing under
the current examination procedure (Track II) by not requesting either
Track I or Track III processing.
In February 2011, the Office published a notice of proposed rule
making to set forth the proposed procedure for prioritized examination
and to seek public comments on the proposed procedure. See Changes to
Implement the Prioritized Examination Track (Track I) of the Enhanced
Examination Timing Control Procedures, 76 FR 6369 (Feb. 4, 2011). Since
the majority of the public comments supported the optional prioritized
examination procedure, on April 4, 2011, the Office published a final
rule that revised the rules of practice in patent cases to implement a
procedure under which applicants may request prioritized examination at
the time of filing of an application upon payment of appropriate fees
and compliance with certain requirements (Track I final rule). See
Changes to Implement the Prioritized Examination Track (Track I) of the
Enhanced Examination Timing Control Procedures, 76 FR 18399 (Apr. 4,
2011). The Office set a goal for the prioritized examination procedure
of providing a final disposition within twelve months of prioritized
status being granted. See Changes to Implement the Prioritized
Examination Track (Track I) of the Enhanced Examination Timing Control
Procedures, 76 FR at 18401.
The Office, however, found it necessary to revise its patent
examiner hiring plan for the remainder of fiscal year 2011 due to
funding limitations. The revised hiring plan for fiscal year 2011 did
not permit the Office to hire a sufficient number of new examiners for
the Office to be able to meet the twelve-month pendency goal in
prioritized examination applications without impacting the examination
of non-prioritized applications. Therefore, the Office published a
subsequent final rule delaying the effective date of the Track I final
rule until further notice. See Changes to Implement the Prioritized
Examination Track (Track I) of the Enhanced Examination Timing Control
Procedures, 76 FR 23876 (Apr. 29, 2011).
After the Office published the final rule delaying the effective
date of Track I, the Leahy-Smith America Invents Act was enacted into
law. The Leahy-Smith America Invents Act includes provisions for
prioritized examination that emulate the requirements of the Office's
Track I final rule, with revised fee amounts for prioritized
examination (including a small entity discount). Specifically, section
11(h) of the Leahy-Smith America Invents Act provides that a fee of
$4,800 shall be established for filing a request for prioritized
examination of a nonprovisional application for an original utility or
plant patent; that this fee is in addition to the filing, search,
examination, processing, and publication fees, as well as any
applicable excess claims or application size fees; and that this $4,800
fee is reduced by fifty percent for small entities under 35 U.S.C.
41(h)(1). Section 11(h) of the Leahy-Smith America Invents Act also
provides that the USPTO may by regulation prescribe conditions for
acceptance of a request for prioritized examination, as well as limit
the number of filings for prioritized examination that may be accepted.
Section 11(h) of the Leahy-Smith America Invents Act further provides
that until such regulations are prescribed, no application for which
prioritized examination is requested may contain or be amended to
contain more than four independent claims or more than thirty total
claims, and that the Office may not accept in any fiscal year more than
10,000 requests for prioritized examination. Finally, Section 11(h)
provides that the prioritized examination provisions are effective ten
days after enactment of the Leahy-Smith America Invents Act (i.e., on
September 26, 2011). This final rule implements the prioritized
examination provisions of section 11(h) of the Leahy-Smith America
Invents Act.
Under prioritized examination, an application will be accorded
special status and placed on the examiner's special docket throughout
its entire course of prosecution before the examiner until a final
disposition is reached in the application. The goal for handling
applications under prioritized examination is to on average provide a
final disposition within twelve months of prioritized status being
granted. The final disposition for the twelve-month goal means that
within twelve months from the date prioritized status has been granted
that one of the following occur: (1) Mailing of a notice of allowance;
(2) mailing of a final Office action; (3) filing of a notice of appeal;
(4) completion of examination as defined in 37 CFR 41.102; (5) filing
of a request for continued examination; or (6) abandonment of the
application. An application under prioritized examination, however,
would not be accorded special status throughout its entire course of
appeal or interference before the BPAI, or after the filing of a
request for continued examination.
The time periods set for reply in Office actions for applications
in Track I will be the same as set forth in section 710.02(b) of the
Manual of Patent Examining Procedure (MPEP) (8th ed. 2001) (Rev. 8,
July 2010). This is a distinction between Track I and the Accelerated
Examination program, where the time period for reply to Office actions
is one month (or at least thirty days) with no extensions under 37 CFR
1.136(a) being permitted. Where, however, an applicant files a petition
for an extension of time to file a reply or a request for a suspension
of action, the prioritized examination of the application will be
terminated. In addition, filing an amendment to the application which
results in more than four independent claims, more than thirty total
claims, or a multiple dependent claim will terminate the prioritized
examination. Upon termination of prioritized examination, the
application will be removed from the examiner's special docket and
placed on the examiner's regular docket in accordance with its stage of
prosecution. As the termination of prioritized examination does not
cause the prioritized examination fee to have been paid by mistake or
in an amount in excess of that required, the termination of prioritized
examination will not entitle the applicant to a refund of the
prioritized examination fee. See 35 U.S.C. 42(d) and Sec. 1.26(a)
(permits refunds only for fees ``paid by mistake or any amount paid in
excess of that required'').
As discussed previously, the submission of an amendment resulting
in more than four independent claims or more than thirty total claims
is not prohibited, but simply terminates the prioritized examination.
Thus, upon mailing of a final rejection (at which point prioritized
examination is terminated), applicants may amend the claims to place
them in independent form where dependent claims were found allowable,
or add new claims, subject only to the limitations applicable to any
application under final rejection. See Sec. 1.116. Similarly, upon
mailing of a notice of allowance, applicants may submit amendments to
the claims, again subject only to the limitations applicable to any
application that has been allowed. See Sec. 1.312.
To maximize the benefit of prioritized examination, applicants
should consider one or more of the following: (1) Acquiring a good
knowledge of the state of the prior art to be able to file the
application with a clear specification having a complete schedule of
claims
[[Page 59052]]
from the broadest to which the applicant believes he is entitled in
view of the prior art to the narrowest which the applicant is willing
to accept; (2) submitting an application in condition for examination;
(3) filing replies that are completely responsive to an Office action
and within the shortened statutory period for reply set in the Office
action; and (4) being prepared to conduct interviews with the examiner.
The phrase ``in condition for examination'' in this context means the
same as it does with respect to the current Accelerated Examination
program, which is discussed at MPEP Sec. 708.02(a) (subsection
VIII.C).
The Office intends to monitor the prioritized examination program
carefully. As the Office gains experience with prioritized examination
as a result of the initial implementation, it may reevaluate the annual
numerical cap of 10,000 prioritized examination applications. Due to
the need to limit the number of applications in the prioritized
examination program in its initial stages, applications entering the
national stage under 35 U.S.C. 371 are not eligible. However, an
applicant who has filed an international application may participate in
the prioritized examination program by filing a by-pass continuation
under 35 U.S.C. 111(a) rather than entering the national stage under 35
U.S.C. 371. The Office may reconsider the exclusion of applications
entering the national stage under 35 U.S.C. 371 at a future date. The
Office may also consider whether there is a need to limit the number of
requests for prioritized examination that may be filed in each
Technology Center or by any given applicant. Statistical findings about
prioritized examination, including statistics concerning the Office's
ability to meet its stated goals for the program, will be made
available to the public on the Office's Internet Web site.
The requirements for requesting prioritized examination are
summarized below. A patent application may be granted prioritized
examination status under the following conditions:
(1) The application must be an original utility or plant
nonprovisional application filed under 35 U.S.C. 111(a) on or after
September 26, 2011, the new effective date of the Track I final rule.
The procedure for prioritized examination does not apply to
international applications, design applications, reissue applications,
provisional applications, and reexamination proceedings. Applicants may
request prioritized examination for a continuing application (e.g., a
continuation or divisional application). However, a continuing
application will not automatically be given prioritized examination
status based on the request filed in the parent application. Each
application (including each continuing application) must, on its own,
meet all requirements for prioritized examination under 37 CFR
1.102(e).
(2) The application must be complete under 37 CFR 1.51(b) with any
excess claims fees paid on filing, and the application must be filed
via the Office's electronic filing system (EFS-Web) if it is a utility
application. Thus, the application must be filed with an oath or
declaration under 37 CFR 1.63, the basic filing fee, the search fee,
the examination fee, any excess claims fees, and any application size
fee.
(3) The application must contain no more than four independent
claims and no more than thirty total claims. In addition, the
application must not contain any multiple dependent claims. While it is
possible to file a preliminary amendment on filing of an application to
reduce the number of claims to no more than four independent claims and
thirty total claims, and to eliminate any multiple dependent claims,
the Office strongly encourages applicants to file applications without
any preliminary amendments. If an amendment is filed in an application
that has been granted prioritized examination that results in more than
four independent claims or thirty total claims, or a multiple dependent
claim, then prioritized examination will be terminated.
(4) The request for prioritized examination must be filed with the
application in compliance with 37 CFR 1.102(e), accompanied by the
prioritized examination fee set forth in 37 CFR 1.17(c), the processing
fee set forth in 37 CFR 1.17(i), and the publication fee set forth in
37 CFR 1.18(d). Applicants are advised to use the certification and
request form PTO/SB/424 which is available on EFS-Web.
(5) The request for prioritized examination may be accepted if the
requirements under 37 CFR 1.102(e) are satisfied and the limit for the
number of requests for the year has not been reached. The Office is
limiting requests for prioritized examination under 37 CFR 1.102(e) to
a maximum of 10,000 applications during fiscal year 2011. The Office
will revisit this limit at the end of fiscal year 2011 to evaluate what
the appropriate maximum should be, if any.
Discussion of Specific Rules
Title 37 of the Code of Federal Regulations, Part 1, is proposed to
be amended as follows:
Section 1.17: The Office is implementing a procedure for
prioritized examination (Track I) under the Leahy-Smith America Invents
Act upon applicant's request and payment of a fee at the time of filing
of the application.
Section 1.17(c) is amended to set the fee for filing a request for
prioritized examination under Sec. 1.102(e) at $4,800.00 ($2,400.00
for small entities). See Sec. 1.102(e). Thus, as of September 26,
2011, the total fee due on filing a utility application for which
prioritized examination is being sought (not including any applicable
excess claims and application size fees) is $6,480 ($3,360 for a small
entity). The total fee due on filing for a utility application is
calculated as follows: (1) The $1,250 ($530 small entity) in filing
fees which includes the $380 ($95 small entity filing by EFS-Web)
filing fee, the $620 ($310 small entity) search fee, and the $250 ($125
small entity) examination fee; (2) the $4,800 ($2,400 small entity)
prioritized examination fee; (3) the $130 processing fee; and (4) the
$300 publication fee.
Section 1.17(i) is amended to add a reference for requesting
prioritized examination of an application under Sec. 1.102(e).
Section 1.102: Section 1.102 is revised to provide for the Track I
procedure in which applicant has the option to request prioritized
examination on the date the application is filed. Particularly, Sec.
1.102(a) is revised by adding a reference to paragraph (e) so that
applications may be advanced out of turn for examination or for further
action upon filing a request under Sec. 1.102(e). Section 1.102(e) is
added to set forth the requirements for filing a request for
prioritized examination, which provides that a request for prioritized
examination will not be granted unless: (1) the application is an
original utility or plant nonprovisional application filed under 35
U.S.C. 111(a) that is complete as defined by Sec. 1.51(b), with any
fees due under Sec. 1.16 (the filing fee, search fee, examination fee,
any applicable excess claims fee, and any applicable application size
fee) paid on filing; (2) the application is filed via the Office's
electronic filing system (EFS-Web) if it is a utility application (the
Office will accept a request for prioritized examination in paper when
it accompanies the filing of a plant application, because plant
applications may not be filed via EFS-Web); (3) the request for
prioritized examination, including the prioritized examination fee set
forth in Sec. 1.17(c), the processing fee set forth in Sec. 1.17(i),
and the publication fee set forth in Sec. 1.18(d) are
[[Page 59053]]
present upon filing; and (4) the application contains no more than four
independent claims, no more than thirty total claims, and no multiple
dependent claims. Section 1.102(e) finally provides that prioritized
examination under this paragraph will not be accorded international
applications, design applications, reissue applications, provisional
applications, or reexamination proceedings.
The Leahy-Smith America Invents Act currently limits the number of
requests for prioritized examination under Sec. 1.102(e) that the
Office may accept in each fiscal year to a maximum of 10,000. A request
for prioritized examination may be accepted if the requirements under
Sec. 1.102(e) are satisfied and the limit for the number of requests
has not been reached.
Rulemaking Considerations
A. Administrative Procedure Act: This final rule implements the
prioritized examination provisions of section 11(h) of the Leahy-Smith
America Invents Act. The changes in this final rule that implement the
fee for prioritized examination and requirements specified in section
11(h) of the Leahy-Smith America Invents Act are merely interpretative.
See Gray Panthers Advocacy Comm. v. Sullivan, 936 F.2d 1284, 1291-1292
(DC Cir. 1991) (regulation that reiterates statutory language does not
require notice and comment procedures); See Nat'l Org. of Veterans'
Advocates v. Sec'y of Veterans Affairs, 260 F.3d 1365, 1375 (Fed. Cir.
2001). The additional requirements (e.g., filing via the Office's
electronic filing system (EFS-Web)) merely specify the procedures that
apply to applications for which an applicant has requested prioritized
examination and are thus procedural and not substantive. See JEM Broad.
Co. v. FCC, 22 F.3d 320, 326 (DC 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 (DC Cir. 1980)).
Accordingly, prior notice and an opportunity for public comment are
not required pursuant to 5 U.S.C. 553(b)(A) 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), do not
require notice and comment rule making for ``interpretative rules,
general statements of policy, or rules of agency organization,
procedure, or practice.'') (quoting 5 U.S.C. 553(b)(A)). Nevertheless,
the changes being adopted in this final rule were proposed for comment
in February of 2011, and those comments have been considered by the
Office. See Changes to Implement the Prioritized Examination Track
(Track I) of the Enhanced Examination Timing Control Procedures, 76 FR
at 18402-06. In addition, thirty-day advance publication is not
required pursuant to 5 U.S.C. 553(d) or any other law. See 5 U.S.C.
553(d) (requiring thirty-day advance publication for substantive
rules).
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
rule making has been determined to be 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: (1) Used the best available techniques to
quantify costs and benefits, and has considered values such as equity,
fairness, and distributive impacts; (2) provided the public with a
meaningful opportunity to participate in the regulatory process,
including soliciting the views of those likely affected prior to
issuing a notice of proposed rule making, and provided on-line access
to the rule making docket; (3) attempted to promote coordination,
simplification, and harmonization across government agencies and
identified goals designed to promote innovation; (4) considered
approaches that reduce burdens and maintain flexibility and freedom of
choice for the public; and (5) ensured the objectivity of scientific
and technological information and processes, to the extent applicable.
E. Executive Order 13132 (Federalism): This rule making 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 rule making
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 rule making is not
a significant energy action under Executive Order 13211 because this
rule making 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 rule making
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 rule making
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 rule
making will not effect 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 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 notice 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 notice is
not expected to result in 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
[[Page 59054]]
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 rule making 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 rule making does not contain provisions which involve the use of
technical standards.
O. Paperwork Reduction Act: This rule making implements a
prioritized examination process. The primary impact on the public of
this change is that applicants will have the option to request
prioritized examination by paying appropriate fees, filing a complete
application via the Office's electronic filing system (EFS-Web) with
any filing and excess claims fees due paid on filing, and limiting
their applications to four independent claims and thirty total claims
with no multiple dependent claims.
An applicant who wishes to participate in the program must submit a
certification and request to participate in the prioritized examination
program, preferably by using Form PTO/SB/424. The Office of Management
and Budget (OMB) has determined that, under 5 CFR 1320.3(h), Form PTO/
SB/424 does not collect ``information'' within the meaning of the
Paperwork Reduction Act of 1995. Therefore, this rule making does not
impose 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 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, the final rule amending
37 CFR part 1 that was published at 76 FR 18399-18407 on April 4, 2011,
and whose effective date was delayed until further notice at 76 FR
23876 on April 29, 2011, is withdrawn, and 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 1.17 is amended by adding new paragraph (c) and revising
paragraph (i) to read as follows:
Sec. 1.17 Patent application and reexamination processing fees.
* * * * *
(c) For filing a request for prioritized examination under Sec.
1.102(e):
By a small entity (Sec. 1.27(a)).......... $2,400.00
By other than a small entity................ $4,800.00
* * * * *
(i) Processing fee for taking action under $130.00
one of the following sections which refers
to this paragraph.
Sec. 1.28(c)(3)--for processing a non-itemized fee deficiency
based on an error in small entity status.
Sec. 1.41--for supplying the name or names of the inventor or
inventors after the filing date without an oath or declaration as
prescribed by Sec. 1.63, except in provisional applications.
Sec. 1.48--for correcting inventorship, except in provisional
applications.
Sec. 1.52(d)--for processing a nonprovisional application filed
with a specification in a language other than English.
Sec. 1.53(b)(3)--to convert a provisional application filed under
Sec. 1.53(c) into a nonprovisional application under Sec. 1.53(b).
Sec. 1.55--for entry of late priority papers.
Sec. 1.71(g)(2)--for processing a belated amendment under Sec.
1.71(g).
Sec. 1.99(e)--for processing a belated submission under Sec.
1.99.
Sec. 1.102(e)--for requesting prioritized examination of an
application.
Sec. 1.103(b)--for requesting limited suspension of action,
continued prosecution application for a design patent (Sec. 1.53(d)).
Sec. 1.103(c)--for requesting limited suspension of action,
request for continued examination (Sec. 1.114).
Sec. 1.103(d)--for requesting deferred examination of an
application.
Sec. 1.217--for processing a redacted copy of a paper submitted in
the file of an application in which a redacted copy was submitted for
the patent application publication.
Sec. 1.221--for requesting voluntary publication or republication
of an application.
Sec. 1.291(c)(5)--for processing a second or subsequent protest by
the same real party in interest.
Sec. 1.497(d)--for filing an oath or declaration pursuant to 35
U.S.C. 371(c)(4) naming an inventive entity different from the
inventive entity set forth in the international stage.
Sec. 3.81--for a patent to issue to assignee, assignment submitted
after payment of the issue fee.
* * * * *
0
3. Section 1.102 is amended by revising paragraph (a) and adding
paragraph (e) to read as follows:
Sec. 1.102 Advancement of examination.
(a) Applications will not be advanced out of turn for examination
or for further action except as provided by this part, or upon order of
the Director to expedite the business of the Office, or upon filing of
a request under paragraph (b) or (e) of this section or upon filing a
petition or request under paragraph (c) or (d) of this section with a
showing which, in the opinion of the Director, will justify so
advancing it.
* * * * *
(e) A request for prioritized examination under this paragraph may
be filed only with an original utility or plant nonprovisional
application under 35 U.S.C. 111(a) that is complete as defined by Sec.
1.51(b), with any fees due under Sec. 1.16 paid on filing. If the
application is a utility application, it must be filed via the Office's
electronic filing system (EFS-Web). A request for prioritized
examination under this
[[Page 59055]]
paragraph must be present upon filing and 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), and the publication fee set forth in
Sec. 1.18(d). An application for which prioritized examination has
been requested may not contain or be amended to contain more than four
independent claims, more than thirty total claims, or any multiple
dependent claim. Prioritized examination under this paragraph will not
be accorded to international applications, design applications, reissue
applications, provisional applications, or reexamination proceedings.
Dated: September 19, 2011.
David J. Kappos,
Under Secretary of Commerce for Intellectual Property and Director of
the United States Patent and Trademark Office.
[FR Doc. 2011-24467 Filed 9-22-11; 8:45 am]
BILLING CODE 3510-16-P
