Changes To Implement the Prioritized Examination for Requests for Continued Examination, 78566-78569 [2011-32434]

Download as PDF srobinson on DSK4SPTVN1PROD with RULES 78566 Federal Register / Vol. 76, No. 243 / Monday, December 19, 2011 / Rules and Regulations requirement of section 6038D and the regulations continues for more than 90 days after the day on which the Commissioner or his delegate mails a notice of the failure to the specified person required to file the Form 8938, the specified person is required to pay an additional penalty of $10,000 for each 30-day period (or fraction thereof) during which the failure continues after the 90-day period has expired. The additional penalty imposed by section 6038D(d)(2) and this paragraph (c) is limited to a maximum of $50,000 for each such failure. (d) Presumption of aggregate value. For the purpose of assessing penalties imposed under section 6038D(d), if the Commissioner or his delegate determines that a specified person has an interest in one or more specified foreign financial assets and the specified person does not provide sufficient information to demonstrate the aggregate value of the assets upon request by the Commissioner or his delegate, then the aggregate value of the assets is treated as being in excess of the applicable reporting threshold set forth in § 1.6038D–2T(a). (e) Reasonable cause exception—(1) In general. If the failure to report the information required in section 6038D(c) and § 1.6038D–4T is shown to be due to reasonable cause and not due to willful neglect, no penalty will be imposed under section 6038D(d) or this section. (2) Affirmative showing required. In order to show that the failure to disclose is due to reasonable cause and not due to willful neglect for purposes of section 6038D(g) and this section, the specified person must make an affirmative showing of all the facts alleged as reasonable cause for the failure to disclose. (3) Facts and circumstances taken into account. The determination of whether a failure to disclose a specified foreign financial asset on Form 8938 was due to reasonable cause and not due to willful neglect is made on a caseby-case basis, taking into account all pertinent facts and circumstances. The fact that a foreign jurisdiction would impose a civil or criminal penalty on the specified person (or any other person) for disclosing the required information is not reasonable cause. (f) Penalties for underpayments attributable to undisclosed foreign financial assets—(1) Accuracy-related penalty. For application of the accuracyrelated penalty in the case of any portion of an underpayment attributable to any undisclosed foreign financial asset understatement, see section 6662(j). VerDate Mar<15>2010 18:16 Dec 16, 2011 Jkt 226001 (2) Criminal penalties. In addition to other penalties, failure to comply with the reporting requirements of section 6038D and the regulations, or any underpayment related to such failure, may result in criminal penalties under sections 7201, 7203, 7206, et seq., or other provisions of Federal law. (g) Effective/applicability dates. This section applies to taxable years ending after December 19, 2011. Taxpayers may elect to apply the rules of this section to taxable years ending prior to December 19, 2011. (h) Expiration date. The applicability of this section expires December 12, 2014. Steven T. Miller, Deputy Commissioner for Services and Enforcement. Approved: November 30, 2011. Emily S. McMahon, Acting Assistant Secretary of the Treasury (Tax Policy). [FR Doc. 2011–32263 Filed 12–14–11; 4:15 pm] BILLING CODE 4830–01–P DEPARTMENT OF COMMERCE Patent and Trademark Office 37 CFR Part 1 [Docket No. PTO–P–2011–0070] RIN 0651–AC65 Changes To Implement the Prioritized Examination for Requests for Continued Examination United States Patent and Trademark Office, Commerce. ACTION: Final rule. AGENCY: The Leahy-Smith America Invents Act includes provisions for prioritized examination of patent applications. The United States Patent and Trademark Office (Office) implemented the Leahy-Smith America Invents Act prioritized examination provision following the prioritized examination track (Track I) of the proposed 3-Track examination process in a previous final rule. The final rule was made applicable to newly filed patent applications. In order to provide patent applicants with the flexibility to accelerate processing of their applications in which a request for continued examination has been filed, the Office is now permitting applicants to request prioritized examination for applications after the filing of a request for continued examination. DATES: Effective Date: The changes in this final rule are effective on December 19, 2011. SUMMARY: PO 00000 Frm 00102 Fmt 4700 Sfmt 4700 Applicability Date: The changes in this final rule are applicable to any patent application in which a proper request for continued examination has been filed before, on, or after December 19, 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, Kathleen Kahler Fonda or Michael T. Cygan. SUPPLEMENTARY INFORMATION: Under the procedure set forth in this final rule, once the application is accorded special status after the filing of a request for continued examination it will be placed on the examiner’s special docket throughout its entire course of continued prosecution before the examiner until a final disposition is reached in the application. The goal for handling applications under prioritized examination for request for continued examination is to, on average, provide a final disposition within twelve months of prioritized status being granted. For purposes of the twelve-month goal, ‘‘final disposition’’ can be any of the following: (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 subsequent 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 subsequent request for continued examination. 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 E:\FR\FM\19DER1.SGM 19DER1 srobinson on DSK4SPTVN1PROD with RULES Federal Register / Vol. 76, No. 243 / Monday, December 19, 2011 / Rules and Regulations 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 37 CFR 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 37 CFR 1.312. The requirements for requesting prioritized examination after the filing of a request for continued examination are summarized below. A patent application may be granted prioritized examination status under the following conditions: (1) The request for continued examination must be in an original utility or plant nonprovisional application filed under 35 U.S.C. 111(a) or that has entered the national stage under 35 U.S.C. 371. (2) The request for prioritized examination must be filed via the Office’s electronic filing system (EFS– Web), except in a plant application for which the request must be filed in paper (MPEP 502.05(II)(B)) prior to the mailing of a first Office action after the filing of the request for continued examination under 37 CFR 1.114. The request for prioritized examination may either be filed concurrently with, or subsequently to, the filing of a request for continued examination. (3) At the time of the request for prioritized examination, the application must contain or be amended to 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. 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 accompanied by the prioritized examination fee set forth in 37 CFR 1.17(c), the processing fee set VerDate Mar<15>2010 18:16 Dec 16, 2011 Jkt 226001 forth in 37 CFR 1.17(i), and if not previously paid, 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 Leahy-Smith America Invents Act currently limits the number of requests for prioritized examination under § 1.102(e) that the Office may accept to a maximum of 10,000 per fiscal year. This includes both requests for prioritized examination for initial examination (37 CFR 1.102(e)(1)) and requests for prioritized examination after filing of a request for continued examination (37 CFR 1.102(e)(2)). Discussion of Specific Rules Title 37 of the Code of Federal Regulations, Part 1, is proposed to be amended as follows: Section 1.102: Section 1.102(e) is revised to set out the general requirements for prioritized examination and the specific requirements for prioritized examination for initial examination (Track I) (37 CFR 1.102(e)(1)) and for prioritized examination after the filing of a request for continued examination (37 CFR 1.102(e)(2)). Section 1.102(e) provides that a request for prioritized examination under § 1.102(e) must comply with the requirements of § 1.102(e) and 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). Section 1.102(e) also provides that 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. Section 1.102(e) also provides that prioritized examination under this paragraph will not be accorded to international applications that have not entered the national stage under 35 U.S.C. 371, design applications, reissue applications, provisional applications, or reexamination proceedings. Finally, § 1.102(e) provides that a request for prioritized examination must also comply with the requirements of § 1.102(e)(1) or § 1.102(e)(2). Section 1.102(e)(1) provides that a request for prioritized examination may be filed 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). The request for prioritized PO 00000 Frm 00103 Fmt 4700 Sfmt 4700 78567 examination in compliance with § 1.102(e)(1) must be present upon filing. The discussion in the final rule to implement prioritized examination for initial examination (Track I) (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 (Sept. 23, 2011)) remains applicable to request for prioritized examination under § 1.102(e)(1). Section 1.102(e)(2) provides that a request for prioritized examination may be filed with or after a request for continued examination in compliance with § 1.114. Only a single such request for prioritized examination under § 1.102(e)(2) may be granted in an application. If the application is a utility application, the request must be filed via the Office’s electronic filing system (EFS–Web). The request must be filed before the mailing of the first Office action after the filing of the request for continued examination under § 1.114. The request must be accompanied by the prioritized examination fee set forth in § 1.17(c), the processing fee set forth in § 1.17(i), and if not already paid, the publication fee set forth in § 1.18(d). Rule Making Considerations A. Administrative Procedure Act This final rule implements prioritized examination for applications after the filing of a request for continued examination under 35 U.S.C. 132(b) and 37 CFR 1.114. 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 E:\FR\FM\19DER1.SGM 19DER1 78568 Federal Register / Vol. 76, No. 243 / Monday, December 19, 2011 / Rules and Regulations agency’’) (quoting Batterton v. Marshall, 648 F.2d 694, 707 (DC Cir. 1980)). Specifying the procedures for according prioritized examination for an application in which a request for continued examination has been made concerns only the manner in which applicants interact with the Office and does not change the substantive rights (condition of patentability) of any patent applicant. See Bachow Communications, Inc. v. F.C.C., 237 F.3d 683 (DC Cir. 2001) (rule permitting or suspending amendments to applications was procedural). 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)). 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. (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 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) 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 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 srobinson on DSK4SPTVN1PROD with RULES C. Executive Order 12866 (Regulatory Planning and Review) This rule making has been determined to be not significant for purposes of Executive Order 12866 (Sept. 30, 1993). 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). 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. D. Executive Order 13563 (Improving Regulation and Regulatory Review) The Office has complied with Executive Order 13563 (Jan. 18, 2011). 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 online access to the rule making docket; I. Executive Order 13045 (Protection of Children) N. National Technology Transfer and Advancement Act 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). 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. VerDate Mar<15>2010 18:16 Dec 16, 2011 Jkt 226001 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 PO 00000 Frm 00104 Fmt 4700 Sfmt 4700 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 request via the Office’s electronic filing system (EFS–Web), and limiting their applications to four independent claims and thirty total E:\FR\FM\19DER1.SGM 19DER1 Federal Register / Vol. 76, No. 243 / Monday, December 19, 2011 / Rules and Regulations 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 record keeping requirements, Small Businesses. For the reasons set forth in the preamble, 37 CFR part 1 is amended as follows: or reexamination proceedings. A request for prioritized examination must also comply with the requirements of paragraph (e)(1) or paragraph (e)(2) of this section. (1) A request for prioritized examination may be filed 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. The request for prioritized examination in compliance with this paragraph must be present upon filing of the application. (2) A request for prioritized examination may be filed with or after a request for continued examination in compliance with § 1.114. If the application is a utility application, the request must be filed via the Office’s electronic filing system. The request must be filed before the mailing of the first Office action after the filing of the request for continued examination under § 1.114. Only a single such request for prioritized examination under this paragraph may be granted in an application. Dated: December 7, 2011. David J. Kappos, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office. [FR Doc. 2011–32434 Filed 12–16–11; 8:45 am] PART 1—RULES OF PRACTICE IN PATENT CASES BILLING CODE 3510–16–P 1. The authority citation for 37 CFR Part 1 continues to read as follows: ■ DEPARTMENT OF VETERANS AFFAIRS Authority: 35 U.S.C. 2(b)(2). 2. Section 1.102 is amended by revising paragraph (e) to read as follows: ■ § 1.102 Advancement of examination. srobinson on DSK4SPTVN1PROD with RULES * * * * * (e) A request for prioritized examination under this paragraph must comply with the requirements of this paragraph and be accompanied by the prioritized examination fee set forth in § 1.17(c), the processing fee set forth in § 1.17(i), and if not already paid, 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 that have not entered the national stage under 35 U.S.C. 371, design applications, reissue applications, provisional applications, VerDate Mar<15>2010 18:16 Dec 16, 2011 Jkt 226001 38 CFR Part 17 RIN 2900–AO05 Medical Benefits for Newborn Children of Certain Woman Veterans Department of Veterans Affairs. Final rule. AGENCY: ACTION: The Department of Veterans Affairs (VA) is amending its regulation concerning the medical benefits package offered to veterans enrolled in the VA health care system. This rulemaking updates the regulation to conform to amendments made by the enactment of the Caregivers and Veteran Omnibus Health Services Act of 2010, which authorized VA to provide certain health care services to a newborn child of a woman veteran who is receiving maternity care furnished by VA. Health services for newborn care will be authorized for no more than seven days after the birth of the child if the veteran SUMMARY: PO 00000 Frm 00105 Fmt 4700 Sfmt 4700 78569 delivered the child in a VA facility or in another facility pursuant to a VA contract for maternity services. DATES: Effective Date: This final rule is effective December 19, 2011. Applicability Date: This regulation is applicable to medical care provided on or after May 5, 2010. FOR FURTHER INFORMATION CONTACT: Holley Niethammer, Veterans Health Administration, 3773 Cherry Creek North Drive, Denver, Colorado 80209 (303) 370–5062. (This is not a toll-free number.) SUPPLEMENTARY INFORMATION: On May 5, 2010, the President signed into law the Caregivers and Veterans Omnibus Health Services Act of 2010, Public Law 111–163. Section 206 of the public law, codified at 38 U.S.C. 1786, authorizes VA to ‘‘furnish health care services * * * to a newborn child of a woman veteran who is receiving maternity care furnished by [VA] for not more than seven days after the birth of the child if the veteran delivered the child in—(1) a [VA] facility * * *; or (2) another facility pursuant to a [VA] contract for services relating to such delivery.’’ We note that the statutory authority does not extend to newborn children of female partners or relatives of veterans who are not veterans receiving maternity care from VA. In other words, this benefit is exclusive to newborn children of female veterans who themselves have been receiving maternity care from VA prior to the birth of the child and who otherwise meet the requirements of the law. We recognize that in some cases a newborn child of a woman veteran may be placed for adoption at the time of birth or shortly thereafter, or may be abandoned. Notwithstanding that the birth mother may not be willing or able to raise the child following birth, VA will provide newborn care for the date of birth and the first seven calendar days of life to any child delivered by a woman veteran who is receiving care under § 17.38(a)(1)(xiii). This is the broadest reasonable interpretation of the statutory authorization to provide care to the newborn child of a woman veteran, because the statute does not clearly require that the woman veteran be, or continue to be, the child’s legal parent or guardian after birth. We interpret section 1786 to mean that newborn care is one of the health care services authorized by Congress in 38 U.S.C. 1710. This rulemaking implements this interpretation of section 1786. We note that we have been providing this care since the effective date of the statute, May 5, 2010. E:\FR\FM\19DER1.SGM 19DER1

Agencies

[Federal Register Volume 76, Number 243 (Monday, December 19, 2011)]
[Rules and Regulations]
[Pages 78566-78569]
From the Federal Register Online via the Government Printing Office [www.gpo.gov]
[FR Doc No: 2011-32434]


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DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Part 1

[Docket No. PTO-P-2011-0070]
RIN 0651-AC65


Changes To Implement the Prioritized Examination for Requests for 
Continued Examination

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Final rule.

-----------------------------------------------------------------------

SUMMARY: The Leahy-Smith America Invents Act includes provisions for 
prioritized examination of patent applications. The United States 
Patent and Trademark Office (Office) implemented the Leahy-Smith 
America Invents Act prioritized examination provision following the 
prioritized examination track (Track I) of the proposed 3-Track 
examination process in a previous final rule. The final rule was made 
applicable to newly filed patent applications. In order to provide 
patent applicants with the flexibility to accelerate processing of 
their applications in which a request for continued examination has 
been filed, the Office is now permitting applicants to request 
prioritized examination for applications after the filing of a request 
for continued examination.

DATES: Effective Date: The changes in this final rule are effective on 
December 19, 2011.
    Applicability Date: The changes in this final rule are applicable 
to any patent application in which a proper request for continued 
examination has been filed before, on, or after December 19, 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, Kathleen Kahler Fonda or Michael T. 
Cygan.

SUPPLEMENTARY INFORMATION: Under the procedure set forth in this final 
rule, once the application is accorded special status after the filing 
of a request for continued examination it will be placed on the 
examiner's special docket throughout its entire course of continued 
prosecution before the examiner until a final disposition is reached in 
the application. The goal for handling applications under prioritized 
examination for request for continued examination is to, on average, 
provide a final disposition within twelve months of prioritized status 
being granted. For purposes of the twelve-month goal, ``final 
disposition'' can be any of the following: (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 subsequent 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 subsequent request for continued examination.
    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

[[Page 78567]]

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 37 CFR 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 37 CFR 1.312.
    The requirements for requesting prioritized examination after the 
filing of a request for continued examination are summarized below. A 
patent application may be granted prioritized examination status under 
the following conditions:
    (1) The request for continued examination must be in an original 
utility or plant nonprovisional application filed under 35 U.S.C. 
111(a) or that has entered the national stage under 35 U.S.C. 371.
    (2) The request for prioritized examination must be filed via the 
Office's electronic filing system (EFS-Web), except in a plant 
application for which the request must be filed in paper (MPEP 
502.05(II)(B)) prior to the mailing of a first Office action after the 
filing of the request for continued examination under 37 CFR 1.114. The 
request for prioritized examination may either be filed concurrently 
with, or subsequently to, the filing of a request for continued 
examination.
    (3) At the time of the request for prioritized examination, the 
application must contain or be amended to 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. 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 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 if not previously paid, 
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 Leahy-Smith America Invents Act currently limits the number 
of requests for prioritized examination under Sec.  1.102(e) that the 
Office may accept to a maximum of 10,000 per fiscal year. This includes 
both requests for prioritized examination for initial examination (37 
CFR 1.102(e)(1)) and requests for prioritized examination after filing 
of a request for continued examination (37 CFR 1.102(e)(2)).

Discussion of Specific Rules

    Title 37 of the Code of Federal Regulations, Part 1, is proposed to 
be amended as follows:
    Section 1.102: Section 1.102(e) is revised to set out the general 
requirements for prioritized examination and the specific requirements 
for prioritized examination for initial examination (Track I) (37 CFR 
1.102(e)(1)) and for prioritized examination after the filing of a 
request for continued examination (37 CFR 1.102(e)(2)).
    Section 1.102(e) provides that a request for prioritized 
examination under Sec.  1.102(e) must comply with the requirements of 
Sec.  1.102(e) and 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). Section 
1.102(e) also provides that 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. Section 1.102(e) also provides that 
prioritized examination under this paragraph will not be accorded to 
international applications that have not entered the national stage 
under 35 U.S.C. 371, design applications, reissue applications, 
provisional applications, or reexamination proceedings. Finally, Sec.  
1.102(e) provides that a request for prioritized examination must also 
comply with the requirements of Sec.  1.102(e)(1) or Sec.  1.102(e)(2).
    Section 1.102(e)(1) provides that a request for prioritized 
examination may be filed 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). The request for 
prioritized examination in compliance with Sec.  1.102(e)(1) must be 
present upon filing. The discussion in the final rule to implement 
prioritized examination for initial examination (Track I) (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 (Sept. 23, 2011)) remains applicable to 
request for prioritized examination under Sec.  1.102(e)(1).
    Section 1.102(e)(2) provides that a request for prioritized 
examination may be filed with or after a request for continued 
examination in compliance with Sec.  1.114. Only a single such request 
for prioritized examination under Sec.  1.102(e)(2) may be granted in 
an application. If the application is a utility application, the 
request must be filed via the Office's electronic filing system (EFS-
Web). The request must be filed before the mailing of the first Office 
action after the filing of the request for continued examination under 
Sec.  1.114. The request 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 if not already paid, the publication fee 
set forth in Sec.  1.18(d).

Rule Making Considerations

A. Administrative Procedure Act

    This final rule implements prioritized examination for applications 
after the filing of a request for continued examination under 35 U.S.C. 
132(b) and 37 CFR 1.114. 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

[[Page 78568]]

agency'') (quoting Batterton v. Marshall, 648 F.2d 694, 707 (DC Cir. 
1980)). Specifying the procedures for according prioritized examination 
for an application in which a request for continued examination has 
been made concerns only the manner in which applicants interact with 
the Office and does not change the substantive rights (condition of 
patentability) of any patent applicant. See Bachow Communications, Inc. 
v. F.C.C., 237 F.3d 683 (DC Cir. 2001) (rule permitting or suspending 
amendments to applications was procedural).
    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)). 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 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 (Jan. 18, 2011). 
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 rule making 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 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 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 request via the Office's electronic filing 
system (EFS-Web), and limiting their applications to four independent 
claims and thirty total

[[Page 78569]]

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 record keeping 
requirements, Small Businesses.

    For the reasons set forth in the preamble, 37 CFR part 1 is amended 
as follows:

PART 1--RULES OF PRACTICE IN PATENT CASES

0
1. The authority citation for 37 CFR Part 1 continues to read as 
follows:

    Authority:  35 U.S.C. 2(b)(2).


0
2. Section 1.102 is amended by revising paragraph (e) to read as 
follows:


Sec.  1.102  Advancement of examination.

* * * * *
    (e) A request for prioritized examination under this paragraph must 
comply with the requirements of this paragraph and 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 if not already paid, 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 
that have not entered the national stage under 35 U.S.C. 371, design 
applications, reissue applications, provisional applications, or 
reexamination proceedings. A request for prioritized examination must 
also comply with the requirements of paragraph (e)(1) or paragraph 
(e)(2) of this section.
    (1) A request for prioritized examination may be filed 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. The request for prioritized examination in compliance with this 
paragraph must be present upon filing of the application.
    (2) A request for prioritized examination may be filed with or 
after a request for continued examination in compliance with Sec.  
1.114. If the application is a utility application, the request must be 
filed via the Office's electronic filing system. The request must be 
filed before the mailing of the first Office action after the filing of 
the request for continued examination under Sec.  1.114. Only a single 
such request for prioritized examination under this paragraph may be 
granted in an application.

    Dated: December 7, 2011.
David J. Kappos,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 2011-32434 Filed 12-16-11; 8:45 am]
BILLING CODE 3510-16-P