Changes to Permit Delayed Submission of Certain Requirements for Prioritized Examination, 12386-12390 [2014-04806]
Download as PDF
<![CDATA[
sroberts on DSK5SPTVN1PROD with RULES
12386
Federal Register / Vol. 79, No. 43 / Wednesday, March 5, 2014 / Rules and Regulations
submit a report containing the rule and
other required information to the United
States Senate, the United States House
of Representatives, and the Comptroller
General of the Government
Accountability Office. The changes in
this interim rule are not expected to
result in an annual effect on the
economy of 100 million dollars or more,
a major increase in costs or prices, or
significant adverse effects on
competition, employment, investment,
productivity, innovation, or the ability
of United States-based enterprises to
compete with foreign-based enterprises
in domestic and export markets.
Therefore, this interim rule is not a
‘‘major rule’’ as defined in 5 U.S.C.
804(2).
L. Unfunded Mandates Reform Act of
1995: The changes set forth in this
notice do not involve a Federal
intergovernmental mandate that will
result in the expenditure by State, local,
and tribal governments, in the aggregate,
of 100 million dollars (as adjusted) or
more in any one year, or a Federal
private sector mandate that will result
in the expenditure by the private sector
of 100 million dollars (as adjusted) or
more in any one year, and will not
significantly or uniquely affect small
governments. Therefore, no actions are
necessary under the provisions of the
Unfunded Mandates Reform Act of
1995. See 2 U.S.C. 1501 et seq.
M. National Environmental Policy
Act: This rulemaking will not have any
effect on the quality of the environment
and is thus categorically excluded from
review under the National
Environmental Policy Act of 1969. See
42 U.S.C. 4321 et seq.
N. National Technology Transfer and
Advancement Act: The requirements of
section 12(d) of the National
Technology Transfer and Advancement
Act of 1995 (15 U.S.C. 272 note) are not
applicable because this rulemaking does
not contain provisions which involve
the use of technical standards.
O. Paperwork Reduction Act: The
Paperwork Reduction Act of 1995 (44
U.S.C. 3501 et seq.) requires that the
Office consider the impact of paperwork
and other information collection
burdens imposed on the public. This
interim rule involves information
collection requirements which are
subject to review by the Office of
Management and Budget (OMB) under
the Paperwork Reduction Act of 1995
(44 U.S.C. 3501–3549). This rulemaking
does not impose any additional
collection requirements under the
Paperwork Reduction Act which are
subject to further review by OMB.
Notwithstanding any other provision
of law, no person is required to respond
VerDate Mar<15>2010
15:46 Mar 04, 2014
Jkt 232001
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, 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 1.53 is amended by revising
paragraph (d)(1)(ii) to read as follows:
■
§ 1.53 Application number, filing date, and
completion of application.
*
*
*
*
*
(d) * * *
(1) * * *
(ii) The prior nonprovisional
application is a design application that
is complete as defined by § 1.51(b),
except for the inventor’s oath or
declaration if the application is filed on
or after September 16, 2012, and the
prior nonprovisional application
contains an application data sheet
meeting the conditions specified in
§ 1.53(f)(3)(i).
*
*
*
*
*
Dated: February 27, 2014.
Michelle K. Lee,
Deputy Under Secretary of Commerce for
Intellectual Property and Deputy Director of
the United States Patent and Trademark
Office.
[FR Doc. 2014–04807 Filed 3–4–14; 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–2014–0003]
RIN 0651–AC93
Changes to Permit Delayed
Submission of Certain Requirements
for Prioritized Examination
United States Patent and
Trademark Office, Commerce.
AGENCY:
PO 00000
Frm 00034
Fmt 4700
Sfmt 4700
ACTION:
Interim rule.
The Leahy-Smith America
Invents Act includes provisions for
prioritized examination of patent
applications (also referred to as ‘‘Track
I’’), which have been implemented by
the United States Patent and Trademark
Office (Office) in previous rulemakings.
This interim rule simplifies the Track I
prioritized examination practice to
reduce the number of requests for
prioritized examination that must be
dismissed. In order to enable rapid
processing and examination of those
applications, the previous rulemakings
provided that an application having a
request for Track I prioritized
examination requires, upon filing of the
application, an inventor’s oath or
declaration and all required fees, and
contains no more than four independent
claims, thirty total claims, and no
multiple dependent claims.
Accordingly, any request for Track I
prioritized examination not meeting all
of the requirements on filing must be
dismissed. The Office has found that
many such dismissals are due to the
application as filed not including a
properly executed inventor’s oath or
declaration, not including the excess
claims fees or application size fee due,
or improperly including a multiple
dependent claim or claims in excess of
the permitted number. The Office has
determined that the time periods for
meeting those requirements when filing
a request for Track I prioritized
examination could be expanded while
maintaining the Office’s ability to timely
examine the patent application.
DATES: Effective Date: March 5, 2014.
Applicability Date: The changes to 37
CFR 1.102 apply only to applications
filed under 35 U.S.C. 111(a) on or after
September 16, 2012, in which a first
action has not been mailed.
Comment Deadline Date: Written
comments must be received on or before
May 5, 2014.
ADDRESSES: Comments should be sent
by electronic mail message over the
Internet addressed to: AC93.comments@
uspto.gov. Comments also may be
submitted by postal mail addressed to:
Mail Stop Comments—Patents,
Commissioner for Patents, P.O. Box
1450, Alexandria, VA 22313–1450,
marked to the attention of John R.
Cottingham, Director, Office of
Petitions, Office of the Deputy
Commissioner for Patent Examination
Policy.
Comments further may be sent by
electronic mail message over the
Internet via the Federal eRulemaking
Portal. See the Federal eRulemaking
Portal Web site (https://
SUMMARY:
E:\FR\FM\05MRR1.SGM
05MRR1
sroberts on DSK5SPTVN1PROD with RULES
Federal Register / Vol. 79, No. 43 / Wednesday, March 5, 2014 / Rules and Regulations
www.regulations.gov) for additional
instructions on providing comments via
the Federal eRulemaking Portal.
Although comments may be
submitted by postal mail, the Office
prefers to receive comments by
electronic mail message over the
Internet because sharing comments with
the public is more easily accomplished.
Electronic comments are preferred to be
submitted in plain text, but also may be
submitted in ADOBE® portable
document format or MICROSOFT
WORD® format. Comments not
submitted electronically should be
submitted on paper in a format that
facilitates convenient digital scanning
into ADOBE® portable document
format.
The comments will be available for
viewing via the Office’s Internet Web
site (https://www.uspto.gov). Because
comments will be made available for
public inspection, information that the
submitter does not desire to make
public, such as an address or phone
number, should not be included in the
comments.
FOR FURTHER INFORMATION CONTACT: John
R. Cottingham, Director, Office of
Petitions, at (571) 272–7079, or Michael
T. Cygan, Senior Legal Advisor, Office
of Patent Legal Administration, at (571)
272–7700.
SUPPLEMENTARY INFORMATION:
Executive Summary: Purpose: This
interim rule simplifies prioritized
examination (‘‘Track I’’) practice to
reduce the number of requests for
prioritized examination that must be
dismissed and to improve access to
prioritized examination.
Summary of Major Provisions: The
prioritized examination provisions (37
CFR 1.102(e)) currently require that: (1)
The inventor’s oath or declaration be
present on filing, (2) all fees be paid
upon filing, and (3) the application as
filed contain no more than four
independent claims, no more than thirty
total claims, and no multiple dependent
claims. This interim rule revises 37 CFR
1.102(e) to provide that: (1) The filing of
an inventor’s oath or declaration may be
postponed in accordance with 37 CFR
1.53(f)(3) if an application data sheet
meeting the conditions specified in 37
CFR 1.53(f)(3)(i) is present upon filing;
(2) if an application contains more than
four independent claims, more than
thirty total claims, or any multiple
dependent claim, the applicant will be
given a non-extendable one-month
period to file an amendment to cancel
any independent claims in excess of
four, any total claims in excess of thirty,
and any multiple dependent claim; and
(3) any excess claims fees due under 37
VerDate Mar<15>2010
15:46 Mar 04, 2014
Jkt 232001
CFR 1.16(h), (i), or (j) and any
application size fee due under 37 CFR
1.16(s) is not required to be paid on
filing.
Costs and Benefits: This rulemaking is
not economically significant under
Executive Order 12866 (Sept. 30, 1993).
Background: Section 11(h) of the
Leahy-Smith America Invents Act
provides for prioritized examination of
an application. See Public Law 112–29,
125 Stat. 283, 324 (2011). Section 11(h)
of the Leahy-Smith America Invents Act
also provides that the Office may by
regulation prescribe conditions for
acceptance of a request for prioritized
examination. See id.
The Office implemented the LeahySmith America Invents Act prioritized
examination provision for applications
upon filing, referred to as ‘‘Track I,’’ in
a final rule published on September 23,
2011. See Changes to Implement the
Prioritized Examination Track (Track I)
of the Enhanced Examination Timing
Control Procedures under the LeahySmith America Invents Act, 76 FR
59050 (September 23, 2011). The Office
subsequently implemented prioritized
examination for pending applications
after the filing of a proper request for
continued examination under 35 U.S.C.
132(b) and 37 CFR 1.114. See Changes
to Implement the Prioritized
Examination for Requests for Continued
Examination, 76 FR 78566 (December
19, 2011).
The rule implementing prioritized
examination, 37 CFR 1.102(e), sets forth
the requirements that must be met to
permit a request for prioritized
examination to be granted. These
requirements were selected after public
discussion with, and feedback from,
patent practitioners and stakeholders.
These requirements were selected in
such a manner as to permit the Office
to examine applications undergoing
prioritized examination in a timely
manner. In furtherance of timely
examination, the Office required that
requests for Track I prioritized
examination conform to all of the
requirements listed in 37 CFR
1.102(e)(1) as of the filing date of the
application.
Upon review of the implementation of
the Track I program, the Office has
found that an unexpected number of
requests for prioritized examination are
being dismissed for failure to meet the
requirements of 37 CFR 1.102(e) upon
filing. In order to improve access to
prioritized examination, the Office has
reevaluated the necessity for each
requirement to be met upon filing. The
Office has determined that permitting
certain requirements to be met after the
filing date of the application would
PO 00000
Frm 00035
Fmt 4700
Sfmt 4700
12387
avoid dismissal of bona fide attempts to
request Track I prioritized examination,
while resulting in only minimal delay in
the processing of the Track I request and
the subsequent examination.
Under the procedure set forth in this
interim rule, the requirements for
prioritized examination are amended to
permit an applicant to postpone
submission of an inventor’s oath and
declaration after the filing date of the
application, so long as the application
as filed includes an executed
application data sheet meeting the
conditions specified in 37 CFR
1.53(f)(3)(i). Additionally, where a
request for prioritized examination is
received for an application having more
than four independent claims, more
than thirty total claims, or any multiple
dependent claim, the Office will notify
the applicant and provide a nonextendable period of one month in
which applicant may cancel or amend
the claims accordingly. If applicant
provides the required claim amendment
or cancellation within that period, the
Track I request will be considered again.
If the applicant fails to place the
application in conformance with the
above-listed claim requirements within
that period, no further corrective period
will be given, and the Track I request
will be dismissed.
Under the procedure set forth in this
interim rule, any excess claims fees due
under 37 CFR 1.16(h), (i), or (j) and any
application size fee due under 37 CFR
1.16(s) is not required to be paid on
filing. An application in which excess
claims fees or the application size fee
are outstanding will be treated under
the provisions of 37 CFR 1.53(f)(4),
which require that those fees be paid
prior to the expiration of the time period
set for reply by the Office in any notice
of fee deficiency.
Discussion of Specific Rules
The following is a discussion of the
amendments to Title 37 of the Code of
Federal Regulations, Part 1.
Section 1.102: Section 1.102(e)(1) is
revised to eliminate the requirement
that the inventor’s oath or declaration be
submitted on the filing date. An
application having a properly executed
application data sheet that meets the
requirements set forth in § 1.53(f)(3)(i)
will be eligible for prioritized
examination (provided that the
conditions of § 1.102(e) as revised in
this interim rule are met). Pursuant to
§ 1.41(b), such an application data sheet
sets the inventorship for the application,
and applicant may delay submission of
the inventor’s oath or declaration no
later than the date on which the issue
fee for the patent is paid. See Changes
E:\FR\FM\05MRR1.SGM
05MRR1
sroberts on DSK5SPTVN1PROD with RULES
12388
Federal Register / Vol. 79, No. 43 / Wednesday, March 5, 2014 / Rules and Regulations
To Implement the Inventor’s Oath or
Declaration Provisions of the LeahySmith America Invents Act, 77 FR
48776, 48779–80 (Aug. 14, 2012), and
Changes to Implement the Patent Law
Treaty, 78 FR 62367, 62376 (Oct. 21,
2013). Accordingly, § 1.102(e)(1) is
revised to provide that the application
must include a specification as
prescribed by 35 U.S.C. 112 including at
least one claim, a drawing when
necessary, and the inventor’s oath or
declaration on filing, except that the
filing of an inventor’s oath or
declaration may be postponed in
accordance with § 1.53(f)(3) if an
application data sheet meeting the
conditions specified in § 1.53(f)(3)(i) is
present upon filing.
Section 1.102(e)(1) is also revised to
eliminate the requirements that an
application include any excess claims
fees due under § 1.16(h), (i), or (j) or any
application size fee due under § 1.16(s)
on filing. An application in which
excess claims fees or the application
size fee are outstanding will be treated
under the provisions of § 1.53(f)(4),
which require that those fees be paid
prior to the expiration of the time period
set for reply by the Office in any notice
of fee deficiency in order to avoid
abandonment.
Section 1.102(e)(1) is further revised
to eliminate the requirements that an
application not contain more than four
independent claims, not contain more
than thirty total claims, and not contain
any multiple dependent claim upon
filing. Upon review of the Track I
request, the Office will provide
applicant a non-extendable one-month
period in which to submit an
amendment cancelling claims, or
removing multiple dependencies. If,
upon expiration of that one-month
period, the application still contains
more than four independent claims,
more than thirty total claims, or a
multiple dependent claim, the request
for prioritized examination will be
dismissed.
Section 1.102(e)(1) maintains the
requirement that an application for
which prioritized examination is
requested must include payment of the
basic filing fee, the search fee, and
examination fees on filing, or the
application will be ineligible for Track
I. Specifically, § 1.102(e)(1) as revised
requires that if the application is a
utility application, it must be filed via
the Office’s electronic filing system and
include the filing fee under § 1.16(a),
search fee under § 1.16(k), and
examination fee under § 1.16(o) upon
filing, and that if the application is a
plant application, it must include the
filing fee under § 1.16(c), search fee
VerDate Mar<15>2010
15:46 Mar 04, 2014
Jkt 232001
under § 1.16(m), and examination fee
under § 1.16(q) upon filing.
Section 1.102(e) also maintains the
requirement that an application for
which prioritized examination is sought
must be accompanied by the prioritized
examination fee set forth in § 1.17(c),
the processing fee set forth in
§ 1.17(i)(1), and the publication fee set
forth in § 1.18(d). The request and each
of these fees must be present on the
same day the application is filed, or the
application will be ineligible for Track
I.
This interim rule, while providing
additional time for the filing of an
inventor’s oath or declaration, for
payment of any excess claims fees or
any application size fee, and for filing
an amendment to limit an application to
four independent claims and thirty total
claims without any multiple dependent
claim, does not remove the requirement
that those items be filed within the
appropriate time period. Applicants are
reminded that any request for an
extension of time will cause an
outstanding Track I request to be
dismissed, or cause an application to
lose its Track I status if previously
conferred upon that application. See
Changes to Implement the Prioritized
Examination Track (Track I) of the
Enhanced Examination Timing Control
Procedures under the Leahy-Smith
America Invents Act, 76 FR 59050
(September 23, 2011).
To reduce delays in processing the
application, the Office recommends that
all of the requirements under
§ 1.102(e)(1) be met upon filing. An
applicant should not delay meeting a
requirement merely because an
additional time period will be supplied.
Applicants should recognize that the
twelve-month goal for final disposition
of the application is measured from the
time the Track I request is granted, not
from the filing of the application. As an
applicant is seeking Track I prioritized
examination to receive rapid
examination, any delay in meeting the
requirements for Track I merely adds
processing time onto the twelve-month
goal for final disposition of the
application.
The changes in this interim rule apply
to any application filed under 35 U.S.C.
111(a) on or after September 16, 2012,
in which a first action has not been
mailed. An applicant may have
previously submitted a Track I request
which was dismissed, but would have
been granted, or the applicant would
have been provided additional time to
meet a requirement, if the changes to the
interim rule had been in effect at the
time of the dismissal. An applicant may
file a request for reconsideration of the
PO 00000
Frm 00036
Fmt 4700
Sfmt 4700
dismissal of the previous Track I request
based upon the changes set forth in this
interim rule if: (1) The application is
still pending; (2) the application
contains, or has been amended to
contain, no more than four independent
claims, no more than thirty total claims,
and no multiple dependent claims; and
(3) a first Office action has not been
mailed in the application. Any such
petition should be directed to the Office
of Petitions.
Rulemaking Considerations
A. Administrative Procedure Act: This
interim rule revises the procedures that
apply to applications for which an
applicant has requested Track I
prioritized examination. The changes in
this interim rule do not change the
substantive criteria of patentability.
Therefore, the changes in this
rulemaking involve rules of agency
practice and procedure, and/or
interpretive rules. See JEM Broad. Co. v.
FCC, 22 F.3d 320, 326 (D.C. Cir. 1994)
(‘‘[T]he critical feature of the procedural
exception [in 5 U.S.C. 553(b)(A)] is that
it covers agency actions that do not
themselves alter the rights or interests of
parties, although [they] may alter the
manner in which the parties present
themselves or their viewpoints to the
agency’’) (quoting Batterton v. Marshall,
648 F.2d 694, 707 (D.C. Cir. 1980)); see
also Bachow Commc’ns Inc. v. F.C.C.,
237 F.3d 683, 690 (D.C. Cir. 2001) (rules
governing an application process are
procedural under the Administrative
Procedure Act); Inova Alexandria Hosp.
v. Shalala, 244 F.3d 342, 350 (4th Cir.
2001) (rules for handling appeals were
procedural where they did not change
the substantive standard for reviewing
claims).
Accordingly, prior notice and
opportunity for public comment are not
required pursuant to 5 U.S.C. 553(b) or
(c) (or any other law). See Cooper Techs.
Co. v. Dudas, 536 F.3d 1330, 1336–37
(Fed. Cir. 2008) (stating that 5 U.S.C.
553, and thus 35 U.S.C. 2(b)(2)(B), does
not require notice and comment
rulemaking for ‘‘interpretative rules,
general statements of policy, or rules of
agency organization, procedure, or
practice’’) (quoting 5 U.S.C. 553(b)(A)).
In addition, pursuant to authority at 5
U.S.C. 553(d)(1), the changes in this
interim rule may be made immediately
effective because they relieve
restrictions in the requirements for
requesting prioritized examination of an
application.
Moreover, the Office, pursuant to
authority at 5 U.S.C. 553(b)(3)(B), finds
good cause to adopt the changes in this
interim rule without prior notice and an
opportunity for public comment, as
E:\FR\FM\05MRR1.SGM
05MRR1
sroberts on DSK5SPTVN1PROD with RULES
Federal Register / Vol. 79, No. 43 / Wednesday, March 5, 2014 / Rules and Regulations
such procedures are contrary to the
public interest. Delay in the
promulgation of this interim rule to
provide prior notice and comment
procedures would cause harm to those
applicants who file a request for Track
I prioritized examination in an
application that does not contain the
inventor’s oath or declaration and to
those applicants who filed a request for
prioritized examination in an
application containing more than four
independent claims, more than thirty
total claims, or a multiple dependent
claim. Immediate implementation of the
changes in this interim rule is in the
public interest because: (1) The public
does not need time to conform its
conduct as the changes in this interim
rule do not add any additional
requirement for requesting prioritized
examination of an application; and (2)
those applicants who are currently
ineligible for prioritized examination
due to the previously stated reasons will
benefit from the changes in this interim
rule. See Nat’l. Customs Brokers &
Forwarders Ass’n v. U.S., 59 F.3d 1219,
1223–24 (Fed. Cir. 1995).
B. Regulatory Flexibility Act: As prior
notice and an opportunity for public
comment are not required pursuant to 5
U.S.C. 553, or any other law, neither a
regulatory flexibility analysis nor a
certification under the Regulatory
Flexibility Act (5 U.S.C. 601 et seq.) is
required. See 5 U.S.C. 603.
C. Executive Order 12866 (Regulatory
Planning and Review): This rulemaking
has been determined to be not
significant for purposes of Executive
Order 12866 (Sept. 30, 1993).
D. Executive Order 13563 (Improving
Regulation and Regulatory Review): The
Office has complied with Executive
Order 13563. Specifically, the Office
has, to the extent feasible and
applicable: (1) Made a reasoned
determination that the benefits justify
the costs of the rule; (2) tailored the rule
to impose the least burden on society
consistent with obtaining the regulatory
objectives; (3) selected a regulatory
approach that maximizes net benefits;
(4) specified performance objectives; (5)
identified and assessed available
alternatives; (6) involved the public in
an open exchange of information and
perspectives among experts in relevant
disciplines, affected stakeholders in the
private sector and the public as a whole,
and provided on-line access to the
rulemaking docket; (7) attempted to
promote coordination, simplification,
and harmonization across government
agencies and identified goals designed
to promote innovation; (8) considered
approaches that reduce burdens and
maintain flexibility and freedom of
VerDate Mar<15>2010
15:46 Mar 04, 2014
Jkt 232001
choice for the public; and (9) ensured
the objectivity of scientific and
technological information and
processes.
E. Executive Order 13132
(Federalism): This rulemaking does not
contain policies with federalism
implications sufficient to warrant
preparation of a Federalism Assessment
under Executive Order 13132 (Aug. 4,
1999).
F. Executive Order 13175 (Tribal
Consultation): This rulemaking will not:
(1) Have substantial direct effects on one
or more Indian tribes; (2) impose
substantial direct compliance costs on
Indian tribal governments; or (3)
preempt tribal law. Therefore, a tribal
summary impact statement is not
required under Executive Order 13175
(Nov. 6, 2000).
G. Executive Order 13211 (Energy
Effects): This rulemaking is not a
significant energy action under
Executive Order 13211 because this
rulemaking is not likely to have a
significant adverse effect on the supply,
distribution, or use of energy. Therefore,
a Statement of Energy Effects is not
required under Executive Order 13211
(May 18, 2001).
H. Executive Order 12988 (Civil
Justice Reform): This rulemaking meets
applicable standards to minimize
litigation, eliminate ambiguity, and
reduce burden as set forth in sections
3(a) and 3(b)(2) of Executive Order
12988 (Feb. 5, 1996).
I. Executive Order 13045 (Protection
of Children): This rulemaking does not
concern an environmental risk to health
or safety that may disproportionately
affect children under Executive Order
13045 (Apr. 21, 1997).
J. Executive Order 12630 (Taking of
Private Property): This rulemaking will
not affect a taking of private property or
otherwise have taking implications
under Executive Order 12630 (Mar. 15,
1988).
K. Congressional Review Act: Under
the Congressional Review Act
provisions of the Small Business
Regulatory Enforcement Fairness Act of
1996 (5 U.S.C. 801 et seq.), prior to
issuing any final rule, the United States
Patent and Trademark Office will
submit a report containing the rule and
other required information to the United
States Senate, the United States House
of Representatives, and the Comptroller
General of the Government
Accountability Office. The changes in
this interim rule are not expected to
result in an annual effect on the
economy of 100 million dollars or more,
a major increase in costs or prices, or
significant adverse effects on
competition, employment, investment,
PO 00000
Frm 00037
Fmt 4700
Sfmt 4700
12389
productivity, innovation, or the ability
of United States-based enterprises to
compete with foreign-based enterprises
in domestic and export markets.
Therefore, this interim rule is not a
‘‘major rule’’ as defined in 5 U.S.C.
804(2).
L. Unfunded Mandates Reform Act of
1995: The changes set forth in this
notice do not involve a Federal
intergovernmental mandate that will
result in the expenditure by State, local,
and tribal governments, in the aggregate,
of 100 million dollars (as adjusted) or
more in any one year, or a Federal
private sector mandate that will result
in the expenditure by the private sector
of 100 million dollars (as adjusted) or
more in any one year, and will not
significantly or uniquely affect small
governments. Therefore, no actions are
necessary under the provisions of the
Unfunded Mandates Reform Act of
1995. See 2 U.S.C. 1501 et seq.
M. National Environmental Policy
Act: This rulemaking will not have any
effect on the quality of the environment
and is thus categorically excluded from
review under the National
Environmental Policy Act of 1969. See
42 U.S.C. 4321 et seq.
N. National Technology Transfer and
Advancement Act: The requirements of
section 12(d) of the National
Technology Transfer and Advancement
Act of 1995 (15 U.S.C. 272 note) are not
applicable because this rulemaking does
not contain provisions which involve
the use of technical standards.
O. Paperwork Reduction Act: The
Paperwork Reduction Act of 1995 (44
U.S.C. 3501 et seq.) requires that the
Office consider the impact of paperwork
and other information collection
burdens imposed on the public. This
interim rule involves information
collection requirements which are
subject to review by the Office of
Management and Budget (OMB) under
the Paperwork Reduction Act of 1995
(44 U.S.C. 3501–3549). An applicant
who wishes to participate in the
prioritized examination program must
submit a certification and request to
participate in the prioritized
examination program, preferably by
using Form PTO/AIA/424. OMB has
determined that, under 5 CFR 1320.3(h),
Form PTO/AIA/424 does not collect
‘‘information’’ within the meaning of
the Paperwork Reduction Act of 1995.
This rule making does not impose any
additional collection requirements
under the Paperwork Reduction Act
which are subject to further review by
OMB.
Notwithstanding any other provision
of law, no person is required to respond
to, nor shall a person be subject to a
E:\FR\FM\05MRR1.SGM
05MRR1
12390
Federal Register / Vol. 79, No. 43 / Wednesday, March 5, 2014 / Rules and Regulations
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.
Dated: February 27, 2014.
Michelle K. Lee,
Deputy Under Secretary of Commerce for
Intellectual Property and Deputy Director of
the United States Patent and Trademark
Office.
[FR Doc. 2014–04806 Filed 3–4–14; 8:45 am]
List of Subjects in 37 CFR Part 1
BILLING CODE 3510–16–P
Administrative practice and
procedure, Courts, Freedom of
information, Inventions and patents,
Reporting and recordkeeping
requirements, Small businesses.
For the reasons set forth in the
preamble, 37 CFR part 1 is amended as
follows:
POSTAL SERVICE
39 CFR Part 121
Service Standards for Destination
Sectional Center Facility Rate Standard
Mail
PART 1—RULES OF PRACTICE IN
PATENT CASES
AGENCY:
1. The authority citation for 37 CFR
Part 1 continues to read as follows:
SUMMARY:
ACTION:
■
Authority: 35 U.S.C. 2(b)(2).
2. Section 1.102 is amended by
revising paragraph (e)(1) to read as
follows:
■
§ 1.102
Advancement of examination.
sroberts on DSK5SPTVN1PROD with RULES
*
*
*
*
*
(e) * * *
(1) A request for prioritized
examination may be filed with an
original utility or plant nonprovisional
application under 35 U.S.C. 111(a). The
application must include a specification
as prescribed by 35 U.S.C. 112 including
at least one claim, a drawing when
necessary, and the inventor’s oath or
declaration on filing, except that the
filing of an inventor’s oath or
declaration may be postponed in
accordance with § 1.53(f)(3) if an
application data sheet meeting the
conditions specified in § 1.53(f)(3)(i) is
present upon filing. If the application is
a utility application, it must be filed via
the Office’s electronic filing system and
include the filing fee under § 1.16(a),
search fee under § 1.16(k), and
examination fee under § 1.16(o) upon
filing. If the application is a plant
application, it must include the filing
fee under § 1.16(c), search fee under
§ 1.16(m), and examination fee under
§ 1.16(q) upon filing. The request for
prioritized examination in compliance
with this paragraph must be present
upon filing of the application, except
that the applicant may file an
amendment to cancel any independent
claims in excess of four, any total claims
in excess of thirty, and any multiple
dependent claim not later than one
month from a first decision on the
request for prioritized examination. This
one-month time period is not
extendable.
*
*
*
*
*
VerDate Mar<15>2010
15:46 Mar 04, 2014
Jkt 232001
Postal ServiceTM.
Final rule.
The Postal Service is revising
the service standards for Standard Mail
that is eligible for Destination Sectional
Center Facility (DSCF) rates. These
changes will allow a more balanced
distribution of DSCF Standard Mail
across delivery days.
DATES: Effective Date: April 10, 2014.
FOR FURTHER INFORMATION CONTACT:
Anthony Frost, Industry Engagement
and Outreach, at 202–268–8093; or
Prathmesh Shah, Processing and
Distribution Center Operations, at 404–
792–3195.
SUPPLEMENTARY INFORMATION:
Table of Contents
I. Introduction
II. Comments
III. Statutory Considerations
IV. Explanation of Final Rules
I. Introduction
On January 3, 2014, the Postal Service
published a proposed rule (the Proposed
Rulemaking) in the Federal Register to
solicit public comment on a proposal to
revise service standards for Standard
Mail eligible for DSCF rates.1 The
comment period for the Proposed
Rulemaking closed on February 3, 2014.
The Postal Service received 13 written
comments in response to the Proposed
Rulemaking.
After considering comments received
in response to the Proposed
1 Service Standards for Destination Sectional
Center Facility Rate Standard Mail, 79 FR 376 (Jan.
3, 2014). Concurrent with this rulemaking, on
December 27, 2013, the Postal Service submitted a
request to the Postal Regulatory Commission (PRC)
for an advisory opinion on the service changes
associated with the proposed change in service
standards for Standard Mail eligible for DSCF rates,
in accordance with 39 U.S.C. 3661(b). PRC Docket
No. N2014–1, United States Postal Service Request
for an Advisory Opinion on Changes in the Nature
of Postal Services (Dec. 27, 2013). Documents
pertaining to the Request are available at the PRC
Web site, https://www.prc.gov.
PO 00000
Frm 00038
Fmt 4700
Sfmt 4700
Rulemaking, the Postal Service has
determined to issue the proposed rule as
a final rule. As described in the
Proposed Rulemaking, the final rule
seeks to address the imbalance in the
proportion of volume with a Monday
delivery expectation under current
service standards, and the resulting
burden on resources associated with
Monday delivery operations, by
adjusting the service standards
applicable to DSCF Standard Mail
entered on designated days of the week.
The Postal Service believes that the
initiative will help improve the
efficiency of its operations, and that it
complies with all applicable statutory
requirements. This document explains
the new rule.
II. Comments
In the Proposed Rulemaking, the
Postal Service sought public comment
on proposed revisions to the service
standards for Standard Mail that is
eligible for DSCF rates. The revisions
would change the service standard (a)
from three days to four days for
Standard Mail pieces that are eligible for
a DSCF rate and that are properly
accepted before the day zero Critical
Entry Time on a Friday or Saturday, and
(b) from four days to five days for DSCF
Standard Mail properly accepted at the
SCF in San Juan, Puerto Rico and
destined to the United States Virgin
Islands, and properly accepted DSCF
Standard Mail destined to American
Samoa. The DSCF Standard Mail service
standard change is aimed at leveling out
the volume in the network, and
reducing the burdens and costs
associated with the Monday delivery of
a disproportionate amount of volume.
A. Overview
The Postal Service received 13 written
comments in response to the Proposed
Rulemaking. These responses came from
a variety of sources, including
businesses, publishers, mailer trade
associations, and others. Most of the
written comments received in response
to the Proposed Rulemaking opposed
the service standard change proposed
for Standard Mail eligible for DSCF
rates. Some commenters questioned
various aspects of the initiative but took
no position on the proposed rule.
The commenters that opposed the
DSCF Standard Mail service standard
change focused on the potential
negative impact of the service standard
change on service, and perceived flaws
in the process of developing the service
standard change. With respect to the
potential impact on service, commenters
focused primarily on the potential for
the proposed rule to reduce the
E:\FR\FM\05MRR1.SGM
05MRR1
]]>Agencies
[Federal Register Volume 79, Number 43 (Wednesday, March 5, 2014)]
[Rules and Regulations]
[Pages 12386-12390]
From the Federal Register Online via the Government Printing Office [www.gpo.gov]
[FR Doc No: 2014-04806]
-----------------------------------------------------------------------
DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
37 CFR Part 1
[Docket No.: PTO-P-2014-0003]
RIN 0651-AC93
Changes to Permit Delayed Submission of Certain Requirements for
Prioritized Examination
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Interim rule.
-----------------------------------------------------------------------
SUMMARY: The Leahy-Smith America Invents Act includes provisions for
prioritized examination of patent applications (also referred to as
``Track I''), which have been implemented by the United States Patent
and Trademark Office (Office) in previous rulemakings. This interim
rule simplifies the Track I prioritized examination practice to reduce
the number of requests for prioritized examination that must be
dismissed. In order to enable rapid processing and examination of those
applications, the previous rulemakings provided that an application
having a request for Track I prioritized examination requires, upon
filing of the application, an inventor's oath or declaration and all
required fees, and contains no more than four independent claims,
thirty total claims, and no multiple dependent claims. Accordingly, any
request for Track I prioritized examination not meeting all of the
requirements on filing must be dismissed. The Office has found that
many such dismissals are due to the application as filed not including
a properly executed inventor's oath or declaration, not including the
excess claims fees or application size fee due, or improperly including
a multiple dependent claim or claims in excess of the permitted number.
The Office has determined that the time periods for meeting those
requirements when filing a request for Track I prioritized examination
could be expanded while maintaining the Office's ability to timely
examine the patent application.
DATES: Effective Date: March 5, 2014.
Applicability Date: The changes to 37 CFR 1.102 apply only to
applications filed under 35 U.S.C. 111(a) on or after September 16,
2012, in which a first action has not been mailed.
Comment Deadline Date: Written comments must be received on or
before May 5, 2014.
ADDRESSES: Comments should be sent by electronic mail message over the
Internet addressed to: AC93.comments@uspto.gov. Comments also may be
submitted by postal mail addressed to: Mail Stop Comments--Patents,
Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450,
marked to the attention of John R. Cottingham, Director, Office of
Petitions, Office of the Deputy Commissioner for Patent Examination
Policy.
Comments further may be sent by electronic mail message over the
Internet via the Federal eRulemaking Portal. See the Federal
eRulemaking Portal Web site (https://
[[Page 12387]]
www.regulations.gov) for additional instructions on providing comments
via the Federal eRulemaking Portal.
Although comments may be submitted by postal mail, the Office
prefers to receive comments by electronic mail message over the
Internet because sharing comments with the public is more easily
accomplished. Electronic comments are preferred to be submitted in
plain text, but also may be submitted in ADOBE[supreg] portable
document format or MICROSOFT WORD[supreg] format. Comments not
submitted electronically should be submitted on paper in a format that
facilitates convenient digital scanning into ADOBE[supreg] portable
document format.
The comments will be available for viewing via the Office's
Internet Web site (https://www.uspto.gov). Because comments will be made
available for public inspection, information that the submitter does
not desire to make public, such as an address or phone number, should
not be included in the comments.
FOR FURTHER INFORMATION CONTACT: John R. Cottingham, Director, Office
of Petitions, at (571) 272-7079, or Michael T. Cygan, Senior Legal
Advisor, Office of Patent Legal Administration, at (571) 272-7700.
SUPPLEMENTARY INFORMATION:
Executive Summary: Purpose: This interim rule simplifies
prioritized examination (``Track I'') practice to reduce the number of
requests for prioritized examination that must be dismissed and to
improve access to prioritized examination.
Summary of Major Provisions: The prioritized examination provisions
(37 CFR 1.102(e)) currently require that: (1) The inventor's oath or
declaration be present on filing, (2) all fees be paid upon filing, and
(3) the application as filed contain no more than four independent
claims, no more than thirty total claims, and no multiple dependent
claims. This interim rule revises 37 CFR 1.102(e) to provide that: (1)
The filing of an inventor's oath or declaration may be postponed in
accordance with 37 CFR 1.53(f)(3) if an application data sheet meeting
the conditions specified in 37 CFR 1.53(f)(3)(i) is present upon
filing; (2) if an application contains more than four independent
claims, more than thirty total claims, or any multiple dependent claim,
the applicant will be given a non-extendable one-month period to file
an amendment to cancel any independent claims in excess of four, any
total claims in excess of thirty, and any multiple dependent claim; and
(3) any excess claims fees due under 37 CFR 1.16(h), (i), or (j) and
any application size fee due under 37 CFR 1.16(s) is not required to be
paid on filing.
Costs and Benefits: This rulemaking is not economically significant
under Executive Order 12866 (Sept. 30, 1993).
Background: Section 11(h) of the Leahy-Smith America Invents Act
provides for prioritized examination of an application. See Public Law
112-29, 125 Stat. 283, 324 (2011). Section 11(h) of the Leahy-Smith
America Invents Act also provides that the Office may by regulation
prescribe conditions for acceptance of a request for prioritized
examination. See id.
The Office implemented the Leahy-Smith America Invents Act
prioritized examination provision for applications upon filing,
referred to as ``Track I,'' in a final rule published on September 23,
2011. See Changes to Implement the Prioritized Examination Track (Track
I) of the Enhanced Examination Timing Control Procedures under the
Leahy-Smith America Invents Act, 76 FR 59050 (September 23, 2011). The
Office subsequently implemented prioritized examination for pending
applications after the filing of a proper request for continued
examination under 35 U.S.C. 132(b) and 37 CFR 1.114. See Changes to
Implement the Prioritized Examination for Requests for Continued
Examination, 76 FR 78566 (December 19, 2011).
The rule implementing prioritized examination, 37 CFR 1.102(e),
sets forth the requirements that must be met to permit a request for
prioritized examination to be granted. These requirements were selected
after public discussion with, and feedback from, patent practitioners
and stakeholders. These requirements were selected in such a manner as
to permit the Office to examine applications undergoing prioritized
examination in a timely manner. In furtherance of timely examination,
the Office required that requests for Track I prioritized examination
conform to all of the requirements listed in 37 CFR 1.102(e)(1) as of
the filing date of the application.
Upon review of the implementation of the Track I program, the
Office has found that an unexpected number of requests for prioritized
examination are being dismissed for failure to meet the requirements of
37 CFR 1.102(e) upon filing. In order to improve access to prioritized
examination, the Office has reevaluated the necessity for each
requirement to be met upon filing. The Office has determined that
permitting certain requirements to be met after the filing date of the
application would avoid dismissal of bona fide attempts to request
Track I prioritized examination, while resulting in only minimal delay
in the processing of the Track I request and the subsequent
examination.
Under the procedure set forth in this interim rule, the
requirements for prioritized examination are amended to permit an
applicant to postpone submission of an inventor's oath and declaration
after the filing date of the application, so long as the application as
filed includes an executed application data sheet meeting the
conditions specified in 37 CFR 1.53(f)(3)(i). Additionally, where a
request for prioritized examination is received for an application
having more than four independent claims, more than thirty total
claims, or any multiple dependent claim, the Office will notify the
applicant and provide a non-extendable period of one month in which
applicant may cancel or amend the claims accordingly. If applicant
provides the required claim amendment or cancellation within that
period, the Track I request will be considered again. If the applicant
fails to place the application in conformance with the above-listed
claim requirements within that period, no further corrective period
will be given, and the Track I request will be dismissed.
Under the procedure set forth in this interim rule, any excess
claims fees due under 37 CFR 1.16(h), (i), or (j) and any application
size fee due under 37 CFR 1.16(s) is not required to be paid on filing.
An application in which excess claims fees or the application size fee
are outstanding will be treated under the provisions of 37 CFR
1.53(f)(4), which require that those fees be paid prior to the
expiration of the time period set for reply by the Office in any notice
of fee deficiency.
Discussion of Specific Rules
The following is a discussion of the amendments to Title 37 of the
Code of Federal Regulations, Part 1.
Section 1.102: Section 1.102(e)(1) is revised to eliminate the
requirement that the inventor's oath or declaration be submitted on the
filing date. An application having a properly executed application data
sheet that meets the requirements set forth in Sec. 1.53(f)(3)(i) will
be eligible for prioritized examination (provided that the conditions
of Sec. 1.102(e) as revised in this interim rule are met). Pursuant to
Sec. 1.41(b), such an application data sheet sets the inventorship for
the application, and applicant may delay submission of the inventor's
oath or declaration no later than the date on which the issue fee for
the patent is paid. See Changes
[[Page 12388]]
To Implement the Inventor's Oath or Declaration Provisions of the
Leahy-Smith America Invents Act, 77 FR 48776, 48779-80 (Aug. 14, 2012),
and Changes to Implement the Patent Law Treaty, 78 FR 62367, 62376
(Oct. 21, 2013). Accordingly, Sec. 1.102(e)(1) is revised to provide
that the application must include a specification as prescribed by 35
U.S.C. 112 including at least one claim, a drawing when necessary, and
the inventor's oath or declaration on filing, except that the filing of
an inventor's oath or declaration may be postponed in accordance with
Sec. 1.53(f)(3) if an application data sheet meeting the conditions
specified in Sec. 1.53(f)(3)(i) is present upon filing.
Section 1.102(e)(1) is also revised to eliminate the requirements
that an application include any excess claims fees due under Sec.
1.16(h), (i), or (j) or any application size fee due under Sec.
1.16(s) on filing. An application in which excess claims fees or the
application size fee are outstanding will be treated under the
provisions of Sec. 1.53(f)(4), which require that those fees be paid
prior to the expiration of the time period set for reply by the Office
in any notice of fee deficiency in order to avoid abandonment.
Section 1.102(e)(1) is further revised to eliminate the
requirements that an application not contain more than four independent
claims, not contain more than thirty total claims, and not contain any
multiple dependent claim upon filing. Upon review of the Track I
request, the Office will provide applicant a non-extendable one-month
period in which to submit an amendment cancelling claims, or removing
multiple dependencies. If, upon expiration of that one-month period,
the application still contains more than four independent claims, more
than thirty total claims, or a multiple dependent claim, the request
for prioritized examination will be dismissed.
Section 1.102(e)(1) maintains the requirement that an application
for which prioritized examination is requested must include payment of
the basic filing fee, the search fee, and examination fees on filing,
or the application will be ineligible for Track I. Specifically, Sec.
1.102(e)(1) as revised requires that if the application is a utility
application, it must be filed via the Office's electronic filing system
and include the filing fee under Sec. 1.16(a), search fee under Sec.
1.16(k), and examination fee under Sec. 1.16(o) upon filing, and that
if the application is a plant application, it must include the filing
fee under Sec. 1.16(c), search fee under Sec. 1.16(m), and
examination fee under Sec. 1.16(q) upon filing.
Section 1.102(e) also maintains the requirement that an application
for which prioritized examination is sought must be accompanied by the
prioritized examination fee set forth in Sec. 1.17(c), the processing
fee set forth in Sec. 1.17(i)(1), and the publication fee set forth in
Sec. 1.18(d). The request and each of these fees must be present on
the same day the application is filed, or the application will be
ineligible for Track I.
This interim rule, while providing additional time for the filing
of an inventor's oath or declaration, for payment of any excess claims
fees or any application size fee, and for filing an amendment to limit
an application to four independent claims and thirty total claims
without any multiple dependent claim, does not remove the requirement
that those items be filed within the appropriate time period.
Applicants are reminded that any request for an extension of time will
cause an outstanding Track I request to be dismissed, or cause an
application to lose its Track I status if previously conferred upon
that application. See Changes to Implement the Prioritized Examination
Track (Track I) of the Enhanced Examination Timing Control Procedures
under the Leahy-Smith America Invents Act, 76 FR 59050 (September 23,
2011).
To reduce delays in processing the application, the Office
recommends that all of the requirements under Sec. 1.102(e)(1) be met
upon filing. An applicant should not delay meeting a requirement merely
because an additional time period will be supplied. Applicants should
recognize that the twelve-month goal for final disposition of the
application is measured from the time the Track I request is granted,
not from the filing of the application. As an applicant is seeking
Track I prioritized examination to receive rapid examination, any delay
in meeting the requirements for Track I merely adds processing time
onto the twelve-month goal for final disposition of the application.
The changes in this interim rule apply to any application filed
under 35 U.S.C. 111(a) on or after September 16, 2012, in which a first
action has not been mailed. An applicant may have previously submitted
a Track I request which was dismissed, but would have been granted, or
the applicant would have been provided additional time to meet a
requirement, if the changes to the interim rule had been in effect at
the time of the dismissal. An applicant may file a request for
reconsideration of the dismissal of the previous Track I request based
upon the changes set forth in this interim rule if: (1) The application
is still pending; (2) the application contains, or has been amended to
contain, no more than four independent claims, no more than thirty
total claims, and no multiple dependent claims; and (3) a first Office
action has not been mailed in the application. Any such petition should
be directed to the Office of Petitions.
Rulemaking Considerations
A. Administrative Procedure Act: This interim rule revises the
procedures that apply to applications for which an applicant has
requested Track I prioritized examination. The changes in this interim
rule do not change the substantive criteria of patentability.
Therefore, the changes in this rulemaking involve rules of agency
practice and procedure, and/or interpretive rules. See JEM Broad. Co.
v. FCC, 22 F.3d 320, 326 (D.C. Cir. 1994) (``[T]he critical feature of
the procedural exception [in 5 U.S.C. 553(b)(A)] is that it covers
agency actions that do not themselves alter the rights or interests of
parties, although [they] may alter the manner in which the parties
present themselves or their viewpoints to the agency'') (quoting
Batterton v. Marshall, 648 F.2d 694, 707 (D.C. Cir. 1980)); see also
Bachow Commc'ns Inc. v. F.C.C., 237 F.3d 683, 690 (D.C. Cir. 2001)
(rules governing an application process are procedural under the
Administrative Procedure Act); Inova Alexandria Hosp. v. Shalala, 244
F.3d 342, 350 (4th Cir. 2001) (rules for handling appeals were
procedural where they did not change the substantive standard for
reviewing claims).
Accordingly, prior notice and opportunity for public comment are
not required pursuant to 5 U.S.C. 553(b) or (c) (or any other law). See
Cooper Techs. Co. v. Dudas, 536 F.3d 1330, 1336-37 (Fed. Cir. 2008)
(stating that 5 U.S.C. 553, and thus 35 U.S.C. 2(b)(2)(B), does not
require notice and comment rulemaking for ``interpretative rules,
general statements of policy, or rules of agency organization,
procedure, or practice'') (quoting 5 U.S.C. 553(b)(A)). In addition,
pursuant to authority at 5 U.S.C. 553(d)(1), the changes in this
interim rule may be made immediately effective because they relieve
restrictions in the requirements for requesting prioritized examination
of an application.
Moreover, the Office, pursuant to authority at 5 U.S.C.
553(b)(3)(B), finds good cause to adopt the changes in this interim
rule without prior notice and an opportunity for public comment, as
[[Page 12389]]
such procedures are contrary to the public interest. Delay in the
promulgation of this interim rule to provide prior notice and comment
procedures would cause harm to those applicants who file a request for
Track I prioritized examination in an application that does not contain
the inventor's oath or declaration and to those applicants who filed a
request for prioritized examination in an application containing more
than four independent claims, more than thirty total claims, or a
multiple dependent claim. Immediate implementation of the changes in
this interim rule is in the public interest because: (1) The public
does not need time to conform its conduct as the changes in this
interim rule do not add any additional requirement for requesting
prioritized examination of an application; and (2) those applicants who
are currently ineligible for prioritized examination due to the
previously stated reasons will benefit from the changes in this interim
rule. See Nat'l. Customs Brokers & Forwarders Ass'n v. U.S., 59 F.3d
1219, 1223-24 (Fed. Cir. 1995).
B. Regulatory Flexibility Act: As prior notice and an opportunity
for public comment are not required pursuant to 5 U.S.C. 553, or any
other law, neither a regulatory flexibility analysis nor a
certification under the Regulatory Flexibility Act (5 U.S.C. 601 et
seq.) is required. See 5 U.S.C. 603.
C. Executive Order 12866 (Regulatory Planning and Review): This
rulemaking has been determined to be not significant for purposes of
Executive Order 12866 (Sept. 30, 1993).
D. Executive Order 13563 (Improving Regulation and Regulatory
Review): The Office has complied with Executive Order 13563.
Specifically, the Office has, to the extent feasible and applicable:
(1) Made a reasoned determination that the benefits justify the costs
of the rule; (2) tailored the rule to impose the least burden on
society consistent with obtaining the regulatory objectives; (3)
selected a regulatory approach that maximizes net benefits; (4)
specified performance objectives; (5) identified and assessed available
alternatives; (6) involved the public in an open exchange of
information and perspectives among experts in relevant disciplines,
affected stakeholders in the private sector and the public as a whole,
and provided on-line access to the rulemaking docket; (7) attempted to
promote coordination, simplification, and harmonization across
government agencies and identified goals designed to promote
innovation; (8) considered approaches that reduce burdens and maintain
flexibility and freedom of choice for the public; and (9) ensured the
objectivity of scientific and technological information and processes.
E. Executive Order 13132 (Federalism): This rulemaking does not
contain policies with federalism implications sufficient to warrant
preparation of a Federalism Assessment under Executive Order 13132
(Aug. 4, 1999).
F. Executive Order 13175 (Tribal Consultation): This rulemaking
will not: (1) Have substantial direct effects on one or more Indian
tribes; (2) impose substantial direct compliance costs on Indian tribal
governments; or (3) preempt tribal law. Therefore, a tribal summary
impact statement is not required under Executive Order 13175 (Nov. 6,
2000).
G. Executive Order 13211 (Energy Effects): This rulemaking is not a
significant energy action under Executive Order 13211 because this
rulemaking is not likely to have a significant adverse effect on the
supply, distribution, or use of energy. Therefore, a Statement of
Energy Effects is not required under Executive Order 13211 (May 18,
2001).
H. Executive Order 12988 (Civil Justice Reform): This rulemaking
meets applicable standards to minimize litigation, eliminate ambiguity,
and reduce burden as set forth in sections 3(a) and 3(b)(2) of
Executive Order 12988 (Feb. 5, 1996).
I. Executive Order 13045 (Protection of Children): This rulemaking
does not concern an environmental risk to health or safety that may
disproportionately affect children under Executive Order 13045 (Apr.
21, 1997).
J. Executive Order 12630 (Taking of Private Property): This
rulemaking will not affect a taking of private property or otherwise
have taking implications under Executive Order 12630 (Mar. 15, 1988).
K. Congressional Review Act: Under the Congressional Review Act
provisions of the Small Business Regulatory Enforcement Fairness Act of
1996 (5 U.S.C. 801 et seq.), prior to issuing any final rule, the
United States Patent and Trademark Office will submit a report
containing the rule and other required information to the United States
Senate, the United States House of Representatives, and the Comptroller
General of the Government Accountability Office. The changes in this
interim rule are not expected to result in an annual effect on the
economy of 100 million dollars or more, a major increase in costs or
prices, or significant adverse effects on competition, employment,
investment, productivity, innovation, or the ability of United States-
based enterprises to compete with foreign-based enterprises in domestic
and export markets. Therefore, this interim rule is not a ``major
rule'' as defined in 5 U.S.C. 804(2).
L. Unfunded Mandates Reform Act of 1995: The changes set forth in
this notice do not involve a Federal intergovernmental mandate that
will result in the expenditure by State, local, and tribal governments,
in the aggregate, of 100 million dollars (as adjusted) or more in any
one year, or a Federal private sector mandate that will result in the
expenditure by the private sector of 100 million dollars (as adjusted)
or more in any one year, and will not significantly or uniquely affect
small governments. Therefore, no actions are necessary under the
provisions of the Unfunded Mandates Reform Act of 1995. See 2 U.S.C.
1501 et seq.
M. National Environmental Policy Act: This rulemaking will not have
any effect on the quality of the environment and is thus categorically
excluded from review under the National Environmental Policy Act of
1969. See 42 U.S.C. 4321 et seq.
N. National Technology Transfer and Advancement Act: The
requirements of section 12(d) of the National Technology Transfer and
Advancement Act of 1995 (15 U.S.C. 272 note) are not applicable because
this rulemaking does not contain provisions which involve the use of
technical standards.
O. Paperwork Reduction Act: The Paperwork Reduction Act of 1995 (44
U.S.C. 3501 et seq.) requires that the Office consider the impact of
paperwork and other information collection burdens imposed on the
public. This interim rule involves information collection requirements
which are subject to review by the Office of Management and Budget
(OMB) under the Paperwork Reduction Act of 1995 (44 U.S.C. 3501-3549).
An applicant who wishes to participate in the prioritized examination
program must submit a certification and request to participate in the
prioritized examination program, preferably by using Form PTO/AIA/424.
OMB has determined that, under 5 CFR 1320.3(h), Form PTO/AIA/424 does
not collect ``information'' within the meaning of the Paperwork
Reduction Act of 1995. This rule making does not impose any additional
collection requirements under the Paperwork Reduction Act which are
subject to further review by OMB.
Notwithstanding any other provision of law, no person is required
to respond to, nor shall a person be subject to a
[[Page 12390]]
penalty for failure to comply with, a collection of information subject
to the requirements of the Paperwork Reduction Act unless that
collection of information displays a currently valid OMB control
number.
List of Subjects in 37 CFR Part 1
Administrative practice and procedure, Courts, Freedom of
information, Inventions and patents, Reporting and recordkeeping
requirements, Small businesses.
For the reasons set forth in the preamble, 37 CFR part 1 is amended
as follows:
PART 1--RULES OF PRACTICE IN PATENT CASES
0
1. The authority citation for 37 CFR Part 1 continues to read as
follows:
Authority: 35 U.S.C. 2(b)(2).
0
2. Section 1.102 is amended by revising paragraph (e)(1) to read as
follows:
Sec. 1.102 Advancement of examination.
* * * * *
(e) * * *
(1) A request for prioritized examination may be filed with an
original utility or plant nonprovisional application under 35 U.S.C.
111(a). The application must include a specification as prescribed by
35 U.S.C. 112 including at least one claim, a drawing when necessary,
and the inventor's oath or declaration on filing, except that the
filing of an inventor's oath or declaration may be postponed in
accordance with Sec. 1.53(f)(3) if an application data sheet meeting
the conditions specified in Sec. 1.53(f)(3)(i) is present upon filing.
If the application is a utility application, it must be filed via the
Office's electronic filing system and include the filing fee under
Sec. 1.16(a), search fee under Sec. 1.16(k), and examination fee
under Sec. 1.16(o) upon filing. If the application is a plant
application, it must include the filing fee under Sec. 1.16(c), search
fee under Sec. 1.16(m), and examination fee under Sec. 1.16(q) upon
filing. The request for prioritized examination in compliance with this
paragraph must be present upon filing of the application, except that
the applicant may file an amendment to cancel any independent claims in
excess of four, any total claims in excess of thirty, and any multiple
dependent claim not later than one month from a first decision on the
request for prioritized examination. This one-month time period is not
extendable.
* * * * *
Dated: February 27, 2014.
Michelle K. Lee,
Deputy Under Secretary of Commerce for Intellectual Property and Deputy
Director of the United States Patent and Trademark Office.
[FR Doc. 2014-04806 Filed 3-4-14; 8:45 am]
BILLING CODE 3510-16-P
