Request for Comments on a Proposed Track Three Pilot Program With a Pre-Examination Search Option, 34136-34139 [2023-11349]

Agencies

• DEPARTMENT OF COMMERCE
• United States Patent and Trademark Office

[Federal Register Volume 88, Number 102 (Friday, May 26, 2023)]
[Notices]
[Pages 34136-34139]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2023-11349]


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DEPARTMENT OF COMMERCE

United States Patent and Trademark Office

[Docket No.: PTO-P-2023-0021]


Request for Comments on a Proposed Track Three Pilot Program With 
a Pre-Examination Search Option

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Request for comments.

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SUMMARY: The United States Patent and Trademark Office (USPTO or 
Office) seeks public comments on a proposed Track Three Pilot Program 
that would permit micro entity applicants to delay payment of the 
search fee and the examination fee for a period of 30 months from the 
earliest filing date claimed, under certain conditions. By lowering a 
barrier to intellectual property protection, the proposed Track Three 
Pilot Program reinforces the USPTO's commitment to providing the best 
and most accessible intellectual property system in the world. Under 
the proposed Track Three Pilot Program, micro entity applicants would 
need to submit a request to participate in the program when filing a 
nonprovisional utility or plant application, pay the basic filing fee, 
and satisfy other requirements, including the requirement that the 
application be in condition for publication to enable it to be 
published after the expiration of 18 months from the earliest filing 
date for which a benefit is sought. The USPTO is also exploring 
including in the Track Three Pilot Program an option that would permit 
micro entity applicants, under certain conditions, to obtain a pre-
examination search report prior to the deadline for payment of the 
examination fee. The pre-examination search report would provide 
applicants with additional information as they consider potential 
commercialization and the value of their invention.

DATES: Comment Deadline: Written comments must be received on or before 
July 25, 2023, to ensure consideration.

[[Page 34137]]


ADDRESSES: For reasons of Government efficiency, comments must be 
submitted through the Federal eRulemaking Portal at 
www.regulations.gov. To submit comments via the portal, enter docket 
number PTO-P-2023-0021 on the homepage and click ``Search.'' The site 
will provide a search results page listing all documents associated 
with this docket. Find a reference to this document and click on the 
``Comment'' icon, complete the required fields, and enter or attach 
your comments. Attachments to electronic comments will be accepted in 
Adobe[supreg] portable document format (PDF) or Microsoft Word[supreg] 
format. 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.
    Visit the Federal eRulemaking Portal for additional instructions on 
providing comments via the portal. If electronic submission of comments 
is not feasible due to a lack of access to a computer and/or the 
internet, please contact the USPTO using the contact information below 
for special instructions.

FOR FURTHER INFORMATION CONTACT: Eugenia A. Jones, Senior Legal 
Advisor, Office of Patent Legal Administration, at 571-272-7727; or 
Kristie A. Mahone, Senior Legal Advisor, Office of Patent Legal 
Administration, at 571-272-9016; or [email protected].

SUPPLEMENTARY INFORMATION: The USPTO seeks public comments on a 
proposed Track Three Pilot Program directed at lowering a barrier to 
intellectual property protection. The proposed Track Three Pilot 
Program would be limited to micro entity applicants. Micro entity 
applicants are typically under-resourced and often need additional time 
for commercialization efforts and to ascertain the value of their 
inventions. The USPTO envisions permitting micro entity applicants to 
request a 30-month time period from the earliest filing date claimed to 
pay the search fee and the examination fee in a nonprovisional utility 
or plant application, filed under 35 U.S.C. 111(a), if certain 
conditions are met. The USPTO is also considering including an option 
that would permit micro entity applicants, under certain conditions, to 
additionally obtain a pre-examination search report prior to the 
deadline for payment of the examination fee.

I. Background

    In June 2010, the USPTO requested comments from the public on a 
proposal to provide applicants with greater control over when their 
original utility or plant applications are examined and to promote work 
sharing between intellectual property offices. See Enhanced Examination 
Timing Control Initiative; Notice of Public Meeting, 75 FR 31763 (June 
4, 2010), 1355 Off. Gaz. Pat. Office 323 (June 29, 2010). Specifically, 
the Office proposed to adopt procedures under which an applicant would 
be able to:
    (1) request prioritized examination of an original utility or plant 
nonprovisional application (Track One);
    (2) request a delay in docketing the application for examination by 
filing a request for delay in payment of the search fee, the 
examination fee, the claims fees, and the surcharge (if required) for a 
maximum period not to exceed 30 months in an original non-continuing 
utility or plant application, filed under 35 U.S.C. 111(a), that does 
not claim the benefit of a prior-filed foreign application (Track 
Three); or
    (3) obtain processing under the current examination procedure 
(Track Two) by not requesting either Track One or Track Three 
processing.
    On September 16, 2011, the Leahy-Smith America Invents Act (AIA) 
was enacted, and section 11(h) included provisions for prioritized 
examination. A week later, the USPTO amended the rules of practice to 
implement the prioritized examination provisions of section 11(h) of 
the AIA. 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 (Sept. 23, 2011), 1371 
Off. Gaz. Pat. Office 151 (Oct. 18, 2011).
    The USPTO currently has a deferred examination practice, under 
which any applicant (regardless of entity status) may request deferral 
of examination of an original utility or plant application for a period 
not extending beyond three years from the earliest filing date claimed 
under 35 U.S.C. 119, 120, 121, 365, or 386, if certain conditions are 
met. See 37 CFR 1.103(d). It is the USPTO's practice to not grant a 
request for deferral of examination under 37 CFR 1.103(d) until all 
required fees (including the search fee and the examination fee) have 
been paid and the application is complete. A request for deferral of 
examination under 37 CFR 1.103(d) also requires payment of a processing 
fee.
    Furthermore, a request for deferral of examination under 37 CFR 
1.103(d) may be submitted after the application has been filed, but the 
request will not be granted if the USPTO has issued an Office action, 
under 35 U.S.C. 132, or a notice of allowance, under 35 U.S.C. 151.
    The USPTO also has a practice (``missing parts'' practice) that 
permits applications to be filed without claims, the inventor's oath or 
declaration, or fees being present on filing. See 37 CFR 1.53(f). 
Specifically, under current practice, the USPTO will send a Notice to 
File Missing Parts of Nonprovisional Application (Notice to File 
Missing Parts) if a nonprovisional application, filed under 35 U.S.C. 
111(a), has been accorded a filing date but does not include:
    (1) the basic filing fee (37 CFR 1.16(a) or (c));
    (2) the search fee (37 CFR 1.16(k) or (m));
    (3) the examination fee (37 CFR 1.16(o) or (q));
    (4) at least one claim; and/or
    (5) either the inventor's oath or declaration under 37 CFR 1.63 or 
an application data sheet in accordance with 37 CFR 1.76.
    The Notice to File Missing Parts will set a time period for the 
applicant to submit the missing items and pay the required surcharge 
under 37 CFR 1.16(f) to avoid abandonment. If excess claims fees under 
37 CFR 1.16(h), (i), and/or (j); an application size fee under 37 CFR 
1.16(s); and/or the non-electronic filing fee under 37 CFR 1.16(t) are 
required and any of these fees have not been paid, the Notice to File 
Missing Parts will also require that these fees be paid within the 
period for response to the Notice to File Missing Parts. Although the 
rules of practice do not specify the time period for response to the 
Notice to File Missing Parts, the USPTO currently sets a two-month time 
period for that response, with extensions of time of up to five months 
available under 37 CFR 1.136(a).
    Finally, under the Patent Cooperation Treaty (PCT), an applicant 
may seek patent protection in the United States, and other 
jurisdictions, by first filing an international application and then 
filing a national stage entry as to the United States as well as entry 
into other jurisdictions. This practice, subject to various conditions 
and requirements, permits a similar 30-month period for applicants to 
defer certain filing decisions. As is the case with the deferred 
examination practice and missing parts practice, this option requires 
payment of additional fees and the fulfillment of other requirements 
relative to the proposed Track Three Pilot Program.
    The USPTO recognizes that under-resourced applicants may need a 
low-cost option with minimal requirements to allow them additional time 
for

[[Page 34138]]

commercialization efforts and to ascertain the value of their 
inventions. To that end, the USPTO seeks public comments on a proposed 
Track Three Pilot Program.

II. Summary of Proposed Track Three Pilot Program

    On the filing of an application seeking benefit under the proposed 
Track Three Pilot Program, a micro entity applicant would be provided a 
30-month (non-extendable) time period to pay the search fee and/or the 
examination fee if the applicant satisfies the following conditions:
    (1) the applicant must submit a request to participate in the Track 
Three Pilot Program with the nonprovisional application on filing, by 
using a USPTO form that would be provided for this purpose;
    (2) the nonprovisional application must be a utility or plant 
application filed under 35 U.S.C. 111(a) within the duration of the 
pilot program and be entitled to a filing date;
    (3) the nonprovisional application must not claim priority to or 
benefit of any prior-filed application other than a prior-filed 
provisional application(s);
    (4) the basic filing fee under 37 CFR 1.16(a) or (c) (as 
applicable) and any required non-electronic filing fee under 37 CFR 
1.16(t) must have been paid;
    (5) the search fee under 37 CFR 1.16(k) or (m) (as applicable) and/
or the examination fee under 37 CFR 1.16(o) or (q) (as applicable) must 
not have been paid;
    (6) the applicant must properly establish micro entity status under 
37 CFR 1.29 in the nonprovisional application;
    (7) the applicant must not have filed a nonpublication request; and
    (8) the application must be in condition for publication as 
provided in 37 CFR 1.211(c) (including, for example, payment of any 
required application size fee under 37 CFR 1.16(s) and the inventor's 
oath or declaration or an application data sheet containing the 
information specified in 37 CFR 1.63(b)).
    To complete the application for examination and avoid abandonment, 
the search fee, the examination fee, and any other required fees would 
be due within 30 months from the earliest filing date claimed, 
including any filing date of a prior provisional application that is 
relied upon for benefit under 35 U.S.C. 119(e).
    Under 35 U.S.C. 122(b), the USPTO is required to publish the 
application promptly after the expiration of 18 months from the 
earliest filing date for which a benefit is sought (which may only be 
the filing date of a prior-filed U.S. provisional application for the 
proposed Track Three Pilot Program), as the application may not include 
a nonpublication request. Therefore, as noted above, the nonprovisional 
application must be in condition for publication as provided in 37 CFR 
1.211(c). In addition to the basic filing fee and the inventor's oath 
or declaration or an application data sheet containing the information 
specified in 37 CFR 1.63(b), the USPTO requires the following in order 
for the nonprovisional application to be in condition for publication:
    (1) a specification in compliance with 37 CFR 1.52;
    (2) an abstract in compliance with 37 CFR 1.72(b);
    (3) drawings (if any) in compliance with 37 CFR 1.84;
    (4) any application size fee required under 37 CFR 1.16(s);
    (5) any English translation required under 37 CFR 1.52(d); and
    (6) a ``Sequence Listing XML'' in compliance with 37 CFR 1.831-
1.835 (if applicable).
    If the requirements for publication are not met, the applicant 
would need to satisfy the publication requirements within a two-month 
extendable time period. The required publication of applications 
participating in the Track Three Pilot Program is similar to the 
required publication of international applications under the PCT and 
nonprovisional applications in which the applicant seeks deferred 
examination. In all three instances, the publication provides public 
notice of the existence of the application as well as access to the 
application.
    The USPTO is also considering including an additional ``plus'' 
option in the Track Three Pilot Program in which, under certain 
conditions, the micro entity applicant could obtain a pre-examination 
search report prior to the deadline for payment of the examination fee. 
The USPTO recently added an artificial intelligence (AI) search feature 
as a tool for examiners (see New Artificial Intelligence Functionality 
in PE2E Search, 1504 Off. Gaz. Pat. Office 359 (Nov. 15, 2022)). Under 
the ``plus'' option, relevant references from the AI search tool would 
be identified and would form the basis of a preexamination search 
report. The pre-examination search report would provide applicants with 
additional information as they consider potential commercialization and 
the value of their invention. If the micro entity applicant chooses the 
``plus'' option, payment of the examination fee and any other required 
fees except the search fee may be delayed until the expiration of the 
later of:
    (1) six months (non-extendable) from the date of the search report; 
or
    (2) a period of 30 months (non-extendable) from the earlier of:
    (a) the actual filing date of the application; or
    (b) the filing date of the earliest provisional application for 
which benefit is claimed.
    The publication of the application under 35 U.S.C. 122(b) will 
still occur promptly after the expiration of 18 months from the 
earliest filing date for which a benefit is sought.
    The requirements for participation in the ``plus'' option would be 
identical to the basic Track Three Pilot Program requirements explained 
above, except that the following additional conditions must be met:
    (1) the applicant must submit a request to participate in the 
``plus'' part of the program along with payment of the search fee under 
37 CFR 1.16(k) or (m) (as applicable) prior to the expiration of a 
specified deadline;
    (2) the application may not contain more than 3 independent claims, 
more than 20 total claims, or any multiple dependent claims; and
    (3) the claims must be drawn to a single invention.
    To complete the application for examination and avoid abandonment, 
the examination fee and any other required fees would be due within the 
later of:
    (1) six months (non-extendable) from the date of the search report; 
or
    (2) a period of 30 months (non-extendable) from the earlier of:
    (a) the actual filing date of the application; or
    (b) the filing date of the earliest provisional application for 
which benefit is claimed.
    The Consolidated Appropriations Act, 2023, Public Law 117-328, 
enacted on December 29, 2022, included the Unleashing American 
Innovators Act of 2022 (UAIA), containing a number of patent-related 
provisions. 136 Stat. 4459. Section 106 of the UAIA provides for a pre-
prosecution assessment pilot program. Specifically, section 106(a) of 
the UAIA provides that ``[n]ot later than [December 29, 2023], the 
Director shall establish a pilot program to assist first-time 
prospective patent applicants in assessing the strengths and weaknesses 
of a potential patent application submitted by such a prospective 
applicant.'' Section 106(b) of the UAIA provides that ``[i]n developing 
the pilot program required under subsection (a), the Director shall 
establish: (1) a notification process to notify a

[[Page 34139]]

prospective patent applicant seeking an assessment described in that 
subsection that any assessment so provided may not be considered an 
official ruling of patentability from the Office; (2) conditions to 
determine eligibility for the pilot program, taking into consideration 
available resources; (3) reasonable limitations on the amount of time 
to be spent providing assistance to each individual first-time 
prospective patent applicant; (4) procedures for referring prospective 
patent applicants to legal counsel, including through the patent pro 
bono programs; and (5) procedures to protect the confidentiality of the 
information disclosed by prospective patent applicants.'' The USPTO is 
planning to leverage the process for producing the pre-examination 
search report, as discussed in this notice, for the pilot program 
required by section 106(a) of the UAIA to assist first-time prospective 
patent applicants in assessing the strengths and weaknesses of their 
potential patent application.

III. Additional Considerations

    Fees are subject to change, and the fees due in an application are 
the fees in effect at the time of fee payment. Therefore, if the search 
fee, examination fee, excess claims fees, and/or the surcharge (or any 
other fees) have changed after the mailing or notification date of a 
Notice to File Missing Parts that sets a time period to pay such fees, 
the applicant would be required to pay the revised fee amounts. 
Applicants who are considering filing under the proposed Track Three 
Pilot Program should consider that the fee amounts due 30 months after 
the application is filed may be higher than the fee amounts in effect 
when the application was filed.
    By statute, any patent term adjustment (PTA) accrued by an 
applicant based on delays by the USPTO is ``reduced by a period equal 
to the period of time during which the applicant failed to engage in 
reasonable efforts to conclude prosecution of the application'' 
(``applicant delay''). See 35 U.S.C. 154(b)(2)(C)(i). Taking more than 
three months to respond to any Office action or notice is considered an 
``applicant delay.'' See 35 U.S.C. 154(b)(2)(C)(ii) and 37 CFR 
1.704(b). Thus, if an applicant replies to a Notice to File Missing 
Parts more than three months after the mailing of the notice, any 
positive PTA accrued by the applicant will be reduced by the period of 
time in excess of three months taken to reply to the Notice to File 
Missing Parts. In addition, the failure to place an application in 
condition for examination (defined in 37 CFR 1.704(f)) within eight 
months from the date on which the application was filed under 35 U.S.C. 
111(a) is also an ``applicant delay'' and will result in a reduction of 
any positive PTA accrued by the applicant. See 37 CFR 1.704(c)(13). 
However, if an ``applicant delay'' occurs under both these provisions 
on the same calendar day, the applicant will be assessed only one day 
of applicant delay (i.e., no overlapping reduction). It should be 
noted, however, that this proposed Track Three Pilot Program would not 
be considered a suspension of action under 37 CFR 1.103 at the 
applicant's request, and thus applicant delay would not be assessed 
under 37 CFR 1.704(c)(1). No change to the current regulations 
(including the PTA regulations) is contemplated to implement the 
proposed Track Three Pilot Program.
    The optional pre-examination search report contemplated by the 
USPTO is not an action under 35 U.S.C. 132, and no reply to the pre-
examination search report itself is necessary to avoid abandonment. 
Thus, the pre-examination search report will not toll the 14-month time 
period under 35 U.S.C. 154(b)(1)(A)(i), and therefore, positive PTA 
will accrue after expiration of the 14-month time period under 35 
U.S.C. 154(b)(1)(A)(i) until an action under 35 U.S.C. 132 or 151 is 
mailed. However, any positive PTA accrued by the applicant will be 
reduced by the period of time in excess of three months taken to reply 
to the Notice to File Missing Parts, as well as the period of time in 
excess of eight months taken to place the application in condition for 
examination as defined in 37 CFR 1.704(f), except that the applicant 
will be assessed only one day of applicant delay if both of these 
delays occur on the same calendar day.

IV. Questions for Public Comment

    The USPTO welcomes any comments from the public on the proposed 
program discussed in this notice. Commenters are also welcome to 
respond to any or all of the following questions:
    1. Should the USPTO implement the proposed Track Three Pilot 
Program? Why or why not?
    2. If the USPTO implements the proposed Track Three Pilot Program, 
do you or members of your organization believe that the public would 
use it for eligible applications?
    3. If the proposed Track Three Pilot Program is used, to what 
extent do you or members of your organization believe the public would 
use the ``plus'' option?
    4. If the proposed ``plus'' option in the Track Three Pilot Program 
is used, what information would you or members of your organization 
like to see in the pre-examination search report? For example, options 
may include a simple list of relevant references, a list of relevant 
references with a short explanation of why they are relevant, a PCT-
style search report that identifies how references are pertinent to 
specific claims, or something different.
    5. Would the proposed ``plus'' option in the Track Three Pilot 
Program be used if the search is performed by a USPTO artificial 
intelligence search tool(s) only? For example, the search report may 
include a list of references generated by the artificial intelligence 
tool(s) or may include relevant references identified by a patent 
examiner from the artificial intelligence search results along with 
some level of context ranging from a short explanation to a full PCT-
style report.
    6. Are there any conditions of the proposed Track Three Pilot 
Program that should be modified? For example, is the 30-month time 
period sufficient to determine whether to proceed with prosecution of 
the application?
    7. Do the current practices discussed in this notice (i.e., 
deferred examination under 37 CFR 1.103(d), the missing parts practice, 
or PCT practice) provide sufficient additional time to determine 
whether to pay the fees and/or proceed with prosecution of the 
application?
    8. If an applicant participating in the proposed Track Three Pilot 
Program becomes aware that the application is no longer entitled to 
micro entity status, how should that discovery impact the status of the 
application in the proposed Track Three Pilot Program?
    For example, should the applicant be required to promptly pay the 
remaining fees and thereby complete the application so it can be 
forwarded for examination?

Katherine K. Vidal,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 2023-11349 Filed 5-25-23; 8:45 am]
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