Discontinuation of the Accelerated Examination Program for Utility Applications, 24324-24327 [2025-10498]

Agencies

• DEPARTMENT OF COMMERCE
• Patent and Trademark Office

[Federal Register Volume 90, Number 110 (Tuesday, June 10, 2025)]
[Rules and Regulations]
[Pages 24324-24327]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2025-10498]


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DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Part 1

[Docket No. PTO-P-2025-0007]
RIN 0651-AD84


Discontinuation of the Accelerated Examination Program for 
Utility Applications

AGENCY: United States Patent and Trademark Office, Department of 
Commerce.

ACTION: Final rule.

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SUMMARY: In order to efficiently allocate examination-related resources 
to address pendency, and in view of the low number of requests for 
Accelerated Examination and the availability of a statutory program to 
expedite the prosecution of applications (Track One, prioritized 
examination), the United States Patent and Trademark Office (USPTO) is 
discontinuing the Accelerated Examination program for utility 
applications. The USPTO is also modifying the rules of practice to 
clarify the grounds for which a petition to make special may be granted 
and when a fee is required for such petition.

DATES: This rule is effective July 10, 2025. The USPTO will no longer 
accept petitions under the Accelerated Examination program filed on or 
after July 10, 2025 in utility applications.

FOR FURTHER INFORMATION CONTACT: Pinchus M. Laufer, Senior Patent 
Attorney, Office of Patent Legal Administration, at 571-272-7726; or 
Brannon Smith, Legal Advisor, Office of Patent Legal Administration, at 
571-270-1601.

SUPPLEMENTARY INFORMATION: 

I. Background

    USPTO regulations at 37 CFR 1.102 provide that patent applications 
may be advanced out of turn for examination based on a ``petition to 
make an application special.'' In June 2006, the USPTO published a 
notice to implement the Accelerated Examination program (2006 AE 
Notice) under which an application would be advanced out of turn for 
examination if the applicant filed a petition to make special with the 
appropriate showing (``Accelerated Examination Petition''). See Changes 
to Practice for Petitions in Patent Applications To Make Special and 
for Accelerated Examination, 71 FR 36323 (June 26, 2006). The 2006 AE 
Notice explained that petitions to make special (except those based on 
applicant's health or age) would be processed and examined under the 
new Accelerated Examination program. 71 FR 36324. The Accelerated 
Examination program proved to be relatively popular as it was one of 
the few options for applicants to receive expedited examination. The 
program was updated on August 16, 2016, to reflect changes in the law 
and examination practice. See Changes in Accelerated Examination 
Practice, 81 FR 54564 (August 16, 2016).
    On September 26, 2011, the USPTO implemented the prioritized 
examination program (often referred to as ``Track One'') provided for 
in the America Invents Act (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 (September 23, 2011). Track One provides the ability to 
advance any utility or plant application out of turn, regardless of 
subject matter, by paying a fee and without an applicant having to meet 
several of the requirements of the Accelerated Examination program, 
such as performing a pre-examination search and supplying an 
examination support document. See 37 CFR 1.102(e).
    The introduction of the Track One program has greatly reduced 
participation in the Accelerated Examination program. In each of the 
fiscal years 2014 to 2024, fewer than 100 applicants have taken 
advantage of the Accelerated Examination program.
    In contrast, Track One has become a significantly more popular 
program than Accelerated Examination. Due to the steady increase in the 
number of requests for prioritized examination under Track One, the 
USPTO raised the annual limit on the number of prioritized examination 
requests that may be accepted from 10,000 to 12,000 in 2019, and to 
15,000 in 2021. See Increase of the Annual Limit on Accepted Requests 
for Track I Prioritized Examination, 84 FR 45907 (September 3, 2019), 
and 2021 Increase of the Annual Limit on Accepted Requests for Track 
One Prioritized Examination, 86 FR 52988 (September 24, 2021). The 
USPTO anticipates further raising the annual limit on the number of 
prioritized examination requests that may be accepted from 15,000 to 
20,000 in 2025.
    As opposed to the more straightforward Track One program, the 
resource demands of the Accelerated Examination program are in tension 
with the USPTO's broader efforts to reduce overall pendency (i.e., the 
time that the application is pending or awaiting a decision). First-
action pendency has increased since 2019, impacting the USPTO's ability 
to reduce the incidence of patent term adjustments, which are required 
if first-action pendency reaches 14 months (see 37 CFR 1.703(a)(1)). In 
particular, the overall first-action pendency in fiscal year 2019 was 
approximately 14.7 months but rose to approximately 19.9 months in 
fiscal year 2024. Petitions for Accelerated Examination are decided by 
technology centers. Deciding the petitions and monitoring compliance 
with program requirements throughout prosecution requires extensive 
evaluation and diverts substantial technology center resources that 
could be applied more efficiently to the examination of older 
applications. In addition, many petitions for Accelerated Examination 
are ultimately denied and the applications examined in their ordinary 
turn, thereby incurring costs with little benefit to applicants or the 
public. In fiscal year 2024, for example, approximately one-third of 
finally decided petitions for Accelerated Examination were denied. 
Further, reducing the number of programs involving special handling 
reduces administrative overhead and improves overall processing 
efficiency. Finally, the low number of applicants requesting 
Accelerated Examination indicates that the Track One program can 
accommodate applicants who require

[[Page 24325]]

expedited examination for utility applications. Thus, discontinuing the 
Accelerated Examination program for utility applications allows more 
examining resources to be devoted to older, unexamined utility 
applications, thereby reducing the number of these applications and 
supporting the USPTO's broader efforts to reduce pendency.
    Due to the need to reduce overall first-action pendency, the low 
usage of the Accelerated Examination program, the popularity of the 
Track One program, and the inconvenience to practitioners and the USPTO 
of retaining a seemingly redundant program with its own special 
handling procedures (See Manual of Patent Examining Procedure 
708.02(a)), the Accelerated Examination program does not provide a 
sufficient benefit to the public or the patent system to justify the 
cost of continuing the program for utility applications. Accordingly, 
the USPTO is discontinuing the Accelerated Examination program for 
utility applications. The Accelerated Examination program will remain 
in effect for design applications, which do not currently have an 
alternative expedited examination program. Any petition or request for 
reconsideration of a petition to make special under the Accelerated 
Examination program filed with a utility application on or after July 
10, 2025 will not be granted, irrespective of the filing date and time 
of any prior Accelerated Examination petition and without regard to the 
USPTO's determination that applicant was afforded an opportunity to 
correct a prior deficient Accelerated Examination petition under the 
program. The effective date of July 10, 2025 will provide sufficient 
time for applicants currently preparing an Accelerated Examination 
petition to complete it prior to the elimination of the Accelerated 
Examination program.
    Under the Accelerated Examination program, petitions to make 
special for inventions enhancing the quality of the environment, 
contributing to the development or conservation of energy resources, or 
contributing to countering terrorism would be granted if the petition 
complied with the requirements of the Accelerated Examination program 
including performing a pre-examination search and drafting an 
examination support document. For these inventions, pursuant to 37 CFR 
1.102(c)(2), the 37 CFR 1.17(h) fee for a petition to make special was 
not required.
    After the Accelerated Examination program is discontinued for 
utility applications, applicants can still receive expedited 
examination of their applications directed to these inventions without 
having to prepare and file an examination support document by taking 
advantage of the Track One program under 37 CFR 1.102(e). Instead of 
preparing and filing an examination support document, Track One 
applicants pay a fee to receive expedited examination. Qualified small 
and micro entity applicants receive discounts for the prioritized 
examination fee of 60% and 80%, respectively. Accordingly, 37 CFR 
1.102(c) is being amended to remove the grounds listed in Sec.  
1.102(c)(2). The grounds found in 37 CFR 1.102(c)(1) (age and health), 
which are available without a fee, are retained and are moved into 37 
CFR 1.102(c).
    Additionally, to reflect changes in law and practice due to the 
Leahy-Smith America Invents Act (AIA), Public Law 112-29, 125 Stat. 284 
(2011), the rules of practice are revised to clarify that it is the 
inventor's or a joint inventor's age or health (not the applicant's age 
or health) that is relevant to 37 CFR 1.102(c) when filing a petition 
to make special.

II. Discussion of Specific Rules

    Title 37 of the Code of Federal Regulations, part 1, is amended as 
follows:
    Section 1.102: Section 1.102(c)(2) is removed to reflect that 
advancement of examination for inventions on the grounds that they 
materially enhance the quality of the environment, contribute to the 
development or conservation of energy resources, or contribute to 
countering terrorism is no longer available without a fee. After the 
2006 AE Notice, petitions to advance examination of these inventions 
were subsumed under the Accelerated Program and were no longer 
independent grounds for obtaining special status. These types of 
invention were accepted into the Accelerated Examination program 
without requiring the fee under Sec.  1.17(h) upon appropriate showing. 
Instead, applicants can seek advancement of examination of these types 
of inventions under the Track One program. Small and micro entities can 
pay reduced fees for Track One applications.
    Further, Sec.  1.102(c) is amended to state that the inventor's or 
a joint inventor's age or health may be a ground to file a petition to 
make special without a fee. Previously, the rule stated that a petition 
to make special may be filed without a fee if the basis for the 
petition is applicant's age or health. However, after the passage of 
the AIA, the terms ``inventor'' and ``applicant'' are no longer 
synonymous and, thus, an applicant may be an entity or individual other 
than the inventor. Therefore, to clarify that it is the inventor's or a 
joint inventor's age or health that is relevant, Sec.  1.102(c) is 
amended accordingly. Section 1.102(c) now only permits the petition to 
make special without a fee for petitions based on an inventor's or a 
joint inventor's age or health.

III. Rulemaking Considerations

    A. Administrative Procedure Act: This final rule revises the 
procedures available to expedite the prosecution of patent 
applications. The changes in this final 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 and do not require notice-and-comment rulemaking, 
pursuant to 5 U.S.C. 553(b)(A)). See Perez v. Mortg. Bankers Ass'n, 575 
U.S. 92, 97, 101 (2015) (explaining that interpretive rules ``advise 
the public of the agency's construction of the statutes and rules which 
it administers'' and do not require notice-and-comment when issued or 
amended); 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 rulemaking for ``interpretative rules, 
general statements of policy, or rules of agency organization, 
procedure, or practice''); In re Chestek PLLC, 92 F.4th 1105, 1110 
(Fed. Cir. 2024) (noting that rule changes that ``do[ ] not alter the 
substantive standards by which the USPTO evaluates trademark 
applications'' are procedural in nature and, thus, ``exempted from 
notice-and-comment rulemaking.''); and JEM Broadcasting Co. v. F.C.C., 
22 F.3d 320, 328 (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))).
    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 Act 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 (September 30, 1993).
    D. Executive Order 13563 (Improving Regulation and Regulatory 
Review): The

[[Page 24326]]

USPTO has complied with Executive Order 13563 (January 18, 2011). 
Specifically, and as discussed above, the USPTO has, to the extent 
feasible and applicable: (1) reasonably determined that the benefits of 
the rule justify its costs; (2) tailored the rule to impose the least 
burden on society consistent with obtaining the agency's 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 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 
while maintaining flexibility and freedom of choice for the public; and 
(9) ensured the objectivity of scientific and technological information 
and processes.
    E. Executive Order 14192 (Deregulation): This regulation is not an 
Executive Order 14192 regulatory action because it has been determined 
to be not significant.
    F. Executive Order 13132 (Federalism): This rulemaking pertains 
strictly to Federal agency procedures and does not contain policies 
with federalism implications sufficient to warrant preparation of a 
Federalism Assessment under Executive Order 13132 (August 4, 1999).
    G. 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 (November 
6, 2000).
    H. 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).
    I. 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 (February 5, 1996).
    J. 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 (April 
21, 1997).
    K. Executive Order 12630 (Taking of Private Property): This 
rulemaking will not effect a taking of private property or otherwise 
have taking implications under Executive Order 12630 (March 15, 1988).
    L. 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.), the USPTO 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 
rulemaking are not expected to result in an annual effect on the 
economy of $100 million 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 rulemaking is not expected to result in 
a ``major rule'' as defined in 5 U.S.C. 804(2).
    M. Unfunded Mandates Reform Act of 1995: The changes set forth in 
this rulemaking 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 (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 (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.
    N. National Environmental Policy Act of 1969: 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.
    O. National Technology Transfer and Advancement Act of 1995: 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 that involve the use of 
technical standards.
    P. Paperwork Reduction Act of 1995: The Paperwork Reduction Act of 
1995 (44 U.S.C. 3501 et seq.) requires that the USPTO consider the 
impact of paperwork and other information collection burdens imposed on 
the public. The collections of information involved in this final rule 
have been reviewed and previously approved by OMB under control numbers 
0651-0031 and 0651-0059. In view of this final rule, the USPTO will 
submit an update to the 0651-0059 information collection in the form of 
a nonsubstantive change request. This final rule does not materially 
change the information collections approved under OMB control number 
0651-0031. Therefore, the USPTO will not submit an update to the 0651-
0031 information collection.
    Notwithstanding any other provision of law, no person is required 
to respond to, nor shall any 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.
    Q. E-Government Act Compliance: The USPTO is committed to 
compliance with the E-Government Act to promote the use of the internet 
and other information technologies, to provide increased opportunities 
for citizen access to Government information and services, and for 
other purposes.

List of Subjects in 37 CFR Part 1

    Administrative practice and procedure, Biologics, 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 (c) to read as 
follows:


Sec.  1.102  Advancement of examination.

* * * * *
    (c) A petition to make an application special may be filed without 
a fee if the

[[Page 24327]]

basis for the petition is the inventor's or a joint inventor's age or 
health.
* * * * *

Coke Morgan Stewart,
Acting Under Secretary of Commerce for Intellectual Property and Acting 
Director of the United States Patent and Trademark Office.
[FR Doc. 2025-10498 Filed 6-9-25; 8:45 am]
 BILLING CODE 3510-16-P