[Federal Register Volume 76, Number 24 (Friday, February 4, 2011)]
[Proposed Rules]
[Pages 6369-6376]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2011-2585]
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DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Part 1
[Docket No. PTO-P-2010-0092]
RIN 0651-AC52
Changes To Implement the Prioritized Examination Track (Track I)
of the Enhanced Examination Timing Control Procedures
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Notice of proposed rulemaking.
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SUMMARY: The United States Patent and Trademark Office (Office)
requested comments on a proposal to provide applicants with greater
control over when their utility and plant applications are examined and
to promote greater efficiency in the patent examination process (3-
Track). The Office, in addition to requesting written comments,
conducted a public meeting to collect input, and has subsequently
considered the wide range of comments received. The Office is in the
process of refining the 3-Track proposal in light of the input. While
that process continues, and in light of the fact that the vast majority
of public input was supportive of the Track I portion of the 3-Track
proposal, the Office proposes by this Notice to proceed with immediate
implementation of the Prioritized Examination Track (Track I),
providing fast examination for applicants desiring it, upon payment of
the applicable fee and compliance with the additional requirements as
described below.
DATES: Comment Deadline Date: Written comments must be received on or
before March 7, 2011. No public hearing will be held.
ADDRESSES: Comments concerning this notice should be sent by electronic
mail message over the Internet addressed to [email protected]. Comments may also be submitted by mail addressed
to: Mail Stop Comments--Patents, Commissioner for Patents, P.O. Box
1450, Alexandria, VA 22313-1450, marked to the attention of Robert A.
Clarke, Deputy Director, Office of Patent Legal Administration, Office
of the Associate Commissioner for Patent Examination Policy. Although
comments may be submitted by mail, the Office prefers to receive
comments via the Internet.
Comments may also be sent by electronic mail message over the
Internet via the Federal eRulemaking Portal. See the Federal
eRulemaking Portal Web site (http://www.regulations.gov) for additional
instructions on providing comments via the Federal eRulemaking Portal.
The comments will be available for public inspection at the Office
of the Commissioner for Patents, located in Madison East, Tenth Floor,
600 Dulany Street, Alexandria, Virginia, and will be available via the
Internet (http://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: Robert A. Clarke, Eugenia A. Jones, or
Joni Y. Chang, Office of Patent Legal Administration, Office of the
Associate Commissioner for Patent Examination Policy, by telephone at
(571) 272-7735, (571) 272-7727 or (571) 272-7720, or by mail addressed
to: Mail Stop Comments Patents, Commissioner for Patents, P.O. Box
1450, Alexandria, VA 22313-1450, marked to the attention of Robert A.
Clarke.
SUPPLEMENTARY INFORMATION: In June 2010, the Office requested comments
from the public on a proposal to provide applicants with greater
control over when their original utility or plant applications are
examined and promote work sharing between intellectual property
offices. 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 I); (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
appropriate) for a maximum period not to exceed thirty months in an
original utility or plant application filed under 35 U.S.C. 111(a)
(Track III); or (3) obtain processing under the current examination
procedure (Track II) by not requesting either Track I or Track III
processing.
The Office is proposing to amend the rules of practice to implement
the proposal to provide applicants with the option to request
prioritized examination at the time of filing of an application upon
payment of the appropriate fees (Track I). The Office is limiting
requests for prioritized examination under 37 CFR 1.102(e) to a maximum
of 10,000 applications for the first year. The Office will revisit this
[[Page 6370]]
annual cap at the end of the year to evaluate what the appropriate
maximum should be, if any.
The Office is also in the process of developing proposed changes to
the rules of practice to provide applicants with the option to 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 appropriate) for a maximum period
not to exceed thirty months in an original utility or plant application
filed under 35 U.S.C. 111(a) (Track III).
The Office is proposing changes to rules of practice to implement
the option to request prioritized examination of an application (Track
I) at this time and separately from a proposal to implement Track III
so that applicants who want to make use of this option will be able to
do so as quickly as possible. The following proposed changes that were
considered in the notice published in June of 2010 are not being
proposed in this rule making: (1) The provision that requires applicant
to file a copy of the search report (if any), a copy of the first
office action from the foreign office and an appropriate reply to the
foreign office action when requesting prioritized examination or to
obtain processing under the current procedure; and (2) the provision
for requesting a supplemental search from a participating intellectual
property granting office.
Prioritized Examination of a utility or plant patent application:
For some applicants with a currently financed plan to commercialize or
exploit their innovation or a need to have more timely examination
results to seek additional funding, more rapid examination is
necessary. While some programs are currently available to prioritize
applications (e.g., the accelerated examination program and the
petition to make special program), some applicants neither want to
perform the search and analysis required by the accelerated examination
program nor can they seek special status based on the conditions set
forth in 37 CFR 1.102. For such applicants, the Office is proposing
optional prioritized examination upon applicant's request and payment
of the appropriate fees upon filing. On granting of prioritized status,
the application would be placed in the queue for prioritized
examination.
The prioritized examination fee is being proposed to be set at a
level to recover the full cost of the resources necessary to increase
the work output of the Office so that the non-prioritized applications
would not be delayed due to resources being diverted to process the
prioritized applications. In other words, the fee for prioritized
examination would include the cost of hiring and training a sufficient
number of new employees to offset the production time used to examine
prioritized applications. Specifically, the Office plans to hire
additional examiners above the number of planned hires, based on the
number of requests for Track I prioritization received by the Office,
so that the non-prioritized applications would not be delayed due to
resources being diverted to process the prioritized applications. Under
the Office's current statutory authority, the Office is not permitted
to discount the fee for small entity applicants. If legislation is
passed providing a fifty percent fee reduction for providing
prioritized examination under 37 CFR 1.102(e) for small entities under
35 U.S.C. 41(h)(1) and that the prioritized examination fees be set to
recover the estimated cost of the prioritized examination program, the
Office would set the prioritized examination fee at $4,800 ($2,400 for
small entities), since 27.8 percent of the new serialized utility and
plant applications filed in fiscal year 2010 were by small entities
(based upon data from the Office's Patent Application Monitoring and
Locating (PALM) system).
Under Track I prioritized examination, an application would be
accorded special status and placed on the examiner's special docket
throughout its entire course of prosecution before the examiner until a
final disposition is reached in the application. The aggregate goal for
handling applications under Track I prioritized examination would be to
provide a final disposition within twelve months of prioritized status
being granted. The final disposition for the twelve-month goal means:
(1) Mailing of a notice of allowance, (2) mailing of a final Office
action, (3) filing of a notice of appeal, (4) declaration of an
interference by the Board of Patent Appeals and Interferences (BPAI),
(5) filing of a request for continued examination, or (6) abandonment
of the application, within twelve months from the date prioritized
status has been granted. An application in Track I, however, would not
be accorded special status throughout its entire course of appeal or
interference before the BPAI.
The Office is also proposing to require that the application be
filed via the Office's electronic filing system (EFS-Web) and be
complete under 37 CFR 1.51(b) with any excess claims fees paid on
filing, and to limit the number of claims in a prioritized application
to four independent and thirty total claims. Thus, a request for
prioritized examination under Track I would require that: (1) The
application be an original utility or plant nonprovisional application
filed under 35 U.S.C. 111(a); (2) the application be filed via the
Office's electronic filing system (EFS-Web) and be complete under 37
CFR 1.51(b) with any excess claims fees paid on filing; (3) the
applicant pay the required fees for requesting prioritized examination;
and (4) the application contains or is amended to contain no more than
four independent claims and thirty total claims. See proposed 37 CFR
1.102(e). The request for prioritized examination, the prioritized
examination fee set forth in 37 CFR 1.17(c), the processing fee set
forth in 37 CFR 1.17(i), and the publication fee set forth in 37 CFR
1.18(d) must be filed with the application. The proposed procedure for
Track I would be available only for applications filed on or after the
implementation date (including new continuing applications filed on or
after the implementation date).
Unlike the accelerated examination program, the time periods set in
Office actions for applications in Track I would be the same as set
forth in section 710.02(b) of the Manual of Patent Examining Procedure
(MPEP) (8th ed. 2001) (Rev. 8, July 2010). Where, however, an applicant
files a petition for an extension of time to extend the time period for
filing a reply, the prioritized examination of the application will be
terminated.
To maximize the benefit of Track I, applicant should consider one
or more of the following: (1) Acquiring a good knowledge of the state
of the prior art to be able to file the application with a clear
specification having a complete schedule of claims from the broadest to
which the applicant believes he is entitled in view of the state of the
prior art to the narrowest to which the applicant is willing to accept;
(2) submitting an application in condition for examination; (3) filing
replies that are completely responsive to the prior Office action and
within the shortened statutory period for reply set in the Office
action; and (4) being prepared to conduct interviews with the examiner.
What it means for an application to be in condition for examination is
discussed with respect to the current Accelerated Examination program
at MPEP Sec. 708.02(a) (subsection VIII.C).
Discussion of Specific Rules
Title 37 of the Code of Federal Regulations, Part 1, is proposed to
be amended as follows:
[[Page 6371]]
Section 1.17: The Office is proposing optional prioritized
examination (Track I) upon applicant's request and payment of a fee at
the time of filing of the application, without meeting the requirements
of the accelerated examination program (e.g., examination support
document). See proposed Sec. 1.102(e). Section 1.17(c) is proposed to
be amended to set the fee for filing a request for prioritized
examination under Sec. 1.102(e) at $4,000.00.
Section 1.102: Section 1.102 is proposed to be revised to provide
for the Track I procedure in which applicant has the option to request
prioritized examination on the date the application is filed.
Particularly, Sec. 1.102(a) is proposed to be revised by adding a
reference to paragraph (e) so that applications may be advanced out of
turn for examination or for further action upon filing a request under
proposed Sec. 1.102(e). Proposed Sec. 1.102(e) would be added to set
forth the requirements for filing a request for prioritized
examination, which would provide that a request for prioritized
examination will not be granted unless: (1) The application is an
original utility or plant nonprovisional application filed under 35
U.S.C. 111(a) filed via the Office's electronic filing system (EFS-
Web), that is complete as defined by Sec. 1.51(b), with any fees due
under Sec. 1.16 (the filing fee, search fee, examination fee, any
applicable excess claims fee, and any applicable application size fee)
paid on filing; (2) the request for prioritized examination, including
the prioritized examination fee set forth in Sec. 1.17(c), the
processing fee set forth in Sec. 1.17(i), and the publication fee set
forth in Sec. 1.18(d) are present upon filing; and (3) the application
contains or is amended to contain no more than four independent claims,
no more than thirty total claims, and no multiple dependent claims.
Response to Comments: The Office published a notice in June of 2010
inviting the public to submit written comments and participate in a
public meeting to solicit public opinions on an initiative being
considered by the Office to provide applicants with greater control
over when their applications are examined and to promote greater
efficiency in the patent examination process. 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) (notice). The
public meeting was held on July 20, 2010, in which members of the
public made oral presentations. The Web cast and transcript of the
meeting are available on the Office's Internet Web site (http://www.uspto.gov) at http://www.uspto.gov/patents/announce/3track.jsp. The
Office received over fifty written comments from government agencies,
intellectual property organizations, industry, law firms, individual
patent practitioners and the general public. The Office has considered
all of the public comments that were received. The comments germane to
the changes being proposed in this notice (Track I) and the Office's
responses to those comments are provided below.
Comment 1: One comment strongly urged that the Office conduct a
voluntary pilot as a first step for implementing the three examination
tracks and noted that collecting, analyzing, and publishing data on all
aspects of the proposal is important for assessing the success of the
program and making needed adjustments. Another comment stated that a
thorough study of the three-track proposal is needed before adoption,
including a study of the fees needed for Track I, expected applicant
demand, Office resources needed, projected effects of Track I on other
Office operations, examination quality, pendency, and operations
management. A few comments encouraged a phased approach for
implementation so that any unforeseen problems can be identified before
full implementation. Another comment supported a pilot program with a
cap as to the number of applications in which an applicant can elect
prioritized examination under Track I, in order to keep costs
manageable as demand is measured and resources grow, and with a
percentage of these applications being reserved for small entities. The
comment stated that this would allow the Office to better plan how many
new examiners would be needed, and to add and train examiners in a
controlled manner.
Response: The Office is initially limiting requests for prioritized
examination under Sec. 1.102(e) for applications to a maximum of
10,000 applications for the first year. Any requests filed after 10,000
proper requests have been received, will not be processed. This will
permit the Office to proceed slowly and closely monitor the number of
applications in the different tracks, gauging the ability of the Office
to obtain sufficient resources to meet its goals. Elements of
prioritized examination, including the ability to track applications
and complete examination within accelerated time frames, have already
been tested in a number of other programs such as the Accelerated
Examination program and the Patent Prosecution Highway (PPH). Unlike
the Accelerated Examination program, which requires the filing of a
petition and time spent on deciding the petition, there is no petition
requirement for prioritized examination under Sec. 1.102(e).
Comment 2: One comment stated that there is no present need to
include design patent applications in the three-track proposal and it
would not work effectively with many foreign design protection systems
(which do not have substantive examination) or the Hague Agreement. The
comment stated that the expedited procedure for design patent
applications (Sec. 1.155) is working very well. The comment suggested
implementation of the Hague Agreement to achieve the best results for
designs.
Response: The proposed rules do not apply to design applications.
Design applications can be expedited under Sec. 1.155. In addition,
design applications are taken up for examination at a much quicker rate
and do not have the same backlog concerns as other applications.
Comment 3: The majority of the comments supported having a track
that permits an applicant to pay a fee and have examination of their
application expedited.
Response: Consistent with the majority of the comments, the Office
is proposing rule changes that include a prioritized examination track.
Comment 4: A few comments were opposed to having such a prioritized
track. One comment stated that it rewards those applicants with money
and that the patent system should continue to be a level playing field.
Another comment stated that it would hurt independent inventors, it
goes against historical traditions of the Office, and establishes a new
cost barrier to rapid and effective patent protection. The comment
stated that the Office should represent the interests of all American
citizens and not just the wealthy. As an alternative, the comment
suggested raising the patent application fees for all applicants by one
hundred dollars. One comment suggested converting the Office to a
government-chartered private corporation and ending the practice of fee
diversion.
Response: The Office will continue to provide low cost rapid patent
protection to applicants through its Accelerated Examination Program.
The Office will also continue to provide expedited examination for
certain applications via its other existing programs such as the Green
Technology Pilot Program or the Petition to Make Special procedure
based on the applicant's age or health under Sec. 1.102(c), which do
not require a fee for the petition. The Office is simply providing an
additional program
[[Page 6372]]
under which applicants may obtain prioritized examination of an
application. Applicants who cannot afford to or do not wish to pay the
fees for prioritized examination and who also are not able to
participate in any of the other programs for accelerating or expediting
examination will still continue to receive examination of their
applications in the same time frames as they would have without
implementation of Track I. The suggestion that all patent application
fees be increased by one hundred dollars is not within the statutory
authority of the Office. The suggestion that the Office be converted to
a government corporation is not germane to the request for comments and
is also beyond the statutory authority of the Office.
Comment 5: Several of the comments that supported having a
prioritized track raised concerns that the pendency of other
applications would increase and questioned how the Office would be able
to prevent examination of other applications from being delayed. The
comments expressed concerns that resources would be diverted from
examination of applications that are not accelerated. One comment
questioned how the Office would be able to hire and retain the
necessary examiners to avoid delays for other applications, given the
problems with examiner hiring and retention. A few comments stated that
the Office must institute safeguards to ensure that examination of
other applications is not delayed, including meaningful metrics. A few
comments wanted to know how the Office intends to measure whether the
examination of other applications is adversely affected.
Response: The Office will continue to publish its anticipated
hiring and pendency targets on the Office's Internet Web site. The
prioritized examination fee is being proposed to be set at a level to
recover the full cost of the resources necessary to increase the work
output of the Office so that the non-prioritized applications would not
be delayed due to resources being diverted to examine the prioritized
applications. Specifically, the Office will use the revenue generated
by the fees paid for Track I applications to hire a sufficient number
of additional examiners above planned examiner hires to offset the
production time used to examine prioritized applications. The ability
of the Office to meet its goals for prioritized examination will be
posted on the Office's Internet Web site on a quarterly basis at the
work group level.
Comment 6: Some comments that supported having a prioritized track
were concerned about the fee. A few comments expressed concerns about
the fee being set too high, which would limit access to the program. A
few comments expressed concerns about the fee being set too low, which
could challenge Office resources to timely examine other applications.
Some comments stated that the fee must be used solely for cost recovery
for the examination of Track I applications. A few comments raised
concerns about fee diversion by Congress and indicated that it is
critical that the fee for prioritized examination not be subject to fee
diversion. Some comments indicated that the diversion of fees is
problematic in determining what fees are appropriate. Some comments
expressed concerns about the disproportionate impact on small entities
and supported a fee reduction for small entities and micro entities,
but recognized that the Office does not currently have the statutory
authority to provide such a fee reduction. A few comments questioned
how the fee would be set and requested that more detailed information
be provided, including information on what the mechanism would be for
ongoing assessment or adjustment of the fee.
Response: The Office is not setting the prioritized examination fee
based on any perceived level of participation in Track I. The
prioritized examination fee is being set based on the estimated average
cost to the Office of performing the service, per 35 U.S.C. 41(d)(2).
As discussed above, the Office plans to hire additional examiners above
the number of planned hires based on the number of requests for Track I
prioritization received by the Office. The Office is also setting an
annual cap on the number of applications that can be granted
prioritized examination in Track I to further ensure that the Office
will be able to meet its goal of providing a final disposition within
twelve months of prioritized status being granted. If the
appropriations that the Office receives are not adjusted to reflect the
projected fee revenue resulting from the prioritized examination
program, then the Office will need to consider eliminating the program.
The Office will monitor the program closely and will assess the
prioritized examination fee on a regular basis and make any needed
adjustments through the rule making process. The Office will also
continue to seek additional fee setting authority that would allow it
to provide for a small entity fee reduction for the fee for prioritized
examination.
Comment 7: Some comments supported having a single queue for
examination of all applications that are accelerated or prioritized,
while some comments were opposed to having such a single queue. Some
comments that supported a single queue identified simplicity and
administrative efficiency as the reasons. The comments that opposed a
single queue primarily focused on the different requirements for the
different programs. One comment stated that it seemed unfair to treat
applications filed under the Patent Prosecution Highway (PPH) or the
Petition to Make Special procedure (Accelerated Examination) the same
as applications filed under Track I or the Project Exchange program
since applicants under the PPH program or the Petition to Make Special
program (Accelerated Examination) have incurred the greater burden in
preparing their applications and thus these applications should be
placed in separate queues. One comment stated that applications
expedited for reasons of infringement should have precedence over
applications expedited merely for policy grounds, such as green
technology. One comment suggested unifying the programs to provide an
extendable three-month time period for replies by applicant. One
comment raised concerns about the PPH fee being reinstated if the
programs are integrated. One comment wanted to know how the Office
would be able to determine the additional examiner workload
attributable to Track I applications if there is a single queue. One
comment suggested that the Office consider combining all prioritized
applications into a single program, not just a single queue, and
provide waivers to accommodate variations. One comment requested
clarification on whether all applications in the queue are handled on
an expedited basis for all stages of prosecution.
Response: In view of the mixed comments and the different goals of
the different programs, the Office is not proposing to provide a single
queue in this notice. The Office will continue to monitor the various
programs. If prioritized examination under Sec. 1.102(e) is requested
on filing with an application, the examination will be expedited until
a final disposition is reached (e.g., the filing of a request for
continued examination or a notice of appeal) or the prioritized
examination of the application is terminated. Regarding the other
programs, the Office has posted a comparison chart of domestic
acceleration initiatives on the Office's Internet Web site that
identifies to what extent applications in each program are accelerated
or expedited. See http://www.uspto.gov/patents/process/file/
[[Page 6373]]
accelerated/comp--chart--dom--accel.pdf. For information on the PPH
program, see http://www.uspto.gov/patents/init_events/pph/index.jsp.
Comment 8: Some comments supported requiring an applicant who
requested prioritized examination to pay the required fee again on
filing of a request for continued examination, while other comments
stated that a single fee should be sufficient to have prioritized
examination throughout the pendency of the application. One comment
stated that the Office would need to justify that there is an
additional cost to the Office which is not covered by the fee that was
paid with the original request for prioritized examination. A few
comments indicated that the initial fee should be sufficient to cover
the first request for continued examination, but applicants should have
to pay the required fee again on filing of any subsequent requests for
continued examination if prioritized examination is still desired. A
few comments supported requiring a fee for the additional cost of
prioritization for the request for continued examination, but
questioned whether the fee should be equal to the initial fee.
Response: The proposed fee for prioritized examination of an
application does not take into account the additional costs incurred by
the Office when a request for continued examination is filed in an
application. Therefore, the prioritized examination of the application
will be terminated if a request for continued examination is filed. The
Office is considering a sui generis practice for prioritized
applications under which an applicant may file a single submission
after final for a fee with the next action being made final if the
submission does not place the application in condition for allowance.
Comment 9: Several comments supported prioritized examination being
available at any time during examination or appeal to the BPAI. Several
comments indicated that the ability to prioritize an application on
appeal was important. One comment that supported the ability to file a
request at the appeal stage raised concerns about causing delays in
other appeals, particularly those appeals that may have been pending a
long time, and suggested implementing a transition period where appeals
whose resolution is imminent would remain at the front of the queue.
One comment questioned whether the fee would be less if the request for
prioritized examination is submitted after a substantial amount of
examination has occurred. One comment supported the ability to
transition in and out of Track I at applicant's discretion at any time
during prosecution.
Response: The proposed fee for prioritized examination of an
application does not take into account the additional costs incurred by
the Office when an appeal is filed in an application. Therefore, the
prioritized examination of the application will be terminated in an
application on appeal upon filing of a notice of appeal to the BPAI.
The Office is considering a prioritized appeals process.
Comment 10: Several comments were opposed to limiting the the
number of claims permitted in a prioritized application, while some
comments supported limiting the number of claims. One comment supported
the Office's proposed limit of four independent claims and thirty total
claims as providing sufficient flexibility for applicants. A few
comments suggested that the Office consider a lower limit of three
independent claims and twenty total claims. A few comments suggested
that the Office consider up to six independent claims and forty total
claims. One comment suggested that the Office consider different fees
for applications of different sizes. One comment that was opposed to
limiting the number of claims suggested an additional prioritization
surcharge for each excess independent and dependent claim. Another
comment suggested that the Office consider a steeper claim fee
structure or a tiered claim fee structure for Track I applications. One
comment stated that additional surveys or studies should be conducted
to ascertain whether the proposed limit on claims is proper. A few
comments that supported a limit stated that the Office should perform a
cost analysis to determine the relationship between the claim count and
the corresponding costs of examination of prioritized applications
before specifying a limit on the number of claims. Another comment that
expressed concerns about the proposed limitation specifically requested
that the Office consider the impact of the proposed limitation on small
entities, provide additional information regarding how the Office
arrived at the proposed limitation of four independent claims and
thirty total claims, and seek comments from small entities on the
proposed limitation.
Response: The Office is proposing that Track I applications be
limited to four independent claims and thirty total claims. The Office
has experience expediting examination under the Accelerated Examination
program, which has a limit of three independent claims and twenty total
claims. The Office recognizes that many applicants have expressed
concerns regarding a limit of three independent claims and twenty total
claims as not being sufficient in all cases. At the same time, the
Office is aware from its experience in other programs that there does
need to be some limit on the number of claims in order for the Office
to be able to satisfy its goals for prioritized examination. Thus, the
Office is proposing that an application must be limited to no more than
four independent and thirty total claims to be eligible for prioritized
examination.
Comment 11: Some comments were opposed to having other requirements
for use of the prioritized track such as limiting the use of extensions
of time, while some comments supported limiting the use of extensions
of time. Some comments suggested that if an applicant does request an
extension of time in a prioritized application, then the application
should simply be removed from the prioritized examination (Track I).
One comment suggested that the Office consider permitting extensions of
time but imposing higher extension fees for Track I applications. One
comment stated that the Office should consider setting reduced
shortened statutory time periods for replies to Office actions such as
one month, with the applicant having the ability to pay for up to a
five-month extension of time. One comment opposed shortening deadlines
to reply to Office communications or requiring additional information
such as an examination support document. One comment stated that any
additional requirements should not be punitive in nature.
Response: The Office will not prohibit the use of extensions of
time for applications that have been granted prioritized examination
under proposed Sec. 1.102(e) per se. Where, however, an applicant
files a petition for an extension of time to extend the time period for
filing a reply, the prioritized examination of the application will be
terminated.
Comment 12: Some comments were opposed to early publication of
applications in Track I, while some comments supported it. One comment
indicated that early publication should be at applicant's option. A few
comments indicated that early publication could affect applicant's
ability to file patent applications on related inventions and thus this
would discourage applicants from using Track I. A number of comments
supported eighteen-month publication of applications for all three
tracks.
[[Page 6374]]
Response: The Office is not proposing to require early publication
of applications in Track I. An applicant may, however, request early
publication of an application in Track I, if desired. Furthermore, an
applicant may request nonpublication under 35 U.S.C. 122(b)(2)(B)(i) of
an application in Track I if the applicant can make the certification
required by 35 U.S.C. 122(b)(2)(B)(i) and Sec. 1.213(a).
Comment 13: One comment questioned whether final disposition for
the twelve-month goal means final rejection or allowance, or issuance
or abandonment.
Response: The final disposition for the twelve-month goal means:
(1) Mailing of a notice of allowance, (2) mailing of a final Office
action, (3) filing of notice of appeal, (4) declaration of an
interference by the BPAI, (5) filing of a request for continued
examination, or (6) abandonment of the application, within twelve
months from the date prioritized status has been granted. The goal is
an aggregate goal for all prioritized applications. The Office plans to
post data at the work group level on the Office's Internet Web site
that will show whether or not the Office is making its goals. As
discussed previously, the prioritized examination of the application
will be terminated if applicant files a petition for an extension of
time to extend the time period for filing a reply.
Comment 14: A few comments questioned whether the Office will
refund or at least partially refund the fee if the Office is not able
to meet its obligations and prioritization does not occur. One comment
suggested that a better tracking and monitoring system is needed for
accelerated applications. One comment suggested that the system should
have prioritized printing once a notice of allowance is mailed. One
comment questioned whether the Office would grant a partial refund for
applicants who request prioritized examination and then opt out.
Response: The Office will not refund the fee required for
requesting prioritized examination under Sec. 1.102(e). The twelve-
month time period to final disposition is an aggregate goal of the
Office for the examination of all Track I applications. The fact that
the Office in a particular application did not meet the goal would not
entitle the applicant to a refund. It should also be noted that
applicants will have received advancement of examination even if the
goals are not met. In addition, even if the prioritized examination of
the application is terminated, the Office will not refund the fee. The
prioritized examination fee would not be a fee paid by mistake. Rather,
it would simply be a change in purpose on the part of the applicant
after payment of the fee. Therefore, the Office would not have the
authority to refund the fee under 35 U.S.C. 42(d). As with other
applications that have been made special, applications that have been
prioritized under Sec. 1.102(e) will be prioritized in the patent
publication process. The Office is working on improvements to its
tracking and monitoring system as part of its Patents End-to-End
Information Technology (IT) project.
Comment 15: A few comments were concerned about the availability of
prior art for applications in Track I and stated that there may be an
adverse effect on quality if examination occurs before certain prior
art becomes available, such as applications published at eighteen
months. One comment questioned how the Office would ensure that
potential prior art that is not yet available to the public be taken
into consideration. One comment indicated that the one-year provision
for interferences (in 35 U.S.C. 135(b)(1)) would give patents granted
earlier under Track I unfair advantages and stated that it would be
difficult to justify Track I as long as the U.S. is a first-to-invent
country.
Response: The Office currently examines applications where
potential prior art is not yet available. For example, during
examination of an application, the examiner may have knowledge of an
unpublished application that may soon be published or patented, and
that would be available as prior art in the application under
examination upon publication or patenting. In these situations, the
Office may suspend an application that is otherwise allowable until the
prior art reference becomes available. Furthermore, when a Track I
application is being allowed, the examiner would conduct a search of
unpublished applications for interference purposes. Applicants must
copy claims from a U.S. patent or U.S. patent application within one
year under 35 U.S.C. 135(b). Issuing patents earlier as a result of
Track I will encourage earlier resolution of interference situations,
which would be to the public's benefit. This, of course, assumes that
the Office failed to suspend the application that issued as a patent to
await the prior art reference.
Comment 16: A few comments questioned whether all of the provisions
of the proposal would be implemented prospectively and thus only apply
to applications filed on or after the implementation date or whether
any of the provisions, such as prioritized examination, would be
available for all pending and future applications. Another comment
questioned whether continuing applications would be eligible for Track
I, whether this would depend on whether the parent application was
filed after the implementation date, and whether the parent application
was in Track I. One comment questioned whether additional examiners for
Track I would need to be hired before the program can be implemented.
Another comment supported the availability of Track I for reissue
applications and continuing applications.
Response: The provisions will be available only for applications
(including new continuing applications) filed on or after the date of
implementation. Track I will not be available for reissue applications
since reissue applications are already treated as special applications.
See MPEP Sec. 1442. Additional examiners for Track I will not need to
be hired before the program can be implemented.
Comment 17: One comment suggested that the Office consider
techniques to encourage compact prosecution for applications in Track I
such as providing an incentive for the use of interviews, liberalizing
after-final practice, and offering incentives to encourage applicants
to reply more promptly. A few comments were concerned about maintaining
examination quality for Track I applications. One comment suggested
that Track I include measures to maintain high quality examination such
as mandatory examiner interviews before a first Office action, required
information disclosure statement (IDS) submissions, examination only by
primary examiners or supervisory patent examiners, specialized examiner
training for fast track processing, incentives for final resolution of
the application, extension of the period in Sec. 1.99 for a third
party to submit references after publication to four months, and clear
instructions for applicants including detailed guidelines. One comment
emphasized that the level of review for Track I applications should be
the same as other applications and the record should be complete,
notwithstanding the accelerated time frame. A few other comments also
supported providing for an examiner interview prior to a first Office
action in Track I applications at applicant's option.
Response: The Office has been encouraging compact prosecution
techniques in all applications and emphasizing the importance and use
of interviews over the past few years. It is noted that the suggestion
regarding after
[[Page 6375]]
final practice would likely increase the number of Office actions and
not encourage applicants to present the best reply after the first
Office action, which would extend the examination process and make it
less likely that the Office would be able to meet its goals.
Furthermore, as discussed previously, the Office is considering a sui
generis practice for prioritized applications under which an applicant
may file a single submission after final for a fee with the next action
being made final if the submission does not place the application in
condition for allowance. The level of review for Track I applications
will be the same as for other applications and examiners will be
expected to make the record complete and provide the same high quality
examination as they do for other applications. It is noted that there
does not appear to be any need as a result of implementation of Track I
to increase the time period in Sec. 1.99 for a third party to submit
references after publication.
Comment 18: One comment suggested a bidding system for Track I in
which patent applicants could bid on their place in line, with the
highest bids being given the highest priority, which could create a
large increase in fee payments and a surplus of resources which could
be used to decrease the time for other applications to be examined.
Another comment suggested having a nominal fee for Track I, instead of
a substantial fee, and permitting any business entity to have a certain
number of Track I applications per year, which would keep the number
and costs down.
Response: The Office does not have the statutory authority to
implement the suggested bidding system. Likewise, the Office does not
have the authority to set a nominal fee for requesting prioritized
examination. The Office only has the statutory authority to establish
fees to recover the estimated average cost of performing the service.
Rulemaking Considerations
A. Regulatory Flexibility Act: For the reasons set forth herein,
the Deputy General Counsel for General Law of the United States Patent
and Trademark Office has certified to the Chief Counsel for Advocacy of
the Small Business Administration that changes proposed in this notice
will not have a significant economic impact on a substantial number of
small entities. See 5 U.S.C. 605(b).
This notice proposes changes to implement an optional prioritized
examination process. The primary impact of the change on the public is
that applicants will have the option to request prioritized examination
by paying appropriate fees, filing a complete application via the
Office's electronic filing system (EFS-Web) with any filing and excess
claims fees due paid on filing, and limiting their applications to four
independent claims and thirty total claims. No applicant is required to
employ this optional prioritized examination process to obtain
examination of his or her application under the current procedures for
examination of an application for patent, or to obtain a patent
provided that the application meets the current conditions for the
applicants to be entitled to a patent. In addition, the availability of
this prioritized examination process will not have any negative impact
on any applicant who elects not to request the prioritized examination
process. Therefore, the changes proposed in this notice will not have a
significant economic impact on a substantial number of small entities.
B. Executive Order 12866 (Regulatory Planning and Review): This
rule making has been determined to be significant for purposes of
Executive Order 12866 (Sept. 30, 1993).
C. Executive Order 13132 (Federalism): This rule making does not
contain policies with federalism implications sufficient to warrant
preparation of a Federalism Assessment under Executive Order 13132
(Aug. 4, 1999).
D. Executive Order 13175 (Tribal Consultation): This rule making
will not: (1) Have substantial direct effects on one or more Indian
tribes; (2) impose substantial direct compliance costs on Indian tribal
governments; or (3) preempt tribal law. Therefore, a tribal summary
impact statement is not required under Executive Order 13175 (Nov. 6,
2000).
E. Executive Order 13211 (Energy Effects): This rule making is not
a significant energy action under Executive Order 13211 because this
rule making is not likely to have a significant adverse effect on the
supply, distribution, or use of energy. Therefore, a Statement of
Energy Effects is not required under Executive Order 13211 (May 18,
2001).
F. Executive Order 12988 (Civil Justice Reform): This rule making
meets applicable standards to minimize litigation, eliminate ambiguity,
and reduce burden as set forth in sections 3(a) and 3(b)(2) of
Executive Order 12988 (Feb. 5, 1996).
G. Executive Order 13045 (Protection of Children): This rule making
does not concern an environmental risk to health or safety that may
disproportionately affect children under Executive Order 13045 (Apr.
21, 1997).
H. Executive Order 12630 (Taking of Private Property): This rule
making will not effect a taking of private property or otherwise have
taking implications under Executive Order 12630 (Mar. 15, 1988).
I. Congressional Review Act: Under the Congressional Review Act
provisions of the Small Business Regulatory Enforcement Fairness Act of
1996 (5 U.S.C. 801 et seq.), prior to issuing any final rule, the
United States Patent and Trademark Office will submit a report
containing the final rule and other required information to the U.S.
Senate, the U.S. House of Representatives and the Comptroller General
of the Government Accountability Office. The changes in this notice are
not expected to result in an annual effect on the economy of 100
million dollars or more, a major increase in costs or prices, or
significant adverse effects on competition, employment, investment,
productivity, innovation, or the ability of United States-based
enterprises to compete with foreign-based enterprises in domestic and
export markets. Therefore, this notice is not expected to result in a
``major rule'' as defined in 5 U.S.C. 804(2).
J. Unfunded Mandates Reform Act of 1995: The changes proposed 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.
K. National Environmental Policy Act: This rule making will not
have any effect on the quality of environment and is thus categorically
excluded from review under the National Environmental Policy Act of
1969. See 42 U.S.C. 4321 et seq.
L. National Technology Transfer and Advancement Act: The
requirements of section 12(d) of the National Technology Transfer and
Advancement Act of 1995 (15 U.S.C. 272 note) are not applicable because
this rule making does not contain provisions which involve the use of
technical standards.
M. Paperwork Reduction Act: This rulemaking is proposed to
implement an optional prioritized examination process. The primary
impact of the
[[Page 6376]]
change on the public is that applicants will have the option to request
prioritized examination by paying appropriate fees, filing a complete
application via the Office's electronic filing system (EFS-Web) with
any filing and excess claims fees due paid on filing, and limiting
their applications to four independent claims and thirty total claims.
An applicant who wishes to participate in the program must submit a
certification and request to participate in the prioritized examination
program, preferably by using Form PTO/SB/424. The Office of Management
and Budget (OMB) has determined that, under 5 CFR 1320.3(h), Form PTO/
SB/424 does not collect ``information'' within the meaning of the
Paperwork Reduction Act of 1995. Therefore, this rule making does not
impose additional collection requirements under the Paperwork Reduction
Act which are subject to further review by OMB. Notwithstanding any
other provision of law, no person is required to respond to nor shall a
person be subject to a penalty for failure to comply with a collection
of information subject to the requirements of the Paperwork Reduction
Act unless that collection of information displays a currently valid
OMB control number.
List of Subjects in 37 CFR Part 1
Administrative practice and procedure, Courts, Freedom of
Information, Inventions and patents, Reporting and recordkeeping
requirements, Small businesses.
For the reasons set forth in the preamble, 37 CFR part 1 is
proposed to be amended as follows:
PART 1--RULES OF PRACTICE IN PATENT CASES
1. The authority citation for 37 CFR part 1 continues to read as
follows:
Authority: 35 U.S.C. 2(b)(2).
2. Section 1.17 is amended by adding paragraph (c) to read as
follows:
Sec. 1.17 Patent application and reexamination processing fees.
* * * * *
(c) For filing a request for prioritized examination under Sec.
1.102(e)--$4,000.
* * * * *
3. Section 1.102 is amended by revising paragraph (a) and adding
paragraph (e) to read as follows:
Sec. 1.102 Advancement of examination.
(a) Applications will not be advanced out of turn for examination
or for further action except as provided by this part, or upon order of
the Director to expedite the business of the Office, or upon filing of
a request under paragraph (b) or (e) of this section or upon filing a
petition or request under paragraph (c) or (d) of this section with a
showing which, in the opinion of the Director, will justify so
advancing it.
* * * * *
(e) A request for prioritized examination under this paragraph may
be filed only with an original utility or plant nonprovisional
application under 35 U.S.C. 111(a) filed via the Office's electronic
filing system (EFS-Web), that is complete as defined by Sec. 1.51(b),
with any fees due under Sec. 1.16 paid on filing. A request for
prioritized examination under this paragraph must be present upon
filing and must be accompanied by the prioritized examination fee set
forth in Sec. 1.17(c), the processing fee set forth in Sec. 1.17(i),
and the publication fee set forth in Sec. 1.18(d). Prioritized
examination under this paragraph will not be accorded to a design
application or reissue application, and will not be accorded to any
application that contains or is amended to contain more than four
independent claims, more than thirty total claims, or any multiple
dependent claim.
* * * * *
Dated: February 1, 2011.
David J. Kappos,
Under Secretary of Commerce for Intellectual Property and Director of
the United States Patent and Trademark Office.
[FR Doc. 2011-2585 Filed 2-3-11; 8:45 am]
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