[Federal Register Volume 79, Number 220 (Friday, November 14, 2014)]
[Rules and Regulations]
[Pages 68124-68127]
From the Federal Register Online via the Government Printing Office [www.gpo.gov]
[FR Doc No: 2014-27037]
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DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Part 1
[Docket No.: PTO-P-2014-0003]
RIN 0651-AC93
Changes To Permit Delayed Submission of Certain Requirements for
Prioritized Examination
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Final rule.
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SUMMARY: The Leahy-Smith America Invents Act includes provisions for
prioritized examination of patent applications (also referred to as
``Track I''), which have been implemented by the United States Patent
and Trademark Office (Office) in previous rulemakings. The Office
published an interim rule on March 5, 2014 (prioritized examination
interim rule), to simplify the Track I prioritized examination practice
to reduce the number of requests for prioritized examination that must
be dismissed. In order to enable rapid processing and examination of
those applications, the previous rulemakings provided that a request
for Track I prioritized examination requires, upon filing of the
application, an inventor's oath or declaration and all required fees,
and that the application contain no more than four independent claims,
thirty total claims, and no multiple dependent claims. If a request for
Track I prioritized examination failed to meet these requirements on
filing, then the request was dismissed. After operating under the
previous rulemakings for some time, the Office determined that the time
period for meeting the identified requirements could be expanded and
still enable the Office to timely examine the patent application.
Hence, on March 5, 2014, the Office published the prioritized
examination interim rule to expand the time period for meeting the
identified requirements. The Office received no comments from the
public in response. This final rule adopts as final the amendments to
the rules of practice originally set forth in the prioritized
examination interim rule.
DATES: Effective Date: This final rule is effective on November 14,
2014. The prioritized examination interim rule published on March 5,
2014 at 79 FR 12386 was effective on March 5, 2014.
Applicability Date: The changes to 37 CFR 1.102 apply only to
applications filed under 35 U.S.C. 111(a) on or after September 16,
2012, in which a first action has not been mailed.
FOR FURTHER INFORMATION CONTACT: John R. Cottingham, Director, Office
of Petitions, at (571) 272-7079, or Michael T. Cygan, Senior Legal
Advisor, Office of Patent Legal Administration, at (571) 272-7700.
SUPPLEMENTARY INFORMATION:
Executive Summary: Purpose: The prioritized examination interim
rule simplified prioritized examination (``Track I'') practice to
reduce the number of requests for prioritized examination that must be
dismissed and to improve access to prioritized examination. This final
rule adopts as final the amendments to the rules of practice originally
set forth in the prioritized examination interim rule.
Summary of Major Provisions: The prioritized examination provisions
(37 CFR 1.102(e)) formerly required that: (1) The inventor's oath or
declaration be present on filing; (2) all fees be paid upon filing; and
(3) the application as filed contain no more than four independent
claims, no more than thirty total claims, and no multiple dependent
claims. The prioritized examination interim rule revised 37 CFR
1.102(e) to provide that: (1) The filing of an inventor's oath or
declaration may be postponed in accordance with 37 CFR 1.53(f)(3) if an
application data sheet meeting the conditions specified in 37 CFR
1.53(f)(3)(i) is present upon filing; (2) if an application contains
more than four independent claims, more than thirty total claims, or
any multiple dependent claim, the applicant is given a non-extendable
one-month period to file an amendment to cancel any independent claims
in excess of four, any total claims in excess of thirty, and any
multiple dependent claim; and (3) any excess claims fees due under 37
CFR 1.16(h), (i), or (j) and any application size fee due under 37 CFR
1.16(s) is not required to be paid on filing. This final rule adopts as
final the amendments to the rules of practice originally set forth in
the prioritized examination interim rule.
Costs and Benefits: This rulemaking is not economically significant
under Executive Order 12866 (Sept. 30, 1993).
Background: Section 11(h) of the Leahy-Smith America Invents Act
provides for prioritized examination of an application. See Public Law
112-29, 125 Stat. 283, 324 (2011). Section 11(h) of the Leahy-Smith
America Invents Act also provides that the Office may by regulation
prescribe conditions for acceptance of a request for prioritized
examination. See id.
The Office implemented the Leahy-Smith America Invents Act
prioritized examination provision for applications upon filing,
referred to as ``Track I,'' in a final rule published on September 23,
2011. See Changes to Implement the Prioritized Examination Track (Track
I) of the Enhanced Examination Timing Control Procedures under the
Leahy-Smith America Invents Act, 76 FR 59050 (September 23, 2011). The
Office subsequently implemented prioritized examination for pending
applications after the filing of a proper request for continued
examination under 35 U.S.C. 132(b) and 37 CFR 1.114. See Changes to
Implement the Prioritized Examination for Requests for Continued
Examination, 76 FR 78566 (December 19, 2011).
The rule implementing prioritized examination, 37 CFR 1.102(e),
sets forth the requirements that must be met to permit a request for
prioritized examination to be granted. These requirements were selected
after public discussion with, and feedback from, patent practitioners
and stakeholders. These requirements were selected in such a manner as
to permit the Office to examine applications undergoing prioritized
examination in a timely manner. In furtherance of timely examination,
the Office required that requests for Track I prioritized examination
conform to all of the requirements listed in 37 CFR
[[Page 68125]]
1.102(e)(1) as of the filing date of the application.
Upon review of the implementation of the Track I program, the
Office has found that an unexpected number of requests for prioritized
examination were being dismissed for failure to meet the requirements
of 37 CFR 1.102(e) upon filing. In order to improve access to
prioritized examination, the Office reevaluated the necessity for each
requirement to be met upon filing. The Office published the prioritized
examination interim rule simplifying the Track I prioritized
examination practice as the Office determined that permitting certain
requirements to be met after the filing date of the application would
avoid dismissal of bona fide attempts to request Track I prioritized
examination and result in only minimal delay in the processing of the
Track I request and the subsequent examination.
Under the procedure set forth in the prioritized examination
interim rule, the requirements for prioritized examination now permit
an applicant to postpone submission of an inventor's oath and
declaration after the filing date of the application, so long as the
application as filed includes an executed application data sheet
meeting the conditions specified in 37 CFR 1.53(f)(3)(i). Additionally,
where a request for prioritized examination is received for an
application having more than four independent claims, more than thirty
total claims, or any multiple dependent claim, the Office notifies the
applicant and provides a non-extendable period of one month in which
the applicant may cancel or amend the claims accordingly. If the
applicant provides the required claim amendment or cancellation within
the one-month period, the Track I request is considered again. If the
applicant fails to place the application in conformance with the above-
listed claim requirements within that period, no further corrective
period is given, and the Track I request is dismissed.
Under the procedure set forth in the prioritized examination
interim rule, any excess claims fees due under 37 CFR 1.16(h), (i), or
(j) and any application size fee due under 37 CFR 1.16(s) are not
required to be paid on filing. An application in which excess claims
fees or the application size fee are outstanding is treated under the
provisions of 37 CFR 1.53(f)(4), which require that those fees be paid
prior to the expiration of the time period set for reply by the Office
in any notice of fee deficiency.
Discussion of Specific Rules
This final rule adopts as final the amendments to Sec. Sec. 1.102
originally set forth in the prioritized examination interim rule. The
following is a discussion of the amendments to Title 37 of the Code of
Federal Regulations, Part 1, in the prioritized examination interim
rule.
Section 1.102: The prioritized examination interim rule amended
Sec. 1.102(e)(1) to eliminate the requirement that the inventor's oath
or declaration be submitted on the filing date. An application having a
properly executed application data sheet that meets the requirements
set forth in Sec. 1.53(f)(3)(i) is eligible for prioritized
examination (provided that the conditions of Sec. 1.102(e) as revised
in the prioritized examination interim rule are met). Pursuant to Sec.
1.41(b), such an application data sheet sets the inventorship for the
application, and the applicant may delay submission of the inventor's
oath or declaration no later than the date on which the issue fee for
the patent is paid. See Changes To Implement the Inventor's Oath or
Declaration Provisions of the Leahy-Smith America Invents Act, 77 FR
48776, 48779-80 (Aug. 14, 2012), and Changes to Implement the Patent
Law Treaty, 78 FR 62367, 62376 (Oct. 21, 2013). Accordingly, the
prioritized examination interim rule amended Sec. 1.102(e)(1) to
provide that the application must include a specification as prescribed
by 35 U.S.C. 112 including at least one claim, a drawing when
necessary, and the inventor's oath or declaration on filing, except
that the filing of an inventor's oath or declaration may be postponed
in accordance with Sec. 1.53(f)(3) if an application data sheet
meeting the conditions specified in Sec. 1.53(f)(3)(i) is present upon
filing.
The prioritized examination interim rule also amended Sec.
1.102(e)(1) to eliminate the requirements that an application include
any excess claims fees due under Sec. 1.16(h), (i), or (j) or any
application size fee due under Sec. 1.16(s) on filing. An application
in which excess claims fees or the application size fee are outstanding
is treated under the provisions of Sec. 1.53(f)(4), which require that
those fees be paid prior to the expiration of the time period set for
reply by the Office in any notice of fee deficiency in order to avoid
abandonment.
The prioritized examination interim rule further amended Sec.
1.102(e)(1) to eliminate the requirements that an application not
contain more than four independent claims, not contain more than thirty
total claims, and not contain any multiple dependent claim upon filing.
Upon review of the Track I request, the Office will provide the
applicant a non-extendable one-month period in which to submit an
amendment cancelling claims, or removing multiple dependencies. If,
upon expiration of that one-month period, the application still
contains more than four independent claims, more than thirty total
claims, or a multiple dependent claim, the request for prioritized
examination will be dismissed.
Section 1.102(e)(1) maintains the requirement that an application
for which prioritized examination is requested must include payment of
the basic filing fee, the search fee, and examination fees on filing,
or the application will be ineligible for Track I. Specifically, Sec.
1.102(e)(1) continues to require that if the application is a utility
application, it must be filed via the Office's electronic filing system
and include the filing fee under Sec. 1.16(a), search fee under Sec.
1.16(k), and examination fee under Sec. 1.16(o) upon filing. Section
1.102(e)(1) also continues to require that if the application is a
plant application, it must include the filing fee under Sec. 1.16(c),
search fee under Sec. 1.16(m), and examination fee under Sec. 1.16(q)
upon filing.
Section 1.102(e) further maintains the requirement that an
application for which prioritized examination is sought must be
accompanied by the prioritized examination fee set forth in Sec.
1.17(c), the processing fee set forth in Sec. 1.17(i)(1), and the
publication fee set forth in Sec. 1.18(d). The request and each of
these fees must be present on the same day the application is filed, or
the application is ineligible for Track I.
The prioritized examination interim rule, while providing
additional time for the filing of an inventor's oath or declaration,
for payment of any excess claims fees or any application size fee, and
for filing an amendment to limit an application to four independent
claims and thirty total claims without any multiple dependent claim,
does not remove the requirement that those items be filed within the
appropriate time period. Applicants are reminded that any request for
an extension of time will cause an outstanding Track I request to be
dismissed, or cause an application to lose its Track I status if
previously conferred upon that application. See Changes to Implement
the Prioritized Examination Track (Track I) of the Enhanced Examination
Timing Control Procedures under the Leahy-Smith America Invents Act, 76
FR 59050, 59051 (September 23, 2011).
[[Page 68126]]
To reduce delays in processing the application, the Office
recommends that all of the requirements under Sec. 1.102(e)(1) be met
upon filing. An applicant should not delay meeting a requirement merely
because an additional time period will be supplied. Applicants should
recognize that the twelve-month goal for final disposition of the
application is measured from the time the Track I request is granted,
not from the filing of the application. As an applicant is seeking
Track I prioritized examination to receive rapid examination, any delay
in meeting the requirements for Track I merely adds processing time
onto the twelve-month goal for final disposition of the application.
The changes in the prioritized examination interim rule apply to
any application filed under 35 U.S.C. 111(a) on or after September 16,
2012, in which a first action has not been mailed. An applicant may
have previously submitted a Track I request which was dismissed, but
would have been granted, or the applicant would have been provided
additional time to meet a requirement, if the changes to the interim
rule had been in effect at the time of the dismissal. An applicant may
file a request for reconsideration of the dismissal of the previous
Track I request based upon the changes set forth in this interim rule
if: (1) The application is still pending; (2) the application contains,
or has been amended to contain, no more than four independent claims,
no more than thirty total claims, and no multiple dependent claims; and
(3) a first Office action has not been mailed in the application. Any
such petition should be directed to the Office of Petitions.
Comments: The Office received no comments in response to the
prioritized examination interim rule.
Rulemaking Considerations
A. Administrative Procedure Act: This final rule simply adopts as
final changes in the prioritized examination interim rule, which
pertain to the procedures that an applicant must follow in requesting
Track I prioritized examination and do not change the substantive
criteria of patentability. Therefore, the changes in this rulemaking
involve rules of agency practice and procedure, and/or interpretive
rules. See JEM Broad. Co. v. FCC, 22 F.3d 320, 326 (D.C. Cir. 1994)
(``[T]he critical feature of the procedural exception [in 5 U.S.C.
553(b)(A)] is that it covers agency actions that do not themselves
alter the rights or interests of parties, although [they] may alter the
manner in which the parties present themselves or their viewpoints to
the agency'') (quoting Batterton v. Marshall, 648 F.2d 694, 707 (D.C.
Cir. 1980)); see also Bachow Commc'ns Inc. v. FCC, 237 F.3d 683, 690
(D.C. Cir. 2001) (rules governing an application process are procedural
under the Administrative Procedure Act); Inova Alexandria Hosp. v.
Shalala, 244 F.3d 342, 350 (4th Cir. 2001) (rules for handling appeals
were procedural where they did not change the substantive standard for
reviewing claims).
In addition, the Office, pursuant to authority at 5 U.S.C.
553(b)(3)(B), found good cause to adopt the changes in the prioritized
examination interim rule without prior notice and an opportunity for
public comment, as such procedures would have been contrary to the
public interest. Delay in the promulgation of the prioritized
examination interim rule to provide prior notice and comment procedures
would have caused harm to those applicants who filed a request for
Track I prioritized examination in an application that did not contain
the inventor's oath or declaration, did not include all required fees
on filing, or that contained more than four independent claims, more
than thirty total claims, or a multiple dependent claim. Immediate
implementation of the changes in the prioritized examination interim
rule was in the public interest because: (1) The public did not need
time to conform its conduct as the changes in the prioritized
examination interim rule did not add any additional requirement for
requesting prioritized examination of an application; and (2) those
applicants who were ineligible for prioritized examination due to the
previously stated reasons benefited from the changes in the prioritized
examination interim rule. See Nat'l Customs Brokers & Forwarders Ass'n
v. U.S., 59 F.3d 1219, 1223-24 (Fed. Cir. 1995).
Accordingly, prior notice and opportunity for public comment were
not required pursuant to 5 U.S.C. 553(b) or (c) (or any other law). See
Cooper Techs. Co. v. Dudas, 536 F.3d 1330, 1336-37 (Fed. Cir. 2008)
(stating that 5 U.S.C. 553, and thus 35 U.S.C. 2(b)(2)(B), does not
require notice and comment rulemaking for ``interpretative rules,
general statements of policy, or rules of agency organization,
procedure, or practice'') (quoting 5 U.S.C. 553(b)(A)). In addition,
pursuant to authority at 5 U.S.C. 553(d)(1), the changes in the
prioritized examination interim rule were made immediately effective
because they relieved restrictions in the requirements for requesting
prioritized examination of an application.
B. Regulatory Flexibility Act: As prior notice and an opportunity
for public comment were not required pursuant to 5 U.S.C. 553, or any
other law, neither a regulatory flexibility analysis nor a
certification under the Regulatory Flexibility Act (5 U.S.C. 601 et
seq.) is required. See 5 U.S.C. 603.
C. Executive Order 12866 (Regulatory Planning and Review): This
rulemaking has been determined to be not significant for purposes of
Executive Order 12866 (Sept. 30, 1993).
D. Executive Order 13563 (Improving Regulation and Regulatory
Review): The Office has complied with Executive Order 13563.
Specifically, the Office has, to the extent feasible and applicable:
(1) Made a reasoned determination that the benefits justify the costs
of the rule; (2) tailored the rule to impose the least burden on
society consistent with obtaining the regulatory objectives; (3)
selected a regulatory approach that maximizes net benefits; (4)
specified performance objectives; (5) identified and assessed available
alternatives; (6) involved the public in an open exchange of
information and perspectives among experts in relevant disciplines,
affected stakeholders in the private sector and the public as a whole,
and provided on-line access to the rulemaking docket; (7) attempted to
promote coordination, simplification, and harmonization across
government agencies and identified goals designed to promote
innovation; (8) considered approaches that reduce burdens and maintain
flexibility and freedom of choice for the public; and (9) ensured the
objectivity of scientific and technological information and processes.
E. Executive Order 13132 (Federalism): This rulemaking does not
contain policies with federalism implications sufficient to warrant
preparation of a Federalism Assessment under Executive Order 13132
(Aug. 4, 1999).
F. Executive Order 13175 (Tribal Consultation): This rulemaking
will not: (1) Have substantial direct effects on one or more Indian
tribes; (2) impose substantial direct compliance costs on Indian tribal
governments; or (3) preempt tribal law. Therefore, a tribal summary
impact statement is not required under Executive Order 13175 (Nov. 6,
2000).
G. Executive Order 13211 (Energy Effects): This rulemaking is not a
significant energy action under Executive Order 13211 because this
rulemaking is not likely to have a significant adverse effect on the
supply, distribution, or use of energy. Therefore, a Statement of
Energy Effects is not
[[Page 68127]]
required under Executive Order 13211 (May 18, 2001).
H. Executive Order 12988 (Civil Justice Reform): This rulemaking
meets applicable standards to minimize litigation, eliminate ambiguity,
and reduce burden as set forth in sections 3(a) and 3(b)(2) of
Executive Order 12988 (Feb. 5, 1996).
I. Executive Order 13045 (Protection of Children): This rulemaking
does not concern an environmental risk to health or safety that may
disproportionately affect children under Executive Order 13045 (Apr.
21, 1997).
J. Executive Order 12630 (Taking of Private Property): This
rulemaking will not affect a taking of private property or otherwise
have taking implications under Executive Order 12630 (Mar. 15, 1988).
K. Congressional Review Act: Under the Congressional Review Act
provisions of the Small Business Regulatory Enforcement Fairness Act of
1996 (5 U.S.C. 801 et seq.), prior to issuing any final rule, the
United States Patent and Trademark Office will submit a report
containing the rule and other required information to the United States
Senate, the United States House of Representatives, and the Comptroller
General of the Government Accountability Office. The changes in this
rulemaking 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 final rule is not a ``major rule''
as defined in 5 U.S.C. 804(2).
L. Unfunded Mandates Reform Act of 1995: The changes set forth in
this 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 dollars (as adjusted) or more in any
one year, or a Federal private sector mandate that will result in the
expenditure by the private sector of 100 million dollars (as adjusted)
or more in any one year, and will not significantly or uniquely affect
small governments. Therefore, no actions are necessary under the
provisions of the Unfunded Mandates Reform Act of 1995. See 2 U.S.C.
1501 et seq.
M. National Environmental Policy Act: This rulemaking will not have
any effect on the quality of the environment and is thus categorically
excluded from review under the National Environmental Policy Act of
1969. See 42 U.S.C. 4321 et seq.
N. National Technology Transfer and Advancement Act: The
requirements of section 12(d) of the National Technology Transfer and
Advancement Act of 1995 (15 U.S.C. 272 note) are not applicable because
this rulemaking does not contain provisions which involve the use of
technical standards.
O. Paperwork Reduction Act: The Paperwork Reduction Act of 1995 (44
U.S.C. 3501 et seq.) requires that the Office consider the impact of
paperwork and other information collection burdens imposed on the
public. This rulemaking involves information collection requirements
which are subject to review by the Office of Management and Budget
(OMB) under the Paperwork Reduction Act of 1995 (44 U.S.C. 3501-3549).
An applicant who wishes to participate in the prioritized examination
program must submit a certification and request to participate in the
prioritized examination program, preferably by using Form PTO/AIA/424.
OMB has determined that, under 5 CFR 1320.3(h), Form PTO/AIA/424 does
not collect ``information'' within the meaning of the Paperwork
Reduction Act of 1995. This rule making does not impose any additional
collection requirements under the Paperwork Reduction Act which are
subject to further review by OMB.
Notwithstanding any other provision of law, no person is required
to respond to, nor shall a person be subject to a 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.
0
For the reasons set forth in the preamble, the interim rule amending 37
CFR part 1 which was published at 79 FR 12386-12390 on March 5, 2014,
is adopted as a final rule without change.
Dated: November 6, 2014.
Michelle K. Lee,
Deputy Under Secretary of Commerce for Intellectual Property and Deputy
Director of the United States Patent and Trademark Office.
[FR Doc. 2014-27037 Filed 11-13-14; 8:45 am]
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