Federal Register / Vol. 76, No. 64 / Monday, April 4, 2011 / Rules and Regulations 18399 

their discretionary regulatory actions. In 

particular, the Act addresses actions 

that may result in the expenditure by a 

State, local, or tribal government, in the 

aggregate, or by the private sector of 

$100,000,000 (adjusted for inflation) or 

more in any one year. Though this rule 

will not result in such an expenditure, 

we do discuss the effects of this rule 

elsewhere in this preamble. 

Taking of Private Property 

This rule will not cause a taking of 

private property or otherwise have 

taking implications under Executive 

Order 12630, Governmental Actions and 

Interference with Constitutionally 

Protected Property Rights. 

Civil Justice Reform 

This rule meets applicable standards 

in sections 3(a) and 3(b)(2) of Executive 

Order 12988, Civil Justice Reform, to 

minimize litigation, eliminates 

ambiguity, and reduce burden. 

Protection of Children 

We have analyzed this rule under 

Executive Order 13045, Protection of 

Children from Environmental Health 

Risks and Safety Risks. This rule is not 

an economically significant rule and 

does not create an environmental risk to 

health or risk to safety that may 

disproportionately affect children. 

Indian Tribal Governments 

This rule does not have tribal 

implications under Executive Order 

13175, Consultation and Coordination 

with Indian Tribal Governments, 

because it does not have a substantial 

direct effect on one or more Indian 

tribes, on the relationship between the 

Federal Government and Indian tribes, 

or on the distribution of power and 

responsibilities between the Federal 

Government and Indian tribes. 

Energy Effects 

We have analyzed this rule under 

Executive Order 13211, Actions 

Concerning Regulations That 

Significantly Affect Energy Supply, 

Distribution, or Use. We have 

determined that it is not a ‘‘significant 

energy action’’ under that order because 

it is not a ‘‘significant regulatory action’’ 

under Executive Order 12866 and is not 

likely to have a significant adverse effect 

on the supply, distribution, or use of 

energy. The Administrator of the Office 

of Information and Regulatory Affairs 

has not designated it as a significant 

energy action. Therefore, it does not 

require a Statement of Energy Effects 

under Executive Order 13211. 

Technical Standards 

The National Technology Transfer 

and Advancement Act (NTTAA) (15 

U.S.C. 272 note) directs agencies to use 

voluntary consensus standards in their 

regulatory activities unless the agency 

provides Congress, through the Office of 

Management and Budget, with an 

explanation of why using these 

standards would be inconsistent with 

applicable law or otherwise impractical. 

Voluntary consensus standards are 

technical standards (e.g., specifications 

of materials, performance, design, or 

operation; test methods; sampling 

procedures; and related management 

systems practices) that are developed or 

adopted by voluntary consensus 

standards bodies. 

This rule does not use technical 

standards. Therefore, we did not 

consider the use of voluntary consensus 

standards. 

Environment 

We have analyzed this rule under 

Department of Homeland Security 

Management Directive 023–01 and 

Commandant Instruction M16475.lD, 

which guide the Coast Guard in 

complying with the National 

Environmental Policy Act of 1969 

(NEPA) (42 U.S.C. 4321–4370f), and 

have concluded this action is one of a 

category of actions that do not 

individually or cumulatively have a 

significant effect on the human 

environment. This rule is categorically 

excluded, under figure 2–1, paragraph 

(34)(g), of the Instruction. This rule 

involves the creation of safety zones. An 

environmental analysis checklist and a 

categorical exclusion determination will 

be available in the docket where 

List of Subjects in 33 CFR Part 165 

Harbors, Marine safety, Navigation 

(water), Reporting and recordkeeping 

requirements, Security measures, 

Waterways. 

For the reasons discussed in the 

preamble, the Coast Guard amends 33 

CFR part 165 as follows: 

PART 165—REGULATED NAVIGATION 

AREAS AND LIMITED ACCESS AREAS 

■ 1. The authority citation for part 165 

continues to read as follows: 

Authority: 33 U.S.C. 1226, 1231; 46 U.S.C. 

Chapter 701, 3306, 3703; 50 U.S.C. 191, 195; 

33 CFR 1.05–1, 6.04–1, 6.04–6, 160.5; Pub. L. 

107–295, 116 Stat. 2064; Department of 

Homeland Security Delegation No. 0170.1. 

■ 2. Revise § 165.T13–175 to read as 

follows: 

§ 165.T13–175 Safety Zones; M/V Davy 

Crockett, Columbia and Willamette Rivers. 

(a) Location: The following areas are 

safety zones: 

(1) All waters of the Columbia River 

encompassed within the following four 

points: point one at 45°34′59.16′′ N/ 

122°28′27.19′′ W, point two at 

45°34′54.95′′ N/122°28′27.84′′ W, point 

three at 45°34′54.91′′ N/122°28′14.48′′ 

W, and point four at 45°34′57.43′′ N/ 

122°26′14.63′′ W. Geographically this 

area encompasses all waters of the 

Columbia River within a rectangle 

starting at approximately 200 ft up river 

of the M/V DAVY CROCKETT 

extending to 200 ft toward the river 

channel from the M/V DAVEY 

CROCKETT and then ending 200 ft 

down river the M/V DAVY CROCKETT. 

The moving safety zone created by 

this rule will encompass all waters of 

the Columbia and Willamette Rivers 

within 200 feet in all directions around 

any portion of the M/V DAVY 

CROCKETT. 

(b) Regulations. In accordance with 

the general regulations in 33 CFR Part 

165, Subpart C, no person may enter or 

remain in the safety zones created in 

this section or bring, cause to be 

brought, or allow to remain in the safety 

zones created in this section any 

vehicle, vessel, or object unless 

authorized by the Captain of the Port, 

Columbia River or his designated 

representative. 

(c) Enforcement Period. The safety 

zones created in this section will be in 

effect from March 11, 2011 through 

April 17, 2011 unless cancelled sooner 

by the Captain of the Port, Columbia 

River. 

Dated: March 14, 2011. 

L.R. Tumbarello, 

Captain, U.S. Coast Guard, Acting Captain 

of the Port, Columbia River. 

[FR Doc. 2011–7890 Filed 4–1–11; 8:45 am] 

BILLING CODE 9110–04–P 

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: Final rule. 


sroberts on DSK69SOYB1PROD with RULES
18400 Federal Register / Vol. 76, No. 64 / Monday, April 4, 2011 / Rules and Regulations 

SUMMARY: The United States Patent and 

Trademark Office (Office) is revising the 

rules of practice in patent cases to 

implement a procedure under which 

applicants may request prioritized 

examination at the time of filing of an 

application upon payment of 

appropriate fees and compliance with 

certain requirements. In June of 2010, 

the 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 from the public. 

The vast majority of public comments 

and input that the Office received were 

supportive of the prioritized 

examination track (Track I) portion of 

the 3-Track proposal. While the Office 

is in the process of considering and 

revising the other portions of the 3- 

Track proposal in view of the public 

comments and input, the Office wishes 

to implement the prioritized 

examination track (Track I) now to 

provide the procedure for prioritized 

examination to applicants as quickly as 

possible. In February of 2011, the Office 

published a notice of proposed rule 

making to set forth the proposed 

procedure for prioritized examination 

and to seek public comments on the 

proposed procedure. The Office 

considered the public comments and 

revised the proposed procedure in view 

of the public comments. The Office, in 

this final rule, is revising the rules of 

practice to implement the optional 

procedure for prioritized examination. 

The aggregate goal for processing 

applications under prioritized 

examination is to provide a final 

disposition within twelve months of 

prioritized status being granted. The 

Office is initially limiting requests for 

prioritized examination to a maximum 

of 10,000 applications during the 

remainder of fiscal year 2011. 

DATES: Effective Date: The changes set 

forth in this rule are effective May 4, 

2011. Applicability date: A request for 

prioritized examination may be 

submitted with any original utility or 

plant application filed on or after May 

4, 2011. 

FOR FURTHER INFORMATION CONTACT: 

Eugenia A. Jones, Kathleen Kahler 

Fonda, or Michael T. Cygan, Office of 

Patent Legal Administration, Office of 

the Associate Commissioner for Patent 

Examination Policy, by telephone at 

(571) 272–7727, (571) 272–7754 or (571) 

272–7700, 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 Eugenia A. Jones. 

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 (3-Track). 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 

implement 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, in addition to requesting 

written comments, conducted a public 

meeting to collect input from the public. 

The vast majority of public comments 

and input that the Office received was 

supportive of the prioritized 

examination track (Track I) portion of 

the 3-Track proposal. While the Office 

is in the process of considering and 

revising the Track III proposal (a request 

for a delay in docketing the application 

for examination) in view of the public 

comments and input, the Office wishes 

to implement the prioritized 

examination track (Track I) now to 

provide the optional procedure for 

prioritized examination to applicants as 

quickly as possible. 

In February of 2011, the Office 

published a notice of proposed rule 

making to set forth the proposed 

procedure for prioritized examination 

and to seek public comments on the 

proposed procedure. See Changes to 

Implement the Prioritized Examination 

Track (Track I) of the Enhanced 

Examination Timing Control 

Procedures, 76 FR 6369 (Feb. 4, 2011), 

1364 Off. Gaz. Pat. Office 50 (March 1, 

2011). The Office proposed, among 

other changes, a fee for filing a request 

for prioritized examination under 37 

CFR 1.102(e) in the amount of $4,000, 

in addition to filing fees for the 

application. Since the majority of the 

public comments supported the 

optional prioritized examination 

procedure, the Office is adopting the 

proposed procedure for prioritized 

examination (Track I). 

The Office, in this final rule, is 

revising the rules of practice to 

implement the optional procedure for 

prioritized examination. The aggregate 

goal for processing applications under 

prioritized examination is to provide a 

final disposition within twelve months 

of prioritized status being granted. The 

Office is limiting requests for prioritized 

examination under 37 CFR 1.102(e) to a 

maximum of 10,000 applications during 

fiscal year 2011. The Office will revisit 

this limit at the end of fiscal year 2011 

to evaluate what the appropriate 

maximum should be, if any, for future 

years. 

The fee for filing a request for 

prioritized examination under 37 CFR 

1.102(e) is set at $4,000.00. The fees due 

on filing for an application for which 

prioritized examination is being sought 

are the filing fees (including any 

applicable excess claims and 

application size fees), the prioritized 

examination fee, processing fee, and 

publication fee. Therefore, the fee 

amount due on filing for a utility 

application for which prioritized 

examination is being sought (not 

including any applicable excess claims 

and application size fees) is $5,520 

($4,892 for a small entity): (1) The 

$1,090 ($462 small entity) in filing fees 

which include the $330 ($82 small 

entity filing by EFS-Web) basic filing 

fee, the $540 ($270 small entity) search 

fee, and the $220 ($110 small entity) 

examination fee; (2) the $4,000 

prioritized examination fee; (3) the $130 

processing fee; and (4) the $300 

publication fee. 

Under the Office’s current statutory 

authority, the Office is not permitted to 

reduce the prioritized examination fee 

for small entity applicants. The Office 

indicated in the notice of proposed rule 

making that if legislation is passed 

providing a fifty percent fee reduction 

for providing prioritized examination 

for small entities under 35 U.S.C. 

41(h)(1) and providing 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 $4800 ($2400 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 

Locating and Monitoring (PALM) 

system). See Changes to Implement the 

Prioritized Examination Track (Track I) 


sroberts on DSK69SOYB1PROD with RULES
Federal Register / Vol. 76, No. 64 / Monday, April 4, 2011 / Rules and Regulations 18401 

of the Enhanced Examination Timing 

Control Procedures, 76 FR at 6370, 1364 

Off. Gaz. Pat. Office at 51. Section 9(i) 

of the America Invents Act provides that 

‘‘[t]he Director shall reduce fees for 

providing prioritized examination of 

utility and plant patent applications by 

50 percent for small entities that qualify 

for reduced fees under section 41(h)(1) 

of title 35, United States Code, so long 

as the fees of the prioritized 

examination program are set to recover 

the estimated cost of the program,’’ and 

§ 9(j) of the America Invents Act 

provides that this change is effective on 

the date of enactment of S. 23. See S. 23, 

112th Cong. (2011). S. 23 was passed by 

the United States Senate on March 8, 

2011. Neither S. 23 nor any other 

legislation, however, has been enacted 

that provides fifty percent fee reduction 

for providing prioritized examination 

under 37 CFR 1.102(e) for small entities. 

If S. 23 is enacted into law, the fee for 

providing prioritized examination under 

37 CFR 1.102(e) will be $4,800 ($2,400 

for small entities) and these fee amounts 

will be applicable to any request for 

providing prioritized examination filed 

on or after the date of enactment of S. 

23. Thus, if S. 23 or similar legislation 

that provides a fifty percent fee 

reduction for prioritized examination 

for small entities is enacted into law, the 

fee amount due on filing for a utility 

application for which prioritized 

examination is being sought (not 

including any applicable excess claims 

and application size fees) is $6,320 

($3,292 for a small entity): (1) The 

$1,090 ($462 small entity) in filing fees 

which include the $330 ($82 small 

entity filing by EFS-Web) filing fee, the 

$540 ($270 small entity) search fee, and 

the $220 ($110 small entity) 

examination fee; (2) the $4,800 ($2,400 

small entity) prioritized examination 

fee; (3) the $130 processing fee; and (4) 

the $300 publication fee. 

Under prioritized examination, an 

application will 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 prioritized examination is 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 under 

prioritized examination, however, 

would not be accorded special status 

throughout its entire course of appeal or 

interference before the BPAI, or after the 

filing of a request for continued 

examination. 

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). In the event, 

however, an applicant files a petition for 

an extension of time to file a reply, the 

prioritized examination of the 

application will be terminated. In 

addition, filing a request for a 

suspension of action or an amendment 

to the application which results in more 

than four independent claims, more 

than thirty total claims, or a multiple 

dependent claim, prioritized 

examination will terminate. 

To maximize the benefit of prioritized 

examination, applicants 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 set 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. A description of what it 

means for an application to be in 

condition for examination is provided at 

MPEP § 708.02(a) (subsection VIII.C). 

The requirements for requesting 

prioritized examination are summarized 

below. A patent application may be 

granted prioritized examination status 

under the following conditions: 

(1) The application must be a new 

original utility or plant nonprovisional 

application filed under 35 U.S.C. 111(a) 

on or after May 4, 2011, the effective 

date of this final rule. The procedure for 

prioritized examination does not apply 

to international applications, design 

applications, reissue applications, 

provisional applications, and 

reexamination proceedings. Applicants 

may request prioritized examination for 

a continuing application (e.g., a 

continuation or divisional application) 

by filing a request and the required fees 

including the $4,000 prioritized 

examination fee. However, a continuing 

application will not automatically be 

given prioritized examination status 

based on the request filed in the parent 

application. Each continuing 

application must on its own meet all 

requirements for prioritized 

examination under 37 CFR 1.102(e). 

(2) The application must be complete 

under 37 CFR 1.51(b) including any 

excess claims fees paid on filing, and 

the application must be filed via the 

Office’s electronic filing system (EFSWeb) if it is a utility application. Thus, 

the application must be filed with an 

oath or declaration under 37 CFR 1.63, 

the basic filing fee, the search fee, the 

examination fee, any excess claims fees, 

and any application size fee. 

(3) The application must contain no 

more than four independent claims and 

no more than thirty total claims. The 

application must not contain any 

multiple dependent claims. 

(4) The request for prioritized 

examination must be filed with the 

application in compliance with 37 CFR 

1.102(e) accompanied by 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). Applicants are 

advised to use the certification and 

request form PTO/SB/424 which is 

available on EFS-Web. 

(5) The request for prioritized 

examination may be accepted if the 

requirements under 37 CFR 1.102(e) are 

satisfied and the limit for the number of 

requests for the year has not been 

reached. The Office is limiting requests 

for prioritized examination under 37 

CFR 1.102(e) to a maximum of 10,000 

applications during fiscal year 2011. 

The Office will revisit this limit at the 

end of fiscal year 2011 to evaluate what 

the appropriate maximum should be, if 

any. 

Discussion of Specific Rules 

Title 37 of the Code of Federal 

Regulations, Part 1, is proposed to be 

amended as follows: 

Section 1.17: The Office is 

implementing a procedure for 

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 

§ 1.102(e). Section 1.17(c) is amended to 

set the fee for filing a request for 

prioritized examination under § 1.102(e) 

at $4,000.00. Section 1.17(i) is amended 

to add a reference for requesting 

prioritized examination of an 

application under § 1.102(e). 


sroberts on DSK69SOYB1PROD with RULES
18402 Federal Register / Vol. 76, No. 64 / Monday, April 4, 2011 / Rules and Regulations 

Section 1.102: Section 1.102 is 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, § 1.102(a) is 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 

§ 1.102(e). Section 1.102(e) is added to 

set forth the requirements for filing a 

request for prioritized examination, 

which provides 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) 

that is complete as defined by § 1.51(b), 

with any fees due under § 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 application is filed via 

the Office’s electronic filing system 

(EFS–Web) if it is a utility application; 

(3) the request for prioritized 

examination, including the prioritized 

examination fee set forth in § 1.17(c), 

the processing fee set forth in § 1.17(i), 

and the publication fee set forth in 

§ 1.18(d) are present upon filing; and 

(4) 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. Because plant applications may 

not be filed via EFS-Web, the Office will 

accept a request for prioritized 

examination in paper when it 

accompanies the filing of a plant 

application. 

As discussed previously, a request for 

prioritized examination may be 

accepted if the requirements under 

§ 1.102(e) are satisfied and the limit for 

the number of requests has not been 

reached. The Office is limiting requests 

for prioritized examination under 

§ 1.102(e) to a maximum of 10,000 

applications during the remainder of 

fiscal year 2011. The Office will revisit 

this limit at the end of fiscal year 2011 

to evaluate what the appropriate 

maximum should be, if any. 

Response to Comments: In February 

of 2011, the Office published a notice of 

proposed rule making to set forth the 

proposed procedure for prioritized 

examination and to invite the public to 

submit written comments on the 

proposed procedure by March 7, 2011. 

See Changes to Implement the 

Prioritized Examination Track (Track I) 

of the Enhanced Examination Timing 

Control Procedures, 76 FR 6369 (Feb. 4, 

2011), 1364 Off. Gaz. Pat. Office 50 

(March 1, 2011) (notice of proposed rule 

making). The Office received twelve 

written comments from intellectual 

property organizations, industry, 

academic and research institutions, 

individual patent practitioners and the 

general public. The Office has 

considered all of the public comments 

that were received by March 7, 2011. 

The comments germane to the changes 

set forth in this notice for prioritized 

examination and the Office’s responses 

to those comments are provided below. 

Comment 1: A few comments 

indicated that the Track I proposal has 

merit, but should be implemented and 

maintained only if the Office is 

permitted to retain all the fee income 

generated by applicants seeking Track 1 

status. One comment believed it is 

premature for the Office to be 

implementing a rule making that 

depends on increased spending 

authority, given the uncertain status of 

the Office’s budget. The comment was 

concerned that all fees collected by the 

Office are still not made available to the 

agency in the current fiscal year and 

Congress has not authorized a budget 

that would permit the Office to retain 

any fees collected under the prioritized 

examination program. One comment 

was concerned about the ability of the 

Office to offer prioritized examination 

under the Track I program without 

delaying examination of non-prioritized 

applications, particularly since the 

Office will not have any additional 

resources to conduct prioritized 

examination of Track I applications at 

least until it is able to hire and train 

additional examiners, which it may not 

be able to do under current budget and 

hiring restrictions. 

Response: Track I prioritized 

examination is being implemented as a 

result of a discussion between the Office 

and its stakeholders, which has 

included requests for written comments 

and a public meeting. The vast majority 

of public input is supportive of 

prioritized examination, which is 

designed to provide important benefits 

to the Office and its stakeholders, 

including greater control to applicants 

as to when their utility and plant 

applications are examined, and greater 

efficiency in the patent examination 

process. In view of this widespread 

support, the Office wishes to implement 

the procedure so as to provide the 

procedure to applicants as quickly as 

possible. The President’s Fiscal Year 

2012 Budget Request for the Office 

includes the revenue that is expected to 

be generated by the prioritized 

examination program. The Office 

appreciates that implementation of the 

Track I program could have an effect on 

the examination of non-prioritized 

applications during fiscal year 2011 due 

to the current budget situation and its 

impact on the Office’s ability to hire 

new examiners, but any effect should 

not extend into future fiscal years. 

Comment 2: One comment stated that 

the separate processing fee of $130 

under § 1.17(i) should be eliminated if 

already covered by the $4,000 fee set by 

proposed § 1.17(c). If the processing fee 

is not covered, then for the sake of 

clarity there should be one fee of $4,130 

set by proposed § 1.17(c), and the 

§ 1.17(i) fee should be eliminated. 

Response: The processing fee is for 

processing the request for prioritized 

examination, which is separate and 

apart from the prioritized examination 

cost. The Office is tracking the fees 

separately and thus treating them as two 

different fees. 

Comment 3: One comment stated that 

the publication fee under § 1.18(d) 

should not be required from an 

applicant as an up-front fee because the 

application might never publish or issue 

as a patent. 

Response: The publication fee under 

§ 1.18(d) is being required as a condition 

of the Track I program. If an applicant 

can make the certification required by 

35 U.S.C. 122(b)(2)(B)(i) and § 1.213(a), 

the applicant may request 

nonpublication under 35 U.S.C. 

122(b)(2)(B)(i) in an application in 

which a request for prioritized 

examination is also being filed. 

However, the publication fee is still 

required to be paid on filing of the 

application. Applicant may file a 

nonpublication request upon filing of 

the application and the nonpublication 

request may be rescinded at any time. 

Submission of the publication fee set 

forth in § 1.18(d) at the time of filing 

will save time and reduce costs for the 

Office. If the application is not 

published as a patent application 

publication and the application issues 

as a patent, the applicant may request a 

refund of the publication fee in 

accordance with MPEP § 1126. 

Comment 4: One comment requested 

clarification regarding whether the 

publication fee under § 1.18(d) and the 

processing fee under § 1.17(i) were 

required to be paid on filing to 

participate in the Track I program, or 

whether the fees are only required if 

they are applicable. The comment 

requested clarification regarding the 

nature of the processing fee and 

questioned whether the processing fee 

was required only if early publication 

was requested. 

Response: Both the publication fee 

under § 1.18(d) and the processing fee 

under § 1.17(i) are required to be paid at 

the time of filing by any applicant 

requesting prioritized examination 


sroberts on DSK69SOYB1PROD with RULES
Federal Register / Vol. 76, No. 64 / Monday, April 4, 2011 / Rules and Regulations 18403 

under § 1.102(e). The processing fee is 

for processing the request for prioritized 

examination. It is not a fee for 

requesting early publication. 

Comment 5: A few comments 

indicated that the fee for prioritized 

examination is too high. One comment 

stated that the fee should not exceed 

patent application fees and thus should 

be less than one thousand dollars. If the 

fee does significantly exceed patent 

application fees, then a greater benefit 

should be given such as a three-month 

time period from the request until the 

final examination result. One comment 

stated that the Office has not explained 

whether it would cost $4,000 more to 

examine a prioritized application than a 

regular application, or whether the fee 

is for the purpose of supporting more 

examiners to examine all applications. 

Response: As stated in the notice of 

proposed rule making, the prioritized 

examination fee is set based on the 

estimated average cost to the Office of 

performing the service, per 35 U.S.C. 

41(d)(2). A prioritized examination fee 

that is less than one thousand dollars 

would not recover the full cost of the 

necessary resources to increase the work 

output of the Office without delaying 

non-prioritized applications. Based on 

the Office’s experience with other 

accelerated examination programs, the 

Office would not be able to provide a 

final examination result within the 

suggested three-month time period. 

Comment 6: Some comments 

appreciated the statutory limitation on 

applying fee discounts for small entities, 

and the fact that such fees are used to 

hire new examiners, but hoped that 

such discounts can be implemented in 

order to make the use of Track I 

examination more achievable for 

academic, small business, and other 

small entity applicants. One comment 

urged the Office to continue seeking 

authority to apply small and micro 

entity fees to the prioritized 

examination procedure. 

Response: The Office appreciates the 

benefits of the fee reductions currently 

available to small entities under 35 

U.S.C. 41(h)(1), and will continue to 

seek additional fee setting authority that 

will permit extension of fee reduction to 

the prioritized examination fee. As 

noted in the notice of proposed rule 

making, the Office has determined an 

alternate fee structure, should fee 

reduction be extended to the Track I fee. 

Upon extension of fee reduction to 

Track I prioritized examination, the 

Office would set the prioritized 

examination fee at $2,400 for small 

entities, and $4,800 for other entities, in 

accordance with cost recovery based 

upon fiscal year 2010 data indicating 

that 27.8 percent of new serialized 

utility and plant applications were by 

small entities. 

Comment 7: A few comments 

indicated that the Track I proposal has 

merit, but should be implemented and 

maintained only so long as the program 

does not adversely impact other patent 

applicants. One comment was 

concerned that prioritized examination 

would promote even further delays in 

the examination of requests for 

continued examination since requests 

for continued examination are currently 

placed on the examiner’s ‘‘Special New’’ 

application docket, but not eligible for 

prioritized examination. 

Response: The fee for prioritized 

examination has been calculated to 

ensure recovery of the full cost of the 

resources necessary to handle Track I 

applications without the need to divert 

resources from non-prioritized 

applications. As discussed previously, 

the Office appreciates that 

implementation of the Track I program 

could have an effect on the examination 

of non-prioritized applications during 

fiscal year 2011 due to the current 

budget situation and its impact on the 

Office’s ability to hire new examiners, 

but any effect should not extend into 

future fiscal years. The prioritized 

examination program will not further 

delay the examination of requests for 

continued examination. Examiners will 

still be responsible for acting on 

requests for continued examination in 

the same time frame. 

Comment 8: The Office received three 

comments regarding restriction 

requirements in Track I applications. 

The first comment suggested that 

examiners should be instructed to make 

restriction requirements by phone 

whenever possible and to invite a 

discussion of the restriction requirement 

at the time it is made with a view to 

reaching a consensus with the 

applicant. The second comment stated 

that Track I participants should be 

permitted to traverse restriction 

requirements. The third comment stated 

that petitions from restriction 

requirements in Track I cases should be 

handled expeditiously such that if the 

petition decision results in withdrawal 

of the restriction requirement, the 

examiner is still able to reach final 

disposition of the case within the 

twelve-month target. 

Response: Telephone restriction 

practice is encouraged whenever 

possible, in accordance with MPEP 

§ 812.01. An applicant who disagrees 

with a requirement for restriction may 

traverse in accordance with § 1.143. An 

applicant’s decision to opt-in to 

prioritized examination has no bearing 

on restriction practice. Although 

traversal of a restriction requirement 

will not terminate the prioritized 

examination, the benefit to the applicant 

of a quick examination will be enhanced 

if such traversals can be avoided. 

Petitions from requirements for 

restriction are governed by § 1.144. To 

ensure prompt consideration of any 

such petition, applicant should 

promptly file the petition as soon as the 

restriction requirement has been made 

final. 

Comment 9: One comment stated that 

the Office should provide Track I 

applicants with a notice as to whether 

or not Track I status has been granted 

and the reasons for any denial of Track 

I status. 

Response: The Office will notify a 

Track I applicant of the grant or 

dismissal of the request for prioritized 

examination of the application. If the 

request is denied, the Office will state 

the reason. 

Comment 10: One comment suggested 

that the language ‘‘an original or 

continuing utility * * * nonprovisional 

application’’ should be used in the 

proposed § 1.102(e) rather than ‘‘an 

original utility * * * nonprovisional 

application’’ in order to indicate that 

continuing applications (continuations, 

divisionals, and continuations-in-part) 

with appropriate filing dates are eligible 

for Track I. Another comment requested 

clarification regarding whether 

continuing applications would qualify 

for prioritized examination and 

suggested a revision to proposed 

§ 1.102(e) to exclude continuation or 

divisional applications since it appeared 

the intent was to limit the rule to first 

filed utility and plant applications. 

Response: The term ‘‘original’’ as used 

in the patent statute and rules means 

any application that is not a reissue 

application. Original applications 

include first filings as well as 

continuing applications. See MPEP 

§ 201.04(a). Thus, the suggested revision 

to add a reference to ‘‘continuing’’ 

applications would introduce a 

redundancy into the language of the 

rule. Likewise, the suggested revision to 

exclude continuation and divisional 

applications is not being adopted since 

the rule is applicable to continuing 

applications. 

Comment 11: One comment stated 

that a request for prioritized 

examination should be permitted when 

an international application enters the 

national stage under 35 U.S.C. 371. 

Response: Because it is necessary to 

limit requests for prioritized 

examination at least during the first 

year, applications entering the national 

stage under 35 U.S.C. 371 are not 


sroberts on DSK69SOYB1PROD with RULES
18404 Federal Register / Vol. 76, No. 64 / Monday, April 4, 2011 / Rules and Regulations 

eligible. The Office may reconsider this 

decision in future years. An applicant 

who has filed an international 

application may choose to participate in 

prioritized examination by filing a bypass continuation under 35 U.S.C. 

111(a) rather than entering the national 

stage under 35 U.S.C. 371. 

Comment 12: One comment stated 

that a request for prioritized 

examination status should be permitted 

when a request for continued 

examination is filed under § 1.114, 

regardless of whether a request for 

prioritized examination was previously 

granted in the application. One 

comment stated that, in an application 

already granted Track I status, upon 

filing a request for continued 

examination the applicant should be 

given the opportunity to continue the 

Track I status by the payment of an 

additional fee. 

Response: A request for continued 

examination is not a new application. In 

accordance with § 1.114, an applicant 

cannot request continued examination 

of an application until prosecution is 

closed. Furthermore, an application in 

which a request for continued 

examination has been filed is placed on 

an examiner’s ‘‘Special New’’ docket. 

See Notice of Change to Docketing of 

Requests for Continued Examination, 

1348 Off. Gaz. Pat. Office 254 

(November 10, 2009). The application 

on this docket having the oldest 

effective filing date must be taken up for 

action within two bi-weeks. Thus, when 

a proper request for continued 

examination is filed, the application has 

already undergone examination, and 

will continue to be treated in an 

expedited manner relative to new noncontinuing applications, but not under 

the provisions for prioritized 

examination. 

Comment 13: One comment indicated 

that unexamined applications with the 

greatest pendency should be given 

preferential access to the Track I 

program. 

Response: The Office has undertaken 

an initiative to address the issue of 

unexamined applications that have been 

pending for a long time. Current 

examination resources are being 

reallocated within and across 

Technology Centers to start examination 

of the oldest unexamined applications, 

with no requirement of additional fees 

by the applicant. Prioritized 

examination is a separate initiative for 

newly filed applications in which 

applicants may pay an additional fee, 

which is used by the Office to expand 

its examination resources. Prioritized 

examination must be requested upon 

filing. If an application is pending, the 

applicant may file a continuing 

application and request prioritized 

examination for the new application. 

This approach ensures equitable 

treatment for all applicants who seek to 

participate in the Track I program in 

view of the limit of 10,000 applications 

during fiscal year 2011. 

Comment 14: A few comments stated 

that a request for prioritized 

examination should not be limited to 

when a patent application is filed. Some 

comments stated that this would result 

in applicants filing continuation 

applications to take advantage of Track 

I, which will increase the workload of 

the Office and the applicants. A few 

comments supported permitting 

applicants to request prioritized 

examination with respect to all pending, 

unexamined applications. One comment 

suggested requiring a reasonably higher 

fee for requesting prioritized 

examination after the patent application 

has been filed. Another comment 

supported permitting a request for 

prioritized examination to be filed at 

any time. 

Response: In recognition of the 

necessity of adding additional resources 

so that non-prioritized examination will 

not be delayed and that prioritized 

examination will occur within one year, 

the Office is implementing prioritized 

examination in a prudent and measured 

manner. The Office will reevaluate the 

limitations on prioritized examination 

based on the results of its initial 

implementation and after it gains 

experience with the Track I program. 

While applicants may file continuing 

applications at their discretion, any 

Track I continuation application filed 

may moot or reduce the issues 

remaining in the originally filed 

application. This may result in 

abandonment of the originally filed 

application; alternatively, its 

examination will be aided by the 

substantial examination performed on 

the Track I continuing application. 

Comment 15: One comment stated 

that a request for prioritized 

examination should be permitted for 

reissue applications to apply the datadriven performance monitoring of Track 

I to reissue applications. 

Response: Reissue applications are 

already treated as special applications. 

See MPEP § 1442. If the Office were to 

make prioritized examination available 

to reissue applications, it would not 

have any impact on when the examiner 

is expected to take the application up 

for action. The Office recognizes that 

there is a need to better track and 

monitor the various types of special 

applications, including reissue 

applications, and is working on 

improvements to its tracking and 

monitoring system as part of its Patents 

End-to-End Information Technology (IT) 

project. 

Comment 16: One comment suggested 

that applicants should be permitted to 

pay the appropriate fees or otherwise 

make the application complete after 

filing of the application. The comment 

noted that applicants are familiar with 

and rely on missing parts practice to 

complete applications before they are 

placed in the examination queue and 

there appears to be no compelling 

reason to deviate from this practice for 

prioritized examination. 

Response: Applicants requesting 

prioritized examination are required to 

file applications that are complete. If 

applicants requesting prioritized 

examination were allowed to file 

applications that were not complete, it 

would delay examination of the 

application, which is directly counter to 

providing a final disposition of the 

application in the shortest time 

possible. In addition, as the Office is 

initially limiting requests for prioritized 

examination, the Office considers it 

appropriate to give priority to applicants 

whose applications are complete on 

filing over applicants whose 

applications require the delays caused 

by the missing parts practice. 

Comment 17: One comment 

questioned whether the Office will set 

an annual limit on the number of Track 

I applications a given applicant can file. 

One comment questioned whether the 

Office will set an annual limit on the 

number of Track I applications per 

Technology Center. 

Response: The Office is not setting an 

annual limit on the number of requests 

for prioritized examination that a given 

applicant can file. The Office is also not 

setting an annual limit on the number 

of applications that can be granted 

Track I prioritized examination per 

Technology Center. The Office will 

monitor the Track I program closely. If 

it is determined that an annual limit is 

needed per applicant and/or per 

Technology Center, the Office may make 

such adjustments to the program in the 

future. 

Comment 18: A few comments 

indicated that statistics should be 

published on the number of requests 

received as well as the aggregate time to 

final disposition at the greatest level of 

granularity practical (e.g., the Group Art 

Unit level or the Technology Center 

level). One comment stated that the 

Office should closely monitor which 

technological areas are using Track I 

and minimize any imbalances in the 

backlog of different technology areas. 


sroberts on DSK69SOYB1PROD with RULES
Federal Register / Vol. 76, No. 64 / Monday, April 4, 2011 / Rules and Regulations 18405 

A few comments indicated that, for 

each statistic reported, the data should 

indicate the numbers of small entity and 

non-small entity applicants. Such 

information could potentially be used to 

advocate for reduced fees for small 

entities. 

One comment stated that in order to 

ensure that non-prioritized applications 

and overall examination quality are not 

being impacted, detailed metrics must 

be provided to the public, including 

metrics on pendency, quality, and 

hiring measured against the Office’s 

current stated goals. The comment 

suggested that the Office could include 

the composition of examiners (by GSlevel) examining applications in each 

track to further protect against any track 

bias. 

Response: The Office is committed to 

providing meaningful statistical reports 

on the Track I program with as much 

specificity as is practical. The Office 

will closely monitor the program and 

make any needed adjustments. The 

Office favors reduced fees for small 

entities and, wherever possible, will 

develop statistical reports to identify the 

numbers of small entity and non-small 

entity applicants to support any such 

legislation. 

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. Applications examined under 

Track I will be subject to the same 

quality metrics applied to applications 

undergoing non-prioritized 

examination. Data relating to prioritized 

examination will be made public to the 

extent practicable; e.g., to the extent that 

such data is not linked to any specific 

application and to the extent that the 

pertinent sample size for a subgroup of 

data provides a statistically valid basis 

for reporting such data for that 

subgroup. 

Comment 19: One comment stated 

that a final action on an application for 

which prioritized examination has been 

requested should be made within a 

couple of months instead of twelve 

months. 

Response: The Office is setting an 

aggregate goal of twelve months to final 

disposition based on its perceived 

ability to meet the goal. Based on the 

Office’s experience with other 

accelerated examination programs, the 

Office would not be able to meet an 

aggregate goal for handling applications 

under prioritized examination of two or 

three months to final disposition. 

Comment 20: One comment suggested 

that the filing of an appeal brief, rather 

than the filing of a notice of appeal, 

should trigger the termination of 

prioritized examination because 

sometimes a notice of appeal is filed to 

maintain pendency of an application 

while the examiner considers an afterfinal response. 

Response: The final disposition for 

the twelve-month goal includes the 

mailing of a final Office action. In the 

situation where an applicant files a 

notice of appeal after a second non-final 

Office action, the final disposition will 

include the filing of the notice of 

appeal. Thus, once a final Office action 

has been mailed or a notice of appeal 

has been filed, whichever is earlier, the 

examination of the application would 

no longer be prioritized under 

§ 1.102(e). Therefore, there is no need to 

make the filing of an appeal brief the 

final disposition for purposes of the 

twelve-month goal, rather than the filing 

of a notice of appeal, to accommodate 

the situation where an applicant files a 

notice of appeal to maintain pendency 

of the application while the examiner 

considers an after-final reply. 

Comment 21: One comment requested 

a relaxation of the limits on the number 

of claims so that the prioritized 

examination program would be 

accessible to more users, although no 

suggestion was made as to what the 

claim limit should be. 

Response: In recognition of the 

necessity of adding additional resources 

so that non-prioritized examination will 

not be delayed and that the twelvemonth aggregate goal for prioritized 

examination can be achieved, the Office 

is implementing prioritized examination 

in a prudent and measured manner. The 

Office will revisit the limitations on 

prioritized examination based on the 

results of its initial implementation. 

Comment 22: One comment stated 

that the limit on claims would result in 

an applicant being unable to amend the 

claims to place them in independent 

form after a final rejection where 

dependent claims were found allowable. 

According to the comment, applicants 

would either have to file an appeal or 

do without the full protection to which 

they are entitled. The comment stated 

that there should not be a limit on how 

many claims may be placed in 

independent form during prosecution. 

Another comment suggested permitting 

addition of claims once allowable 

subject matter has been identified, 

provided that the added claims do not 

require further search or examination. 

Response: Track I is designed to 

provide prioritized examination of the 

application; as such, it is directed 

towards substantive examination of 

claims for which no final disposition 

has been reached. Accordingly, 

prioritized examination accords a 

special status to the application until a 

final disposition is reached in the 

application. As discussed previously, a 

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. The 

submission of an amendment resulting 

in there being more than four 

independent claims or more than thirty 

total claims is not prohibited, but 

simply terminates the prioritized 

examination. Thus, upon mailing of a 

final rejection (at which point 

prioritized examination is terminated), 

applicants may amend the claims to 

place them in independent form where 

dependent claims were found allowable, 

or add new claims, subject only to the 

limitations applicable to any application 

under final rejection. See § 1.116. 

Similarly, upon mailing of a notice of 

allowance, applicants may submit 

amendments to the claims, again subject 

only to the limitations applicable to any 

application that has been allowed. See 

§ 1.312 

Comment 23: One comment noted 

that the limit on the number of claims 

is apparently subject to a preliminary 

amendment and requested a 

clarification regarding whether such 

amendments must be made at the time 

of filing. 

Response: An application in which 

applicant is requesting prioritized 

examination under § 1.102(e) must have 

no more than four independent claims 

and thirty total claims, and must not 

have any multiple dependent claims, 

when the application is filed. 

Otherwise, the request for prioritized 

examination under § 1.102(e) will not be 

granted. While it is possible to file a 

preliminary amendment on filing of an 

application to reduce the number of 

claims to no more than four 

independent claims and thirty total 

claims, and to eliminate any multiple 

dependent claims, the Office strongly 

encourages applicants to file 

applications without any preliminary 

amendments. Applicants should file 

their applications with the desired 

claims, rather than submitting a 

preliminary amendment on filing. This 

will reduce the amount of processing 

done by the Office, thus reducing Office 

costs, and will help ensure patent 

application publications and patents are 

printed correctly. See Revised Procedure 

for Preliminary Amendments Presented 

on Filing of a Patent Application, 1300 

Off. Gaz. Pat. Office 69 (November 8, 


sroberts on DSK69SOYB1PROD with RULES
18406 Federal Register / Vol. 76, No. 64 / Monday, April 4, 2011 / Rules and Regulations 

2005). If an amendment is filed in an 

application that has been granted 

prioritized examination that results in 

more than four independent claims or 

thirty total claims, or a multiple 

dependent claim, then prioritized 

examination will be terminated. 

Comment 24: One comment stated 

that an applicant’s request for an 

extension of time should not result in 

termination of prioritized examination, 

particularly where the extension of time 

leads to early issuance of a patent. 

Another comment stated that an 

applicant paying for better service from 

the Office should not be given less time 

to respond to Office actions than anyone 

else. 

Response: The Office is being flexible 

by not prohibiting an applicant from 

filing a request for extension of time in 

an application that has been granted 

prioritized examination under 

§ 1.102(e). However, filing an extension 

of time would significantly impact the 

Office’s ability to meet the twelvemonth aggregate goal to final disposition 

for handling applications under Track I. 

Therefore, prioritized examination will 

be terminated if an applicant does file 

a request for an extension of time in a 

Track I application. 

Rule Making 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 set forth 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 sets forth 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 a 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 significant negative impact on 

any applicant who elects not to request 

the prioritized examination process. 

Therefore, the changes set forth 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 13563 (Improving 

Regulation and Regulatory Review): The 

Office has complied with Executive 

Order 13563. Specifically, the Office 

has: (1) Used the best available 

techniques to quantify costs and 

benefits, and has considered values 

such as equity, fairness and distributive 

impacts; (2) provided the public with a 

meaningful opportunity to participate in 

the regulatory process, including 

soliciting the views of those likely 

affected prior to issuing a notice of 

proposed rule making, and provided 

online access to the rule making docket; 

(3) attempted to promote coordination, 

simplification and harmonization across 

government agencies and identified 

goals designed to promote innovation; 

(4) considered approaches that reduce 

burdens and maintain flexibility and 

freedom of choice for the public; and 

(5) ensured the objectivity of scientific 

and technological information and 

processes, to the extent applicable. 

D. 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). 

E. 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). 

F. 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). 

G. 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). 

H. 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). 

I. 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). 

J. 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 

United States Senate, the United States 

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 foreignbased 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). 

K. Unfunded Mandates Reform Act of 

1995: The changes set forth in this 

notice do not involve a Federal 

intergovernmental mandate that will 

result in the expenditure by State, local, 

and tribal governments, in the aggregate, 

of 100 million dollars (as adjusted) or 

more in any one year, or a Federal 

private sector mandate that will result 

in the expenditure by the private sector 

of 100 million dollars (as adjusted) or 

more in any one year, and will not 

significantly or uniquely affect small 

governments. Therefore, no actions are 

necessary under the provisions of the 

Unfunded Mandates Reform Act of 

1995. See 2 U.S.C. 1501 et seq. 

L. National Environmental Policy Act: 

This rule making 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. 

M. 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 


sroberts on DSK69SOYB1PROD with RULES
Federal Register / Vol. 76, No. 64 / Monday, April 4, 2011 / Rules and Regulations 18407 

does not contain provisions which 

involve the use of technical standards. 

N. Paperwork Reduction Act: This 

rule making is proposed 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. 

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 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) and revising paragraph (i) 

to read as follows: 

§ 1.17 Patent application and 

reexamination processing fees. 

* * * * * 

(c) For filing a request for prioritized 

examination under § 1.102(e) .... 

$4,000.00. 

* * * * * 

(i) Processing fee for taking action 

under one of the following sections 

which refers to this paragraph: $130.00. 

§ 1.28(c)(3)—for processing a nonitemized fee deficiency based on an 

error in small entity status. 

§ 1.41—for supplying the name or 

names of the inventor or inventors after 

the filing date without an oath or 

declaration as prescribed by § 1.63, 

except in provisional applications. 

§ 1.48—for correcting inventorship, 

except in provisional applications. 

§ 1.52(d)—for processing a 

nonprovisional application filed with a 

specification in a language other than 

English. 

§ 1.53(b)(3)—to convert a provisional 

application filed under § 1.53(c) into a 

nonprovisional application under 

§ 1.53(b). 

§ 1.55—for entry of late priority 

papers. 

§ 1.71(g)(2)—for processing a belated 

amendment under § 1.71(g). 

§ 1.99(e)—for processing a belated 

submission under § 1.99. 

§ 1.102(e)—for requesting prioritized 

examination of an application. 

§ 1.103(b)—for requesting limited 

suspension of action, continued 

prosecution application for a design 

patent (§ 1.53(d)). 

§ 1.103(c)—for requesting limited 

suspension of action, request for 

continued examination (§ 1.114). 

§ 1.103(d)—for requesting deferred 

examination of an application. 

§ 1.217—for processing a redacted 

copy of a paper submitted in the file of 

an application in which a redacted copy 

was submitted for the patent application 

publication. 

§ 1.221—for requesting voluntary 

publication or republication of an 

application. 

§ 1.291(c)(5)—for processing a second 

or subsequent protest by the same real 

party in interest. 

§ 1.497(d)—for filing an oath or 

declaration pursuant to 35 U.S.C. 

371(c)(4) naming an inventive entity 

different from the inventive entity set 

forth in the international stage. 

§ 3.81—for a patent to issue to 

assignee, assignment submitted after 

payment of the issue fee. 

* * * * * 

■ 3. Section 1.102 is amended by 

revising paragraph (a) and adding 

paragraph (e) to read as follows: 

§ 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) that is complete as 

defined by § 1.51(b), with any fees due 

under § 1.16 paid on filing. If the 

application is a utility application, it 

must be filed via the Office’s electronic 

filing system (EFS–Web). 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 

§ 1.17(c), the processing fee set forth in 

§ 1.17(i), and the publication fee set 

forth in § 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: March 23, 2011. 

David J. Kappos, 

Under Secretary of Commerce for Intellectual 

Property and Director of the United States 

Patent and Trademark Office. 

[FR Doc. 2011–7807 Filed 4–1–11; 8:45 am] 

BILLING CODE 3510–16–P 

ENVIRONMENTAL PROTECTION 

AGENCY 

40 CFR Part 60 

[EPA–HQ–OAR–2006–0534; FRL–9289–6] 

RIN 2060–AQ24 

Standards of Performance for New 

Stationary Sources and Emissions 

Guidelines for Existing Sources: 

Hospital/Medical/Infectious Waste 

Incinerators 

AGENCY: Environmental Protection 

Agency (EPA). 

ACTION: Final rule; amendments. 

SUMMARY: On October 6, 2009, EPA 

promulgated its response to the remand 

of the new source performance 

standards and emissions guidelines for 

hospital/medical/infectious waste 

incinerators by the U.S. Court of 

Appeals for the District of Columbia 

Circuit and satisfied the Clean Air Act 

section 129(a)(5) requirement to conduct 


sroberts on DSK69SOYB1PROD with RULES