[Federal Register Volume 76, Number 64 (Monday, April 4, 2011)]
[Rules and Regulations]
[Pages 18399-18407]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2011-7807]


=======================================================================
-----------------------------------------------------------------------

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.

-----------------------------------------------------------------------

[[Page 18400]]

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)

[[Page 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 Sec.  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 Sec.  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 (EFS-Web) 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 Sec.  1.102(e). Section 1.17(c) is amended to 
set the fee for filing a request for prioritized examination under 
Sec.  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 Sec.  1.102(e).

[[Page 18402]]

    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, Sec.  
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 Sec.  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 Sec.  1.51(b), with any 
fees due under Sec.  1.16 (the filing fee, search fee, examination fee, 
any applicable excess claims fee, and any applicable application size 
fee) paid on filing; (2) the 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 Sec.  1.17(c), the processing fee set 
forth in Sec.  1.17(i), and the publication fee set forth in Sec.  
1.18(d) are present upon filing; and (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 Sec.  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 Sec.  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 Sec.  1.17(i) should be eliminated if already covered by the 
$4,000 fee set by proposed Sec.  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 Sec.  1.17(c), and the Sec.  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 Sec.  
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 Sec.  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 Sec.  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 Sec.  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 Sec.  1126.
    Comment 4: One comment requested clarification regarding whether 
the publication fee under Sec.  1.18(d) and the processing fee under 
Sec.  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 Sec.  1.18(d) and the 
processing fee under Sec.  1.17(i) are required to be paid at the time 
of filing by any applicant requesting prioritized examination

[[Page 18403]]

under Sec.  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 Sec.  812.01. An applicant who 
disagrees with a requirement for restriction may traverse in accordance 
with Sec.  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 Sec.  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 Sec.  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 Sec.  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 Sec.  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

[[Page 18404]]

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 by-pass 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 Sec.  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 Sec.  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 non-continuing 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 
data-driven performance monitoring of Track I to reissue applications.
    Response: Reissue applications are already treated as special 
applications. See MPEP Sec.  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.

[[Page 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 GS-level) 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 after-final 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 Sec.  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 twelve-month 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 Sec.  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 Sec.  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 Sec.  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 Sec.  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,

[[Page 18406]]

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 Sec.  1.102(e). 
However, filing an extension of time would significantly impact the 
Office's ability to meet the twelve-month 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 foreign-based 
enterprises in domestic and export markets. Therefore, this notice is 
not expected to result in a ``major rule'' as defined in 5 U.S.C. 
804(2).
    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

[[Page 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

0
1. The authority citation for 37 CFR part 1 continues to read as 
follows:

    Authority: 35 U.S.C. 2(b)(2).


0
2. Section 1.17 is amended by adding paragraph (c) and revising 
paragraph (i) to read as follows:


Sec.  1.17  Patent application and reexamination processing fees.

* * * * *
    (c) For filing a request for prioritized examination under Sec.  
1.102(e) .... $4,000.00.
* * * * *
    (i) Processing fee for taking action under one of the following 
sections which refers to this paragraph: $130.00.
    Sec.  1.28(c)(3)--for processing a non-itemized fee deficiency 
based on an error in small entity status.
    Sec.  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 Sec.  1.63, except in provisional applications.
    Sec.  1.48--for correcting inventorship, except in provisional 
applications.
    Sec.  1.52(d)--for processing a nonprovisional application filed 
with a specification in a language other than English.
    Sec.  1.53(b)(3)--to convert a provisional application filed under 
Sec.  1.53(c) into a nonprovisional application under Sec.  1.53(b).
    Sec.  1.55--for entry of late priority papers.
    Sec.  1.71(g)(2)--for processing a belated amendment under Sec.  
1.71(g).
    Sec.  1.99(e)--for processing a belated submission under Sec.  
1.99.
    Sec.  1.102(e)--for requesting prioritized examination of an 
application.
    Sec.  1.103(b)--for requesting limited suspension of action, 
continued prosecution application for a design patent (Sec.  1.53(d)).
    Sec.  1.103(c)--for requesting limited suspension of action, 
request for continued examination (Sec.  1.114).
    Sec.  1.103(d)--for requesting deferred examination of an 
application.
    Sec.  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.
    Sec.  1.221--for requesting voluntary publication or republication 
of an application.
    Sec.  1.291(c)(5)--for processing a second or subsequent protest by 
the same real party in interest.
    Sec.  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.
    Sec.  3.81--for a patent to issue to assignee, assignment submitted 
after payment of the issue fee.
* * * * *

0
3. Section 1.102 is amended by revising paragraph (a) and adding 
paragraph (e) to read as follows:


Sec.  1.102  Advancement of examination.

    (a) Applications will not be advanced out of turn for examination 
or for further action except as provided by this part, or upon order of 
the Director to expedite the business of the Office, or upon filing of 
a request under paragraph (b) or (e) of this section or upon filing a 
petition or request under paragraph (c) or (d) of this section with a 
showing which, in the opinion of the Director, will justify so 
advancing it.
* * * * *
    (e) A request for prioritized examination under this paragraph may 
be filed only with an original utility or plant nonprovisional 
application under 35 U.S.C. 111(a) that is complete as defined by Sec.  
1.51(b), with any fees due under Sec.  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 Sec.  
1.17(c), the processing fee set forth in Sec.  1.17(i), and the 
publication fee set forth in Sec.  1.18(d). Prioritized examination 
under this paragraph will not be accorded to a design application or 
reissue application, and will not be accorded to any application that 
contains or is amended to contain more than four independent claims, 
more than thirty total claims, or any multiple dependent claim.

    Dated: 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