USPTO to Permit Delay in Meeting Certain Prioritized Examination Requirements


USPTO SealIn an interim rule published in the Federal Register last week (79 Fed. Reg. 12386), the U.S. Patent and Trademark Office indicated that the time periods for meeting certain requirements for filing a request for Track I prioritized examination could be expanded while maintaining the Office's ability to timely examine the patent application.  The Office notes that the rules changes are intended to simplify prioritized examination ("Track I") practice by reducing the number of requests that must be dismissed and improving access to prioritized examination.

The requirements for which the time periods are being expanded are: the submission, upon filing, of an inventor's oath or declaration and all required fees, as well as an application containing no more than four independent claims, thirty total claims, and no multiple dependent claims.  In particular, the rules changes would (1) postpone the requirement to file an inventor's oath or declaration if an application data sheet meeting the conditions specified in 37 CFR 1.53(f)(3)(i) is present upon filing, (2) provide a non-extendable one-month period (following notification of noncompliance from the Office) to file an amendment to cancel any independent claims in excess of four, any total claims in excess of thirty, or any multiple dependent claim, and (3) no longer require the payment of excess claims fees or the application size fee upon filing.  The notice indicates that the rules changes, which have an effective date of March 5, 2014, apply to applications filed under 35 U.S.C. 111(a) on or after September 16, 2012, in which a first action has not been mailed.

The Office is seeking comments regarding the interim rule, which must be submitted by May 5, 2014.  Comments can be sent by e-mail to; by regular mail to Mail Stop Comments -- Patents, Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313–1450, marked to the attention of John R. Cottingham, Director, Office of Petitions, Office of the Deputy Commissioner for Patent Examination Policy; or by using the Federal eRulemaking Portal.


DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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