December 6, 2023

Conducting Examinations Faster: USPTO Introduces New Pilot Program for Semiconductor Manufacturing Applications

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Morrison & Foerster LLP

The U.S. Patent and Trademark Office (USPTO) initiated a program on December 1, 2023 to encourage research, development, and innovation in the semiconductor manufacturing space. The Semiconductor Technology Pilot Program (“Pilot Program”) will expedite examination of patent applications for innovations that increase semiconductor device production, reduce semiconductor manufacturing costs, and strengthen the semiconductor supply chain. With the filing and granting of a petition, eligible applications will be given special status until a first Office action is issued.[1] No fee is required.

Although the USPTO currently provides applicants with other means to expedite prosecution, most notably Track One prioritized examination, the Pilot Program is particularly beneficial if certain conditions are met. Here is a comparison of the new Pilot Program compared to Track One prioritized examination:

	Semiconductor Technology Pilot Program	Track One Prioritized Examination
Fees	Free	$840 for micro-entity, $1,680 for small entity, $4,200 for large entity
Timeline	Special status (application will be advanced out of turn) given until a first Office action is issued	Final disposition within 12 months
Priority Requirements	Original nonprovisional utility application that claims the benefit of no or only one prior nonprovisional application or an international application designating the U.S.[2]	Original nonprovisional utility (or plant) or national stage entry application If a request for continued examination has been filed, then there must be no prior request for continued examination that has been granted
Timing Requirements	Petition must be filed with the application or with entry into the national stage, or within 30 days of filing or entry	Request must be filed prior to the mailing of a first Office action
Claim Requirements	Does not contain more than three independent claims, more than 20 total claims, or any multiple dependent claims Contains at least one claim that covers a process or an apparatus for manufacturing a semiconductor device and corresponds to one or more technical concepts within H10 patent classification (semiconductor devices) or H01L patent classification (semiconductor devices not covered by H10)	Does not contain more than four independent claims, more than 30 total claims, or any multiple dependent claims
Other Requirements	Applicant must file the application electronically Cannot be concurrent with a nonpublication request Applicant must submit certification related to good-faith belief that the technology improves semiconductor manufacturing, the claimed semiconductor manufacturing invention is the primary focus of the specification, and good-faith belief that the application will have a positive impact on the semiconductor manufacturing industry The inventor or any joint inventor has not filed more than four petitions for the Pilot Program Petition must include a statement that the Applicant agrees to not exceed claim requirements during prosecution, and upon a restriction, to elect the invention that meets the technology requirements of the Pilot Program	Applicant must file the application electronically

For Track One prioritized examination applications, we are currently seeing first Office actions being issued within 3–5 months. The Pilot Program may be slightly faster in issuing first Office actions, but the overall impact of the Pilot Program will be limited, given its focus on semiconductor manufacturing inventions. If you are filing a no- or first-continuation semiconductor manufacturing patent application, we recommend consulting with counsel, as the Pilot Program may shorten the examination time without extra fees. The USPTO is currently accepting petitions until December 2, 2024, or until 1,000 petitions have been granted, whichever occurs first.

[1] After the first Office action, the application will no longer be treated as special during examination.

[2] Claiming the benefit of one or more prior provisional or foreign applications does not affect eligibility for the Pilot Program.

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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.