USPTO Adopts Rule Permitting Delayed Submission of Certain Prioritized Examination Requirements | Practical Law

USPTO Adopts Rule Permitting Delayed Submission of Certain Prioritized Examination Requirements | Practical Law

The US Patent and Trademark Office (USPTO) has adopted an interim rule that simplifies Track I prioritized examination practice under the Leahy-Smith America Invents Act (AIA).

USPTO Adopts Rule Permitting Delayed Submission of Certain Prioritized Examination Requirements

by Practical Law Intellectual Property & Technology
Published on 06 Mar 2014 • USA (National/Federal)
The US Patent and Trademark Office (USPTO) has adopted an interim rule that simplifies Track I prioritized examination practice under the Leahy-Smith America Invents Act (AIA).
On March 5, 2014, the USPTO issued an interim rule relating to the AIA provisions for prioritized examinations of patent applications (Track I) (79 Fed. Reg. 12386-01, March 5, 2014). Previously, Track I prioritized examination applications were required to include when filing:
  • An inventor's oath or declaration.
  • All required fees.
  • No more than four independent claims, 30 total claims and no multiple dependent claims.
Any filing not meeting these requirements were dismissed.
Because the USPTO has found that a significant amount of the dismissals were due to a defect in these requirements, it has adopted this rule to expand the time period given to meet these requirements by:
  • Postponing the inventor's oath or declaration filing requirement provided the application includes a data sheet identifying the inventor's legal name and address.
  • Providing a non-extendable one-month period to file an amendment to cancel any independent claims in excess of four, any total claims in excess of 30 or any multiple dependent claim.
  • Postponing any fees for excess claims and application size.
This rule became effective on March 5, 2014, and changes to 37 C.F.R. 1.102 only apply to applications filed under 35 U.S.C. 111(a) on or after September 16, 2012 in which the USPTO has not mailed a first office action.
Interested parties may submit written comments no later than May 5, 2014.