2025 Increase of the Annual Limit on Accepted Requests for Prioritized Examination

<RULE> DEPARTMENT OF COMMERCE <SUBAGY>Patent and Trademark Office</SUBAGY> <CFR>37 CFR Part 1</CFR> <DEPDOC>[Docket No.: PTO-P-2025-0009]</DEPDOC> <RIN>RIN 0651-AD86</RIN> <SUBJECT>2025 Increase of the Annual Limit on Accepted Requests for Prioritized Examination</SUBJECT> <HD SOURCE="HED">AGENCY:</HD> United States Patent and Trademark Office, Department of Commerce. <HD SOURCE="HED">ACTION:</HD> Final rule. <SUM> <HD SOURCE="HED">SUMMARY:</HD> The Leahy-Smith America Invents Act (AIA) includes provisions for prioritized examination of patent applications. Those provisions have been implemented by the United States Patent and Trademark Office (USPTO) in previous rulemakings. The AIA provides that the USPTO may not accept more than 10,000 requests for prioritization in any fiscal year (October 1 to September 30) until regulations setting another limit are prescribed. In 2019 and 2021, the USPTO published interim rules that expanded the limit on the number of requests to 12,000 and 15,000, respectively. The current final rule further expands the availability of prioritized examination by increasing the limit on the number of prioritized examination requests that may be accepted in a fiscal year to 20,000. </SUM> <EFFDATE> <HD SOURCE="HED">DATES:</HD> <E T="03">Effective Date:</E> July 8, 2025. <E T="03">Applicability Date:</E> The limit of 20,000 requests for prioritized examination accepted per year is applicable beginning with fiscal year 2025 and continuing for each fiscal year thereafter, until further notice. </EFFDATE> <FURINF> <HD SOURCE="HED">FOR FURTHER INFORMATION CONTACT:</HD> Kery Fries, Senior Legal Advisor, Office of Patent Legal Administration, at 571-272-7757; or Parikha Solanki, Senior Legal Advisor, Office of Patent Legal Administration, at 571-272-3248. </FURINF> <SUPLINF> <HD SOURCE="HED">SUPPLEMENTARY INFORMATION:</HD> <HD SOURCE="HD1">I. Background</HD> Section 11(h) of the AIA provides for prioritized examination of an application. See Pub. L. 112-29, 125 Stat. 284, 324 (2011). Section 11(h)(1)(B)(i) of the AIA also provides that the USPTO may, by regulation, prescribe conditions for the acceptance of a request for prioritized examination, and section 11(h)(1)(B)(iii) provides that “[t]he Director may not accept in any fiscal year more than 10,000 requests for prioritization until regulations are prescribed under this subparagraph setting another limit.” Id. The USPTO implemented the prioritized examination provision of the AIA for original utility or plant nonprovisional applications under 35 U.S.C. 111(a) in a final rule published on September 23, 2011. <E T="03">See</E> Changes to Implement the Prioritized Examination Track (Track I) of the Enhanced Examination Timing Control Procedures Under the Leahy-Smith America Invents Act, 76 FR 59050 (September 23, 2011) (codified in 37 CFR 1.102(e)). Following implementation of that rule, the USPTO improved its processes for carrying out prioritized examination and expanded the scope of prioritized examination in view of those improvements. First, the USPTO implemented prioritized examination for pending applications after the filing of a proper request for continued examination under 35 U.S.C. 132(b) and 37 CFR 1.114. <E T="03">See</E> Changes to Implement the Prioritized Examination for Requests for Continued Examination, 76 FR 78566 (December 19, 2011). Next, the USPTO further expanded the prioritized examination procedures to permit the delayed submission of certain filing requirements while maintaining the USPTO's ability to timely examine the patent application. <E T="03">See</E> Changes to Permit Delayed Submission of Certain Requirements for Prioritized Examination, 79 FR 12386 (March 5, 2014). The number of requests for prioritized examination has been increasing steadily over the years. The USPTO published an interim rule in 2019 expanding the availability of prioritized examination by increasing the limit on the number of prioritized examination requests that may be accepted in a fiscal year from 10,000 to 12,000. <E T="03">See</E> Increase of the Annual Limit on Accepted Requests for Track I Prioritized Examination, 84 FR 45907 (September 3, 2019). In response to a continued rise in these requests, the USPTO published an interim rule in 2021 further increasing the limit on the number of prioritized examination requests that may be accepted in a fiscal year from 12,000 to 15,000. <E T="03">See</E> 2021 Increase of the Annual Limit on Accepted Requests for Track One Prioritized Examination, 86 FR 52988 (September 24, 2021). In fiscal year 2024, the USPTO received more than 15,000 requests for prioritized examination. The current final rule increases the number of prioritized examination requests that may be accepted in a fiscal year to 20,000, so that the USPTO can continue to accommodate the number of applicants wishing to utilize this program. This increase in the maximum number of prioritized examination requests accepted in any fiscal year will not negatively impact overall pendency across all applications. First, the number of applications accepted for prioritized examination will remain a small fraction of the patent examinations completed in a fiscal year. Second, the USPTO has recently terminated, or allowed to expire, a number of pilot programs that permitted patent applications meeting certain eligibility criteria the opportunity to be advanced out of turn for examination. The USPTO has determined that any potential pendency or workflow impacts of these 5,000 additional prioritized examination applications is offset by the cumulative effect of the termination or expiration of programs such as: the Semiconductor Technology Pilot Program, the Cancer Moonshot Expedited Examination Pilot Program, the First-Time Filer Expedited Examination Pilot Program, and the current suspension of the Climate Change Mitigation Pilot Program. In other words, the additional prioritized examination availability combined with the sunset of these pilot programs is expected to have a net neutral or positive effect on overall pendency. Furthermore, an increase in prioritized examination opportunities provides the USPTO with additional resources for building capacity to examine all patent applications in a more timely manner. Accordingly, the USPTO is further expanding the availability of prioritized examination by increasing the limit on the number of prioritized examination requests that may be accepted in a fiscal year to 20,000, beginning in fiscal year 2025 (October 1, 2024, through September 30, 2025) and continuing every fiscal year thereafter until further notice. <HD SOURCE="HD1">II. Discussion of Specific Rule</HD> The following is a discussion of the amendment to 37 CFR part 1. <E T="03">Section 1.102:</E> Section 1.102(e) is revised to increase the limit on the total number of requests for prioritized examination that may be accepted (granted) in any fiscal year from 15,000 to 20,000. <HD SOURCE="HD1">III. Rulemaking Considerations</HD> <E T="03">A. Administrative Procedure Act:</E> This final rule revises the procedures that apply to applications for which an applicant has requested Track One prioritized examination. The changes in this final rule do not change the substantive criteria of patentability. Therefore, the changes in this rulemaking involve rules of agency practice and procedure and/or interpretive rules and do not require notice-and-comment rulemaking. <E T="03">See Perez</E> v. <E T="03">Mortg. Bankers Ass'n,</E> 575 U.S. 92, 97, 101 (2015) (explaining that interpretive rules “advise the public of the agency's construction of the statutes and rules which it administers” and do not require notice-and-comment when issued or amended); <E T="03">Cooper Techs. Co.</E> v. <E T="03">Dudas,</E> 536 F.3d 1330, 1336-37 (Fed. Cir. 2008) (stating that 5 U.S.C. 553, and thus 35 U.S.C. 2(b)(2)(B), do not require notice-and-comment rulemaking for “interpretative rules, general statements of policy, or rules of agency organization, procedure, or practice”); <E T="03">In re Chestek PLLC,</E> 92 F.4th 1105, 1110 (Fed. Cir. 2024) (noting that rule changes that “do[ ] not alter the substantive standards by which the USPTO evaluates trademark applications” are procedural in nature and thus “exempted from notice-and-comment rulemaking.”); and <E T="03">JEM Broadcasting Co.</E> v. <E T="03">F.C.C.,</E> 22 F.3d 320, 328 (D.C. Cir. 1994) (“[T]he `critical feature' of the procedural exception [in 5 U.S.C. 553(b)(A)] `is that it covers agency actions that do not themselves alter the rights or interests of parties, although [they] may alter the manner in which the parties present themselves or their viewpoints to the agency.'” (quoting <E T="03">Batterton</E> v. <E T="03">Marshall,</E> 648 F.2d 694, 707 (D.C. Cir. 1980))). Moreover, the USPTO, pursuant to authority at 5 U.S.C. 553(b)(B), finds good cause to adopt the changes in this final rule without prior notice and an opportunity for public comment, as such procedures would be contrary to the public interest. Delay in the promulgation of this final rule to provide prior notice and comment procedures would cause harm to those applicants who desire to file a request for prioritized examination with a new application or request for continued examination. Immediate implementation of the changes in this final rule is in the public interest because: (1) the public does not need time to conform its conduct, as the changes in this final rule do not add any additional requirement for requesting prioritized examination of an application; and (2) those applicants who would otherwise be ineligible for prioritized examination will benefit from the immediate implementation of the changes in this final rule. <E T="03">See Nat'l Customs Brokers & Forwarders Ass'n of Am., Inc.</E ━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━ Preview showing 10k of 20k characters. 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