SUPPLEMENTARY INFORMATION:

The USPTO is revising the rules in part 1 of title 37 of the Code of Federal Regulations to increase certainty and predictability concerning patent rights and to improve efficiency of patent operations. ( printed page 37827)

I. Background

The Patent Law Treaties Implementation Act of 2012 (PLTIA) amended the provisions of title 35, United States Code (U.S.C.) to implement the Patent Law Treaty (PLT) and the Hague Agreement Concerning International Registration of Industrial Designs (Hague Agreement). See Public Law 112-211, 126 Stat. 1527, (2012). Section 101 of the PLTIA added a new chapter under title 35, including a new section, 35 U.S.C. 387, which provides that an applicant's failure to act within prescribed time limits in connection with requirements pertaining to an international design application may be excused as to the United States upon a showing of unintentional delay and under such conditions, including a requirement for payment of a fee, as may be prescribed by the Director. See Public Law 112-211, sec. 101, 126 Stat. at 1527. Furthermore, Section 201(b) of the PLTIA added 35 U.S.C. 27, which expressly provides that the Director of the USPTO may establish procedures to revive an unintentionally abandoned application for patent or accept an unintentionally delayed issue fee payment, upon petition by the applicant for patent. See Public Law 112-211, sec. 201(b)(1)(B), 126 Stat. at 1534. Section 202(b)(1)(B) of the PLTIA amended 35 U.S.C. 41(c)(1) to provide that the Director may accept the payment of any maintenance fee required by 35 U.S.C. 41(b) after the six-month grace period if the delay is shown to the satisfaction of the Director to have been unintentional. See Public Law 112-211, sec. 202(b)(1)(B), 126 Stat. at 1535-36. The 18-month publication provisions of the American Inventors Protection Act of 1999 (AIPA) amended 35 U.S.C. 119 and 120 to provide that a priority claim to a foreign or international application, a benefit claim of an earlier domestic provisional or nonprovisional application, and a benefit claim of an international application designating the United States must be filed within the period required by the USPTO, but that the USPTO may establish procedures to accept an unintentionally delayed priority or benefit claim. See Public Law 106-113, sec. 4503, 113 Stat. 1501, 1501A-563 through 1501A-564 (1999).

The USPTO revised the rules of practice to implement the 18-month publication provisions of section 4503 of the AIPA in September 2000. This included revising the rules of practice pertaining to foreign priority and domestic benefit claims at 37 CFR 1.55 and 1.78 to set a time period within which such priority and benefit claims must be submitted and provide for the acceptance of unintentionally delayed priority or benefit claims. See Changes to Implement Eighteen-Month Publication of Patent Applications,65 FR 57023, 57024-25, 57030-31, 57053-55 (September 20, 2000). The USPTO revised the rules of practice for consistency with the PLT and Title II of the PLTIA in October 2013. This included revising the rules of practice pertaining to the revival of abandoned applications at 37 CFR 1.137 and acceptance of delayed maintenance fee payments 37 CFR 1.378 to provide for the revival of abandoned applications and acceptance of delayed maintenance fee payments solely on the basis of unintentional delay, as well as revisions to the rules of practice pertaining to foreign priority and domestic benefit claims at 37 CFR 1.55 and 1.78. See Changes to Implement the Patent Law Treaty,78 FR 62368, 62377-78, 62380-83, 62399-400, 62402-07 (October 21, 2013).

The provisions for the revival of an abandoned application in 37 CFR 1.137 require a petition including, inter alia, a statement that the entire delay in filing the required reply from the due date of the reply until the filing of a grantable petition was unintentional, but also provide that “[t]he Director may require additional information where there is a question whether the delay was unintentional.” 37 CFR 1.137(b)(4)). The provisions for the acceptance of a delayed maintenance fee payment at 37 CFR 1.378 similarly require a petition including, inter alia, a statement that the delay in payment of the maintenance fee was unintentional, but also provide that “[t]he Director may require additional information where there is a question whether the delay was unintentional.” 37 CFR 1.378(b)(3). The provisions for the acceptance of a delayed priority or benefit claim at 37 CFR 1.55 and 1.78 likewise require a statement that the delay between the date the claim was due and the date the claim was filed was unintentional, but also provide that “[t]he Director may require additional information where there is a question whether the delay was unintentional.” 37 CFR 1.55(e)(4), 1.78(c)(3) and (e)(3). Furthermore, the provisions for excusing the failure to act within prescribed time limits under the Hague Agreement in connection with requirements pertaining to an international design application (37 CFR 1.1051) require a statement that the entire delay in filing the “required reply from the due date for the reply until the filing of a grantable petition pursuant to this paragraph was unintentional” and that the “Director may require additional information where there is a question whether the delay was unintentional.” (37 CFR 1.1051(a)(5)).

On March 2, 2020, the USPTO clarified its practice as to situations that require additional information about whether a delay in seeking the revival of an abandoned application, acceptance of a delayed maintenance fee payment, or acceptance of a delayed priority or benefit claim was unintentional. See Clarification of the Practice for Requiring Additional Information in Petitions Filed in Patent Applications and Patents Based on Unintentional Delay,85 FR 12222 (March 2, 2020). Specifically, the USPTO clarified that it required additional information in the following three cases. First, when a petition to revive an abandoned application was filed more than two years after the date the application became abandoned. Second, when a petition to accept a delayed maintenance fee payment was filed more than two years after the date the patent expired for nonpayment. Third, when a petition to accept a delayed priority or benefit claim was filed more than two years after the date the priority or benefit claim was due. See also Changes to Patent Practice and Procedure,62 FR 53131, 53158-59, 53161 (October 10, 1997) (the length of the delay in filing a petition to revive may itself raise a question as to whether the delay was unintentional, and thus the USPTO may require additional information as to the cause of the delay when a petition to revive is not filed promptly). The reason for requiring additional information in cases where there had been an extended delay—a delay of more than two years from the date the application became abandoned, the patent expired, or a priority or benefit claim was due—until the filing of a petition, was to ensure that, in situations where there had been such an extended delay in filing the petition, the USPTO is provided with sufficient information of the facts and circumstances surrounding the entire delay to support a conclusion that the entire delay was “unintentional.” In addition, the USPTO emphasized that it may require additional information whenever there is a question as to whether the delay was unintentional, and that it may revisit the two-year period established in the notice and evaluate whether the two-year period is an appropriate threshold.

The USPTO has decided to shorten the two-year period for requiring additional information to one year. The USPTO will now require additional information when the petition is filed ( printed page 37828) more than one year after the date the application became abandoned, the patent expired, a priority or benefit claim was due, or the applicable prescribed time limit under the Hague Agreement expired. If the period of delay is more than one year, there is a sufficient concern that the entire delay may not be unintentional and thus warrant a requirement for an additional explanation of the circumstances surrounding the delay. The benefits of requiring such a showing or explanation for petitions filed more than one year after the date of abandonment, the date of patent expiration, the date a priority or benefit claim is due, or the date of expiration of the applicable time limit under the Hague Agreement outweigh the additional burden to patent applicants and patentees of providing this information. As noted in the Clarification of the Practice for Requiring Additional Information in Petitions Filed in Patent Applications and Patents Based on Unintentional Delay, 85 FR at 12223, the purpose of the original two-year practice was to reduce uncertainty and unpredictability relating to patent rights. The longer the delay in filing a petition to revive an application, accept a delayed maintenance fee, accept a delayed priority or benefit claim, or excuse an applicant's failure to act within prescribed time limits in international design applications, the greater the likelihood that the entire delay may not be unintentional.

Accordingly, this change from a two-year period to a one-year period will further increase certainty and predictability concerning patent rights, by requiring that applicants and patentees provide, on the record, an adequate explanation that the entire delay is unintentional. Such an explanation or showing both safeguards a patentee's rights by establishing on the record that the delay was unintentional, and protects the public by prohibiting revival, reinstatement, entry of a benefit or priority claim, or excuse of delay, when unintentional delay cannot be established. Further, this change from a two-year period to a one-year period aligns with USPTO efforts to reduce application pendency and promote efficient patent operations by encouraging applicants to regularly monitor patent files and promptly take corrective actions when needed, such as the timely filing of grantable petitions to revive applications, accept delayed maintenance fee payments, accept delayed priority or benefit claims, or to excuse an applicant's failure to act within prescribed time limits in international design applications. Prompt, corrective actions are more likely to be associated with unintentional delay and assist in streamlining examination.

Section 711.03(c) of the Manual of Patent Examining Procedure (MPEP) (9th Edition, Rev. 01.2024, November 2024) discusses the unintentional delay standard with respect to petitions to revive an abandoned application, but its discussion of the unintentional delay is generally applicable to any petition under the unintentional delay standard. The USPTO usually relies upon the applicant's duty of candor and good faith and accepts the statement that the entire delay was unintentional without requiring further information because the applicant or patentee is obligated under 37 CFR 11.18 to inquire into the underlying facts and circumstances when providing this statement to the USPTO. See MPEP section 711.03(c), subsection II.C. An extended period of delay in filing a petition to revive an application, accept a delayed maintenance fee payment, accept a delayed priority or benefit claim, or excuse a failure to act within prescribed time limits under the Hague Agreement, however, raises a question as to whether the entire delay was unintentional. This may create uncertainty and unpredictability relating to patent rights in that there is a greater likelihood that the entire delay may not be unintentional within the meaning of 37 CFR 1.55, 1.78, 1.137, 1.378, and 1.1051, as compared to a petition that was filed within a shorter time period after the abandonment of the application, expiration of the patent, due date for a priority or benefit claim, or expiration of an applicable time limit under the Hague Agreement. An applicant or patentee cannot meet the “unintentional delay” standard in 37 CFR 1.55(e), 1.78(c) and (e), 1.137(a), 1.378(b), or 1.1051 if the entire delay is not unintentional. See MPEP section 711.03(c), subsections II.C. through F.

Providing an inaccurate statement that the entire delay was unintentional may have an adverse effect when attempting to enforce the patent. See In re Rembrandt Technologies LP Patent Litigation, 899 F.3d 1254, 1272-73, 127 USPQ2d 1826, 1837-38 (Fed. Cir. 2018) (patents held unenforceable due to a finding of inequitable conduct in submitting an inappropriate statement that the delay was unintentional).

Revival of an application, reinstatement of a patent, acceptance of a priority or benefit claim, or excusal of a failure to act within prescribed time limits after an extended delay can also create uncertainty and unpredictability relating to patent rights because the abandoned status of an application, or the expired status of a patent, or an absence of the priority or benefit claim, or the consequences of failing to act within prescribed time limits under the Hague Agreement, may be relied upon by other parties. Requiring additional information when the delay is more than one year since the date of abandonment, expiration of the patent, the due date of the priority or benefit claim, or the expiration of an applicable prescribed time limit will improve the reliability and predictability of patent rights by ensuring that only applications and patents in which the entire delay was unintentional are revived or reinstated, and only priority or benefit claims for which the entire delay was unintentional are accepted.

Any applicant filing a petition to revive an abandoned application under 37 CFR 1.137 more than one year after the date of abandonment, any patentee filing a petition to accept a delayed maintenance fee under 37 CFR 1.378 more than one year after the date of expiration for nonpayment of a maintenance fee, any applicant or patent owner filing a petition to accept a delayed priority or benefit claim under 37 CFR 1.55(e) or 1.78(c) and (e), and any applicant filing a petition to excuse an applicant's failure to act within prescribed time limits under the Hague Agreement in connection with requirements pertaining to an international design application under 37 CFR 1.1051 more than one year after the date the action was required must provide an additional explanation of the circumstances surrounding the delay that establishes that the entire delay was unintentional. This requirement is in addition to the requirement to provide a statement that the entire delay was unintentional in 37 CFR 1.137(b)(4), or 1.378(b)(3), or 1.55(e)(4), 1.78(c)(3) and (e)(3), or 1.1051(a)(5). The MPEP will be updated in due course to incorporate these requirements.

Nothing in this notice should be construed as an indication that the USPTO will only require additional information in consideration of a petition to revive an abandoned application under 37 CFR 1.137 filed more than one year after the date the application became abandoned, a petition to accept a delayed maintenance fee payment in an expired patent under 37 CFR 1.378 filed more than one year after the date the patent expired, a petition under 37 CFR 1.55(e) or 1.78(c) or (e) to accept a delayed priority or benefit claim filed more than one year after the due date of the priority or benefit claim, or a petition ( printed page 37829) under 37 CFR 1.1051 to excuse the failure to act as to the United States within prescribed time limits under the Hague Agreement in connection with the requirements pertaining to an international design application under 37 CFR 1.1051 filed more than one year after the expiration of the time limit. Separate and apart from the one-year period in this notice, the USPTO may require additional information whenever there is a question as to whether the delay was unintentional.

Because the USPTO is revising the requirement for additional information in petitions filed in patent applications and patents based on unintentional delay where the petition is filed more than one year after the date when the required action was due, the evidentiary requirements in such petitions will increase, as well as the cost to review and treat these petitions. Therefore, the USPTO is changing the threshold for imposing the higher petition fee to recover the additional costs associated with the change in practice set forth in this notice. Additionally, changing the threshold for imposing the higher fee will further encourage applicants to file their petitions in a timely manner. Timely filing of petitions based on unintentional delay benefits applicants because it avoids delays in the examination process, and it also benefits the patent system as a whole by reducing uncertainty and unpredictability relating to patent rights, inasmuch as the abandoned status of an application, the expired status of a patent, or an absence of the priority or benefit claim could be relied upon by other parties.

Therefore, to reflect the changes in practice with respect to petitions to revive an abandoned application under 37 CFR 1.137, to accept a delayed maintenance fee payment in an expired patent under 37 CFR 1.378, to accept a delayed priority or benefit claim under 37 CFR 1.55(e) or 1.78(c) or (e), or a petition to excuse the failure to act as to the United States within prescribed time limits under the Hague Agreement in connection with the requirements pertaining to an international design application under 37 CFR 1.1051, the rules are revised to clarify that the fee under 37 CFR 1.17(m)(1) will apply when the petition is filed more than one year after the date when the required action was due. The fee rates in 37 CFR 1.17(m) will remain the same.

II. Discussion of Specific Rules

Section 1.17(m): Section 1.17(m)(1) is amended to state that the fee under (m)(1) for filing a petition under a section that refers to paragraph (m) will apply when the petition is filed more than one year after the date when the required action was due. Previously, the rule stated that the fee under 37 CFR 1.17(m)(1) was due when the petition was filed more than two years after the date when the required action was due. However, additional information is now required in petitions filed in patent applications and patents based on unintentional delay whenever the delay in taking certain actions in patent applications and patents is more than one year. Therefore, to align with the changes to practice and encourage the timely filing of petitions based on unintentional delay, 37 CFR 1.17(m)(1) is amended accordingly. Section 1.17(m)(1) now applies when the petition is filed more than one year after the date when the required action was due.

III. Rulemaking Considerations

A. Administrative Procedure Act: This final rule amends the fee under 37 CFR 1.17(m)(1) such that it will apply when a relevant petition is filed more than one year after the date when the required action was due. The change in this final rule does not change the substantive criteria of patentability. Therefore, the change in this rulemaking involves a rule of agency practice and procedure and/or an interpretive rule and does not require notice-and-comment rulemaking, pursuant to 5 U.S.C. 553(b)(A)). See Perez v. Mortg. Bankers Ass'n, 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); Cooper Techs. Co. v. Dudas, 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”); In re Chestek PLLC, 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 JEM Broadcasting Co. v. F.C.C., 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 Batterton v. Marshall, 648 F.2d 694, 707 (D.C. Cir. 1980)).

B. Regulatory Flexibility Act: As prior notice and an opportunity for public comment are not required pursuant to 5 U.S.C. 553 or any other law, neither a Regulatory Flexibility Act analysis nor a certification under the Regulatory Flexibility Act (5 U.S.C. 601 et seq.) is required. See 5 U.S.C. 603.

C. Executive Order 12866 (Regulatory Planning and Review): This rulemaking has been determined to be not significant for purposes of Executive Order 12866 (September 30, 1993).

D. Executive Order 13563 (Improving Regulation and Regulatory Review): The USPTO has complied with Executive Order 13563 (January 18, 2011). Specifically, and as discussed above, the USPTO has, to the extent feasible and applicable: (1) reasonably determined that the benefits of the rule justify its costs; (2) tailored the rule to impose the least burden on society consistent with obtaining the agency's regulatory objectives; (3) selected a regulatory approach that maximizes net benefits; (4) specified performance objectives; (5) identified and assessed available alternatives; (6) involved the public in an open exchange of information and perspectives among experts in relevant disciplines, affected stakeholders in the private sector, and the public as a whole, and provided online access to the rulemaking docket; (7) attempted to promote coordination, simplification, and harmonization across government agencies and identified goals designed to promote innovation; (8) considered approaches that reduce burdens while maintaining flexibility and freedom of choice for the public; and (9) ensured the objectivity of scientific and technological information and processes.

E. Executive Order 14192 (Deregulation): This regulation is not an Executive Order 14192 regulatory action because it has been determined to be not significant under Executive Order 12866.

F. Executive Order 13132 (Federalism): This rulemaking pertains strictly to federal agency procedures and does not contain policies with federalism implications sufficient to warrant preparation of a Federalism Assessment under Executive Order 13132 (August 4, 1999).

G. Executive Order 13175 (Tribal Consultation): This rulemaking 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 ( printed page 37830) required under Executive Order 13175 (November 6, 2000).

H. Executive Order 13211 (Energy Effects): This rulemaking is not a significant energy action under Executive Order 13211 because this rulemaking 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).

I. Executive Order 12988 (Civil Justice Reform): This rulemaking 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 (February 5, 1996).

J. Executive Order 13045 (Protection of Children): This rulemaking does not concern an environmental risk to health or safety that may disproportionately affect children under Executive Order 13045 (April 21, 1997).

K. Executive Order 12630 (Taking of Private Property): This rulemaking will not effect a taking of private property or otherwise have taking implications under Executive Order 12630 (March 15, 1988).

L. 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.), the USPTO 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 rulemaking are not expected to result in an annual effect on the economy of $100 million 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 rulemaking is not expected to result in a “major rule” as defined in 5 U.S.C. 804(2).

M. Unfunded Mandates Reform Act of 1995: The changes set forth in this rulemaking 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 (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 (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.

N. National Environmental Policy Act of 1969: This rulemaking 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.

O. National Technology Transfer and Advancement Act of 1995: 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 rulemaking does not contain provisions that involve the use of technical standards.

P. Paperwork Reduction Act of 1995: The Paperwork Reduction Act of 1995 (44 U.S.C. 3501 et seq.) requires that the USPTO consider the impact of paperwork and other information collection burdens imposed on the public. The collections of information involved in this final rule have been reviewed and previously approved by OMB under control numbers 0651-0016, 0651-0021, 0651-0031, 0651-0032, and 0651-0075. In view of this final rule, the USPTO will submit updates to the 0651-0016, 0651-0021, 0651-0031, 0651-0032, and 0651-0075 information collections in the form of nonsubstantive change requests.

Notwithstanding any other provision of law, no person is required to respond to, nor shall any 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.

Q. E-Government Act Compliance: The USPTO is committed to compliance with the E-Government Act to promote the use of the internet and other information technologies, to provide increased opportunities for citizen access to Government information and services, and for other purposes.

For the reasons stated in the preamble, the USPTO amends 37 CFR part 1 as follows:

91 FR 37826