Notice2023-26340
Semiconductor Technology Pilot Program
Primary source
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Published
December 1, 2023
Issuing agencies
Commerce DepartmentPatent and Trademark Office
Abstract
The United States Patent and Trademark Office (USPTO) is implementing the Semiconductor Technology Pilot Program, which is designed to accelerate improvements in the semiconductor industry by expediting examination of patent applications for certain semiconductor manufacturing innovations. The pilot program is intended to encourage research, development, and innovation in the semiconductor manufacturing space and provide equitable intellectual property protection to incentivize investments in the semiconductor manufacturing area. Expediting examination of patent applications directed to semiconductor manufacturing under this pilot program encourages innovations that increase semiconductor device production, reduce semiconductor manufacturing costs, and strengthen the semiconductor supply chain. Applications accepted into the pilot program will be advanced out of turn (accorded special status) for examination until a first Office action is issued. This notice outlines the conditions, requirements, and guidelines of the pilot program.
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<title>Federal Register, Volume 88 Issue 230 (Friday, December 1, 2023)</title>
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[Federal Register Volume 88, Number 230 (Friday, December 1, 2023)]
[Notices]
[Pages 83926-83929]
From the Federal Register Online via the Government Publishing Office [<a href="http://www.gpo.gov">www.gpo.gov</a>]
[FR Doc No: 2023-26340]
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DEPARTMENT OF COMMERCE
Patent and Trademark Office
[Docket No.: PTO-P-2023-0041]
Semiconductor Technology Pilot Program
AGENCY: United States Patent and Trademark Office, Department of
Commerce.
ACTION: Notice.
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SUMMARY: The United States Patent and Trademark Office (USPTO) is
implementing the Semiconductor Technology Pilot Program, which is
designed to accelerate improvements in the semiconductor industry by
expediting examination of patent applications for certain semiconductor
manufacturing innovations. The pilot program is intended to encourage
research, development, and innovation in the semiconductor
manufacturing space and provide equitable intellectual property
protection to incentivize investments in the semiconductor
manufacturing area. Expediting examination of patent applications
directed to semiconductor manufacturing under this pilot program
encourages innovations that increase semiconductor device production,
reduce semiconductor manufacturing costs, and strengthen the
semiconductor supply chain. Applications accepted into the pilot
program will be advanced out of turn (accorded special status) for
examination until a first Office action is issued. This notice outlines
the conditions, requirements, and guidelines of the pilot program.
DATES: Pilot Duration: The Semiconductor Technology Pilot Program will
accept petitions to make special beginning December 1, 2023 until
either December 2, 2024 or the date the USPTO accepts a total of 1,000
grantable petitions, whichever occurs first. The USPTO may, at its sole
discretion, terminate the pilot program depending on factors such as
workload and resources needed to administer the program, feedback from
the public, and the effectiveness of the program. If the pilot program
is terminated, the USPTO will notify the public. The USPTO will
indicate on its website at <a href="http://www.uspto.gov/SemiconductorTechnology">www.uspto.gov/SemiconductorTechnology</a> the
total number of petitions filed and the number of applications accepted
into the pilot program.
FOR FURTHER INFORMATION CONTACT: For general questions regarding this
pilot program, please contact Steven J. Fulk, Legal Advisor, at 571-
270-0072 or <a href="/cdn-cgi/l/email-protection#dd8ea9b8abb8b3f39ba8b1b69da8aeada9b2f3bab2ab"><span class="__cf_email__" data-cfemail="0152756477646f2f47746d6a41747271756e2f666e77">[email protected]</span></a>; Nalini Mummalaneni, Senior Legal
Advisor, at 571-270-1647 or <a href="/cdn-cgi/l/email-protection#abe5cac7c2c5c285e6dec6c6cac7cac5cec5c2ebded8dbdfc485ccc4dd"><span class="__cf_email__" data-cfemail="86c8e7eaefe8efa8cbf3ebebe7eae7e8e3e8efc6f3f5f6f2e9a8e1e9f0">[email protected]</span></a>; or Susy
Tsang-Foster, Senior Legal Advisor, at 571-272-7711 or <a href="/cdn-cgi/l/email-protection#b3e0c6c0ca9de7c0d2ddd49ef5dcc0c7d6c1f3c6c0c3c7dc9dd4dcc5"><span class="__cf_email__" data-cfemail="683b1d1b11463c1b09060f452e071b1c0d1a281d1b181c07460f071e">[email protected]</span></a>, all from the Office of Patent Legal Administration,
Office of the Deputy Commissioner for Patent Examination Policy. For
questions relating to a particular petition, please contact Bumsuk Won,
Management Quality Assurance Specialist, at 571-272-2713 or
<a href="/cdn-cgi/l/email-protection#5517203826203e7b023a3b15202625213a7b323a23"><span class="__cf_email__" data-cfemail="7331061e0006185d241c1d33060003071c5d141c05">[email protected]</span></a>; or William Kraig, Supervisory Patent Examiner, at
571-272-8660 or <a href="/cdn-cgi/l/email-protection#93c4fafffffaf2febdd8e1f2faf4d3e6e0e3e7fcbdf4fce5"><span class="__cf_email__" data-cfemail="36615f5a5a5f575b187d44575f5176434546425918515940">[email protected]</span></a>, both of Technology Center
2800. For questions on electronic filing, please contact the Patent
Electronic Business Center (EBC) at 866-217-9197 (during its operating
hours of 6 a.m. to midnight ET, Monday-Friday) or <a href="/cdn-cgi/l/email-protection#7510171635000605011a5b121a03"><span class="__cf_email__" data-cfemail="d1b4b3b291a4a2a1a5beffb6bea7">[email protected]</span></a>.
SUPPLEMENTARY INFORMATION: New patent applications are normally taken
up for examination in the order of their U.S. filing date or national
stage entry date. See sections 708 and 1893.03(b) of
[[Page 83927]]
the Manual of Patent Examining Procedure (9th ed., Rev. 07.2022,
February 2023) (MPEP). The USPTO has procedures under which an
application will be advanced out of turn (accorded special status) for
examination if the applicant files (1) a petition to make special under
37 CFR 1.102(c) or (d) with the appropriate showing, or (2) a request
for prioritized examination under 37 CFR 1.102(e). See 37 CFR 1.102(c)-
(e) and MPEP 708.02, 708.02(a), and 708.02(b). The USPTO revised its
accelerated examination procedures effective August 25, 2006, requiring
that all petitions to make special comply with the requirements of the
revised accelerated examination (AE) program set forth in MPEP
708.02(a), except those based on an inventor's health or age or the
Patent Prosecution Highway (PPH) Pilot Program. See Changes to Practice
for Petitions in Patent Applications to Make Special and for
Accelerated Examination, 71 FR 36323 (June 26, 2006).
The USPTO is implementing the Semiconductor Technology Pilot
Program to support the Creating Helpful Incentives to Produce
Semiconductors (CHIPS) Act of 2022 (see Pub. L. 117-167, 136 Stat. 1366
(2022)), which provides appropriations to implement the semiconductor
provisions included in the William M. (Mac) Thornberry National Defense
Authorization Act for Fiscal Year 2021 (see Pub. L. 116-283, 134 Stat.
3388 (2021)). The pilot program also supports Executive Order 14080,
dated August 25, 2022, which implements the incentives for
semiconductor manufacturing provided by the CHIPS Act. See Executive
Order 14080 of August 25, 2022, Implementation of the CHIPS Act of
2022, 87 FR 52847 (August 30, 2022). The CHIPS Act allocates
transformative investments that are designed to increase semiconductor
manufacturing capacity and improve the resilience of the semiconductor
supply chain. The Semiconductor Technology Pilot Program supports the
CHIPS Act by encouraging research, development, and innovation in the
semiconductor manufacturing space and providing equitable intellectual
property protection to incentivize investments in the semiconductor
manufacturing area. Expediting examination of patent applications
directed to certain processes and apparatuses for manufacturing
semiconductor devices under this pilot program can help achieve the
goals of the CHIPS Act by encouraging innovations that increase
semiconductor device production, reduce semiconductor manufacturing
costs, and strengthen the semiconductor supply chain.
The pilot program permits an application that claims certain
processes or apparatuses for manufacturing semiconductor devices to be
advanced out of turn (accorded special status) until a first Office
action is issued without meeting all of the requirements of the
accelerated examination program set forth in MPEP 708.02(a) (for
example, examination support document) if the applicant files a
petition to make special under 37 CFR 1.102(d) meeting all of the
requirements set forth in this notice.
To qualify for the pilot program, the applicant must file a
petition to make special under the pilot program, and the application
must claim an invention directed to certain processes or apparatuses
for manufacturing semiconductor devices. The applicant must certify in
the petition to make special that: (1) the applicant has a good faith
belief that the claimed invention(s) meeting the technology requirement
of the pilot program improves the manufacturing of semiconductor
devices; (2) the process or apparatus covered by the claimed
invention(s) meeting the technology requirement of the pilot program is
disclosed in the specification as being primarily focused on the
manufacturing of semiconductor devices; (3) the applicant has a good
faith belief that expediting examination of the application will have a
positive impact on the semiconductor manufacturing industry, such as
increasing semiconductor device production, lowering semiconductor
manufacturing costs, or increasing the resilience of the semiconductor
supply chain; and (4) the inventor or any joint inventor has not been
named as the inventor or a joint inventor on more than four other
nonprovisional applications in which a petition to make special under
this pilot program has been filed. Applications accepted into the pilot
program will be advanced out of turn (accorded special status) until a
first Office action is issued without meeting all of the current
requirements, including any extra fee payments, of the accelerated
examination program (for example, the requirement for an examination
support document) or the prioritized examination program (for example,
the prioritized examination fee or processing fee).
All other requirements of the accelerated examination program that
are not required by this notice, including the 37 CFR 1.17(h) fee for a
petition to make special under 37 CFR 1.102(d), are hereby waived based
upon the special procedure specified in this notice. No fees or
requirements other than those discussed above are waived by this pilot
program. The USPTO will periodically evaluate the pilot program to
determine whether and to what extent its coverage should be expanded or
limited.
Part I. Requirements To Participate
A petition to make special under the pilot program may be granted
in an application provided that the following conditions are satisfied:
(1) Types of Applications and Time for Filing Petition
The petition to make special under the pilot program must be filed:
(a) with the filing of a noncontinuing original utility
nonprovisional application or entry into the national stage under 35
U.S.C. 371, or within 30 days of the filing date or entry date of the
application; or
(b) with the filing of an original utility nonprovisional
application claiming the benefit of an earlier filing date under 35
U.S.C. 120, 121, 365(c), or 386(c) of only one prior nonprovisional
application or only one prior international application designating the
United States or within 30 days of the filing date of such application.
Definition
Noncontinuing application: A noncontinuing application is an
application that is not a continuation, divisional, or continuation-in-
part application filed under the conditions specified in 35 U.S.C. 120,
121, 365(c), or 386(c) and 37 CFR 1.78. See MPEP 201.02.
The pilot program is reserved for the nonprovisional applications
described above that have not received a first Office action (including
a written restriction requirement). Any application that claims the
benefit of the filing date of two or more prior filed applications that
are nonprovisional U.S. applications and/or international applications
designating the United States is not eligible for participation in the
pilot program. Claiming the benefit under 35 U.S.C. 119(e) of one or
more prior provisional applications or claiming a right of priority
under 35 U.S.C. 119(a)-(d) or (f) to one or more foreign applications
will not affect eligibility for the pilot program.
(2) Office Form Required for Filing Petition
To participate in this pilot program, an applicant must file a
petition to make special using form PTO/SB/467, titled ``CERTIFICATION
AND PETITION TO
[[Page 83928]]
MAKE SPECIAL UNDER THE SEMICONDUCTOR TECHNOLOGY PILOT PROGRAM''
(available at <a href="http://www.uspto.gov/PatentForms">www.uspto.gov/PatentForms</a>). Form PTO/SB/467 contains the
necessary certifications for qualification to participate in the pilot
program. Use of the form will enable the USPTO to quickly identify and
timely process the petition. In addition, use of the form will help
applicants understand and comply with the petition requirements of the
pilot program. Under 5 CFR 1320.3(h), form PTO/SB/467 does not collect
``information'' within the meaning of the Paperwork Reduction Act of
1995.
(3) The Application Must Include at Least One Claim That Meets the
Technology Requirement
The application must contain at least one claim that covers a
process or an apparatus for manufacturing a semiconductor device and
corresponds to one or more of the technical concepts within H10
(Semiconductor Devices; Electric Solid-State Devices Not Otherwise
Provided For) or H01L (Semiconductor Devices Not Covered by Class H10)
in the Cooperative Patent Classification (CPC) system.
The full schemes of the H10 class and the H01L subclass are
available at <a href="http://www.uspto.gov/web/patents/classification/">www.uspto.gov/web/patents/classification/</a>.
(4) Required Certifications
The petition to make special must certify that: (a) the applicant
has a good faith belief that the claimed invention(s) meeting the
technology requirement of the pilot program improves the manufacturing
of semiconductor devices; (b) the process or apparatus covered by the
claimed invention(s) meeting the technology requirement of the pilot
program is disclosed in the specification as being primarily focused on
the manufacturing of semiconductor devices; (c) the applicant has a
good faith belief that expediting examination of the application will
have a positive impact on the semiconductor manufacturing industry,
such as increasing semiconductor device production, lowering
semiconductor manufacturing costs, or increasing the resilience of the
semiconductor supply chain; and (d) the inventor or any joint inventor
has not been named as the inventor or a joint inventor on more than
four other nonprovisional applications in which a petition to make
special under this pilot program has been filed. Form PTO/SB/467
contains these certifications.
(5) Publication Requirement for Applications
If the applicant files the petition to make special on the date of
filing of an application, the application may not be filed with a
nonpublication request. If the applicant previously filed a
nonpublication request in the application, the applicant should file a
rescission of the nonpublication request no later than the time the
petition to make special is filed. The applicant may use form PTO/SB/36
to rescind the nonpublication request.
(6) Claim Limits and No Multiple Dependent Claims
The application must contain no more than three independent claims
and no more than 20 total claims (``program claim limits'') and must
not contain any multiple dependent claims. If an application exceeds
three independent claims or 20 total claims, or if it contains any
multiple dependent claims, the applicant should file a preliminary
amendment in compliance with 37 CFR 1.121 to cancel any excess claims
or multiple dependent claims no later than the date the petition to
make special under the pilot program is filed. After an application has
been granted special status under the pilot program, any amendment that
does not comply with the program claim limits or adds a multiple
dependent claim is not permitted. The petition must include a statement
that the applicant agrees not to exceed the program claim limits or add
any multiple dependent claims during the remainder of prosecution of
the application if the application has been granted special status
under the pilot program. The examiner may refuse entry of any amendment
filed in reply to an Office action that, if entered, would result in a
set of pending claims that exceeds the program claim limits or adds a
multiple dependent claim. See Part V of this notice.
(7) Statement Regarding Restriction Requirement, Elected Invention and
Claim Requirements
The petition must include a statement that the applicant agrees to
the following if the application is granted special status under the
pilot program:
(a) If a requirement for restriction or unity of invention is made,
the applicant will make an election to an invention that meets the
technology requirement of this pilot program, and
(b) During the remainder of prosecution of the application: (i) the
applicant will not exceed the program claim limits or add any multiple
dependent claims; and (ii) the applicant will not cancel all claims to
the elected invention or all claims that meet the technology
requirement of this pilot program.
(8) Electronic Filing of Application and Petition Required
The petition to make special may only be made by filing form PTO/
SB/467, which must be filed electronically using the USPTO's Patent
Center (at <a href="https://patentcenter.uspto.gov">https://patentcenter.uspto.gov</a>). Applicants must file the
petition using the document description (``Petition for Semiconductor
Pilot'') indicated on form PTO/SB/467. In addition, the application or
national stage entry must be filed using Patent Center.
(9) Required Use of DOCX Format for Specification, Claim(s), and
Abstract on Filing or on National Stage Entry
The specification, claim(s), and abstract of the application must
be submitted in DOCX format at the time the application is filed or
enters the national stage. Prior to submitting the application for
filing in DOCX format, applicants will receive a feedback document.
Applicants may find it beneficial to review the feedback document and
make corrections to the application before filing the application. By
making the necessary corrections before filing, applicants may avoid
delays that can occur in the pre-examination process. For more
information on DOCX filing in Patent Center, please see <a href="http://www.uspto.gov/patents/docx">www.uspto.gov/patents/docx</a>. Applicants can direct any inquiries concerning electronic
filing of the petition and application to the EBC at 866-217-9197 or
<a href="/cdn-cgi/l/email-protection#1471767754616764607b3a737b62"><span class="__cf_email__" data-cfemail="5d383f3e1d282e2d2932733a322b">[email protected]</span></a>.
(10) Filing Limitations
An applicant may file a petition to participate in the pilot
program if the inventor or any joint inventor has not been named as the
inventor or a joint inventor on more than four other nonprovisional
patent applications in which a petition to make special under this
pilot program has been filed. In other words, the inventor or any joint
inventor named on the application can only be named as the inventor or
a joint inventor on a maximum of five nonprovisional applications in
which a petition under the pilot program has been filed. Therefore, if
the inventor or any one of the joint inventors of the instant
application has been named as the inventor or a joint inventor on more
than four other nonprovisional applications in which petitions under
this pilot program have been filed, then the petition for the instant
application may not be appropriately filed.
[[Page 83929]]
Part II. Internal Processing of the Petition Under the Pilot Program
If the applicant files a petition to make special under the pilot
program, the USPTO will not render a decision on the petition until the
application has completed pre-examination processing. Any inquiries
concerning a particular petition to make special should be directed to
the appropriate Technology Center handling the petition. If the
petition is granted, the application will be accorded special status
under the pilot program. The application will be placed on an
examiner's special docket until a first Office action is issued. After
the first Office action, the application will no longer be treated as
special during examination. For example, if an amendment is filed in
response to a first Office action, it will be placed on the examiner's
regular amended docket.
If the petition to make special under the pilot program does not
comply with the requirements set forth in this notice, the USPTO may
notify the applicant of the deficiency by issuing a notice. The notice
will give the applicant only one opportunity to correct the deficiency.
If the applicant still wishes to participate in the pilot program, the
applicant must file a reply via Patent Center that includes appropriate
corrections and a properly signed petition form PTO/SB/467 within one
month or 30 days, whichever is longer, from the mail/notification date
of the notice informing the applicant of the deficiency. The time
period for reply is not extendable under 37 CFR 1.136(a). If the
applicant fails to correct the deficiency indicated in the notice
within the time period set, the application will not be accepted into
the pilot program and will be taken up for examination in accordance
with standard examination procedures.
In addition, the petition will be dismissed without an opportunity
for correction if any of the following deficiencies exists: (1) the
application does not contain a claim that meets the technology
requirement of the pilot program; (2) the process or apparatus for the
manufacturing of semiconductor devices covered by the claim meeting the
technology requirement is not disclosed in the specification as being
primarily focused on the manufacturing of semiconductor devices; (3)
the application or national stage entry was not filed electronically in
Patent Center; (4) the specification, claim(s), and abstract of the
application were not submitted in DOCX format at the time of filing or
national stage entry; (5) the application is not an original (non-
reissue), nonprovisional utility application filed under 35 U.S.C.
111(a), or an international application that has entered the national
stage under 35 U.S.C. 371; (6) the application claims the benefit of
the filing date of two or more prior filed applications that are
nonprovisional U.S. applications and/or international applications
designating the United States; and (7) the petition was not filed with
the application or national stage entry or within 30 days of the
application's filing date or national stage entry date.
Part III. Requirement for Restriction or Unity of Invention
If the claims in the application are directed to multiple
inventions, the examiner may make a requirement for restriction or
unity of invention in accordance with current restriction practice. If
such a requirement is made, the applicant must make an election to an
invention that meets the technology requirement of this pilot program.
Part IV. Period for Reply by the Applicant
The time periods set for reply in Office actions for an application
granted special status under the pilot program will be the same as
those set forth in MPEP 710.02(b).
Part V. Replies by the Applicant Under the Pilot Program
During the remainder of prosecution of an application granted
special status under the pilot program, the applicant's replies to
Office actions must be fully responsive to the rejections, objections,
and requirements made by the examiner. Any amendment or election filed
in reply to an Office action may be treated as not fully responsive if
it attempts to: (1) add claims that would result in more than three
independent claims or more than 20 total claims pending in the
application; (2) add any multiple dependent claim(s); (3) cancel all
claims that meet the technology requirement of the pilot program; (4)
elect an invention that does not meet the technology requirement of the
pilot program, or (5) cancel all claims to the elected invention.
If a reply to a nonfinal Office action is not fully responsive for
any of the reasons set forth above but is a genuine attempt to advance
the application to final action, the examiner may, at their discretion,
issue a notice of nonresponsive amendment and provide a shortened
statutory period of two months for the applicant to supply a fully
responsive reply. Extensions of this time period under 37 CFR 1.136(a)
to the notice of nonresponsive amendment will be permitted, but in no
case can any extension carry the date for reply to this notice beyond
the maximum period of SIX MONTHS set by statute (35 U.S.C. 133).
However, any further nonresponsive amendment typically will not be
treated as genuine, and therefore, the time period set in the prior
notice will continue to run.
Part VI. After-Final and Appeal Procedures
Any amendment, affidavit, or other evidence after a final Office
action and prior to appeal must comply with 37 CFR 1.116. During the
appeal process, the application will be treated in accordance with the
normal appeal procedure (see MPEP Chapter 1200).
Part VII. Withdrawal From the Pilot Program
There is no provision for withdrawal from the pilot program. An
applicant may abandon an application that has been granted special
status under the pilot program in favor of a continuing application.
However, a continuing application will not automatically be granted
special status based on the petition filed in the parent application.
Each application (including each continuing application) must, on its
own merit, meet all requirements for special status under the pilot
program, and be accompanied by its own petition as detailed in Part I
above.
Katherine Kelly Vidal,
Under Secretary of Commerce for Intellectual Property and Director of
the United States Patent and Trademark Office.
[FR Doc. 2023-26340 Filed 11-30-23; 8:45 am]
BILLING CODE 3510-16-P
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