Imagine That IP Law Blog

The U.S. Patent and Trademark Office (USPTO) recently announced on December 2, 2023 the Semiconductor Technology Pilot Program (STPP), which is designed to support the Creating Helpful Incentives to Produce Semiconductors (CHIPS) Act of 2022 by expediting the examination of patent applications related to semiconductor technology.  More specifically, the STPP is designed to encourage research, development, and innovation in semiconductor manufacturing.

Under the STPP, an applicant must file a timely “petition to make special” using the required petition form (Form PTO/SB/467) with the following statements of certification:

• 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;
• 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;
• 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
• 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.

The USPTO will accept petitions under the new program until December 2, 2024, or the date when a total of 1,000 applications have been granted special status under this program, whichever occurs earlier.

The applicant must file the petition to make special with the 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. There is no fee for the petition to make special for an expedited examination under the STPP.   (The petition fee under 37 CFR 1.102(d) is waived.)

The USPTO will accept petitions to make special under the STPP until December 2, 2024, or the date when a total of 1,000 applications have been granted special status under this program, whichever occurs earlier.

Once the petition is granted, the USPTO will advance the application out of turn for examination until a first office action is issued.  However, in its announcement of December 2, 2023, the USPTO has not indicated whether the application will continue to be accorded special status for expedited examination after the first office action.

There are limitations to the STPP:

• The program is open to: 1) non-continuing original utility nonprovisional applications; and 2) original utility nonprovisional applications that claim the benefit of the filing date under 35 U.S.C. 120, 121, 365(c), or 386(c) of only one prior application that is either a nonprovisional application or an international application designating the United States. (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 STPP.)
• Eligible patent applications must contain at least one claim that covers a process or an apparatus for manufacturing a semiconductor device and that 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.

To qualify for expedited examination under the STPP, electronic filing of the patent application in USPTO Patent Center using the Word (.docx) format is required.  The application or national stage entry must be electronically filed with the specification, claims, and abstract submitted in the Word (.docx) format.

The most significant advantage of the STPP is expedited examination of the application until the first office action is issued. Considering that a patent application filed in the United States normally takes about one-and half (1.5) to two (2) years before the applicant receives the first office action (unless the applicant petitions for and receives expedited examination status under the USPTO’s Track One program), filing a patent application under the STPP may significantly shorten the pendency from filing to issuance.  If the applicant wishes to advance the application to issuance as soon as possible, then filing a petition to make special under the STPP should be seriously considered.

Another significant advantage of the STPP is that, unlike the Track One expedited examination program, which requires a large amount of extra fee (Request for Prioritized Examination Fee under 37 C.F.R. 1.17(c) is $4,200.00 (large entity), $1,680.00 (small entity), or $840.00 (micro entity)), no fee is required for a petition for expedited examination under the STPP.

Another advantage of the STPP is that, unlike the Track One expedited examination program, which has a limit of four (4) independent claims and thirty (30) total claims, there is no limit on how many claims can be filed in a patent application under the STPP.  The USPTO’s announcement of December 2, 2023 does not specify any claim limit.

The USPTO’s announcement of December 2, 2023 does not explicitly indicate whether any preliminary amendment is allowed, and if it is, the timing of the preliminary amendment.  As a practical matter, considering that the USPTO may issue its first office action soon after the petition is filed, the applicant should either 1) make sure that the claims filed with the application are in their final desired form; or 2) file a preliminary amendment as soon as possible after filing the petition.  According to the latest statistics, the average time from filing a Track One petition for expedited examination to a first office action is only 1.9 months.

Semiconductor manufacturers should see if they can take advantage of this new program, which can greatly streamline the patent application process.