USPTO Creates a New Semiconductor Technology Pilot Program

The U.S. Patent and Trademark Office (USPTO) announced the creation of a new Semiconductor Technology Pilot Program in a Notice to be published in the Federal Register on December 1, 2023. The USPTO created this program in support of the Creating Helpful Incentives to Produce Semiconductors (CHIPS) Act of 2022, to “encourag[e] research, development, and innovation in the semiconductor manufacturing space and providing equitable intellectual property protection to incentivize investments in the semiconductor manufacturing area” by expediting examination of certain patent applications. 

According to the USPTO, “[t]he 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 … if the applicant files a petition to make special … meeting all of the requirements set forth in this notice.” 

The pilot program requires that the applicant file a petition to make special under the program for an application that “claims an invention directed to certain processes or apparatuses for manufacturing semiconductor devices.”  In the petition, the applicant must certify that:  (1) it has a good faith belief that the claimed invention(s) meet the technology requirement of the pilot program; (2) the claimed process or apparatus is disclosed in the specification as being primarily focused on the manufacturing of semiconductor devices; (3) fast-tracking examination of the application will have a positive impact on the semiconductor manufacturing industry; and (4) the inventor(s) has(have) not been named as the Inventor(s) on more than four other nonprovisional applications in which a petition under this pilot program has been filed.  Requirement (3) appears quite subjective and it is unclear how it will be scrutinized. 

The pilot program is waiving some requirements of the accelerated examination program.  For example, the fee for a petition to make special is being waived under this pilot program.  Also, “[a]pplications 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).”

Some restrictions pertinent to the pilot program include:  (a) a limitation on the number and type of claims (no more than 3 independent and up to 20 total claims, and no multiple-dependent claims), (b) an agreement to elect an invention that qualifies under the pilot program if a Restriction Requirement is issued, (c) an agreement for the duration of prosecution to not exceed the claim limits or add multiple-dependent claims, and to not cancel all claims to the elected invention or that meet the technology requirements of the pilot program, (d) a requirement to submit the application in DOCX format at the time of filing or at the time of entering the U.S. national stage; and (e) a 4-petition limitation on the number of petitions that can be filed for applications having the same inventor or any same joint inventor. 

The USPTO indicated that petitions under this pilot program may be filed beginning on December 1, 2023, and that the pilot program will be available until the USPTO accepts 1,000 grantable petitions or until December 2, 2024, whichever comes first. 

The Notice is available HERE. 

More information is available here:  https://www.uspto.gov/patents/initiatives/patent-application-initiatives/semiconductor-technology-pilot-program