Legal Alert: USPTO Launches Semiconductor Technology Pilot Program

On December 1, the United States Patent and Trademark Office launched the Semiconductor Technology Pilot Program. As part of the Office’s efforts to support the Creating Helpful Incentives to Produce Semiconductors (CHIPS) Act of 2022, the pilot program will expedite the examination of patent applications for innovations that increase semiconductor device production, reduce semiconductor manufacturing costs, and strengthen the semiconductor supply chain. The USPTO will accept petitions under this program until December 2, 2024, or until a total of 1,000 petitions have been granted, whichever occurs first.  

Qualifying applications that claim technologies directed to certain processes or apparatuses for manufacturing semiconductor devices will be advanced out of turn for examination (i.e., granted special status) until a first office action is issued. Applicants wishing to take advantage of this pilot program must file a petition to make special. There is no fee associated with the petition to make special, and applicants are not required to satisfy the other requirements of the accelerated examination program or the prioritized examination program.  

Program requirements  

The pilot program requirements are summarized below. For a full list of program requirements and conditions, see the Federal Register notice.  

Eligible applications  

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. 

Technology  

Eligible applications must contain at least one claim that covers a process or 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 System. Applications must contain no more than three independent claims and no more than 20 total claims and must not contain any multiple dependent claims.  

Patent Center and DOCX format  

The application or national stage entry must be filed electronically in Patent Center, and the specification, claims, and abstract must be submitted in DOCX format.  

Petition timing 

Applicants must file a petition to make special with their application or national stage entry under 35 U.S.C. § 371 or within 30 days of the filing date or entry date of the application. 

Certification  

The petition must certify: 

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.   

Use of USPTO form  

Applicants must use Form PTO/SB/467 to request participation in the pilot program.