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Final Patent Term Adjustment Rules Issued

February 3, 2015 – The USPTO issued final rules on January 9, 2015 implementing changes to the way in which Patent Term Adjustment (PTA) is calculated in viewof the recent Federal Circuit Decision in Novartis v. Lee (740 F.3d 593 (Fed. Cir. 2014)).

The PTA statute, in part, guarantees that a patent will issue within three years of filing.  Patentee is awarded one “B” term day for every day beyond the 3-year date, not including time consumed by continued examination.

Prior to Novartis, PTA credit per B-term delay by the PTO ended when an RCE was filed. In Novartis, the court held that even if an RCE was filed, PTA for B-term should still be granted for post-Notice of Allowance days.

Briefly, the final rules affect patents where a request for continued examination (RCE) was filed during prosecution. The new rules clarify that applicants are entitled to PTA credit for the PTO’s B-term delay including the time between Notice of Allowance and the Issue Date of the patent.  Revised 37 CFR 1.703(b)(1) reads as follows:

  • (b) The period of adjustment under § 1.702(b) is the number of days, if any, in the period beginning on the day after the date that is three years after the date on which the application was filed under 35 U.S.C. 111(a) or the national stage commenced under 35 U.S.C. 371(b) or (f) in an international application and ending on the date a patent was issued, but not including the sum of the following periods:
  • (1) The number of days, if any, in the period beginning on the date on which a request for continued examination of the application under 35 U.S.C. 132(b) was filed and ending on the date of mailing of a notice of allowance under 35 U.S.C. 151;

Date of mailing of a notice of allowance, is excluded from B-Delay

Note that, in contrast to the finding in the Novartis decision, under these PTO final rules the date of mailing of a notice of allowance, is excluded from B-Delay.

Filing multiple RCE’s

Note further that, if multiple RCE’s are filed and multiple Notices of Allowance issued, PTA credit will only be given for the time period from the last Notice of Allowance until the Issue date

New type of deduction for “applicant delay”

The new rules also create a new type of deduction from PTA for “applicant delay” when an RCE is filed after a Notice of Allowance.  This new rule, 37 CFR § 1.704(c)(12), will be effective for RCE’s filed after March 10, 2015. 

  • (12) Submission of a request for continued examination under 35 U.S.C. 132(b) after any notice of allowance under 35 U.S.C. 151 has been mailed, in which case the period of adjustment set forth in § 1.703 shall be reduced by the number of days, if any, beginning on the day after the date of mailing of the notice of allowance under 35 U.S.C. 151 and ending on the date the request for continued examination under 35 U.S.C. 132(b) was filed.

In other words, filing an RCE after a Notice of Allowance can result in PTA loss, between the date of the notice of allowance and the date of the RCE filing.

Exception for post-allowance RCE/IDS filings

However, the USPTO has amended 37 CFR 1.704(d) to provide an exception for post-allowance RCE/IDS filings with a 30 day certification. § 1.704(d)(1) has been revised as follows:

  • (d)(1) A paper containing only an information disclosure statement in compliance with §§ 1.97 and 1.98 will not be considered a failure to engage in reasonable efforts to conclude prosecution (processing or examination) of the application under paragraphs (c)(6), (c)(8), (c)(9), or (c)(10) of this section, and a request for continued examination in compliance with § 1.114 with no submission other than an information disclosure statement in compliance with §§ 1.97 and 1.98 will not be considered a failure to engage in reasonable efforts to conclude prosecution (processing or examination) of the application under paragraph (c)(12) of this section, if the paper or request for continued examination is accompanied by a statement that each item of information contained in the information disclosure statement:
  • (i) Was first cited in any communication from a patent office in a counterpart foreign or international application or from the Office, and this communication was not received by any individual designated in § 1.56(c) more than thirty days prior to the filing of the information disclosure statement; or
  • (ii) Is a communication that was issued by a patent office in a counterpart foreign or international application or by the Office, and this communication was not received by any individual designated in § 1.56(c) more than thirty days prior to the filing of the information disclosure statement.

Clarification regarding papers filed after a Notice of Allowance

The final rules also provide clarification regarding which papers filed after a Notice of Allowance will result in reduction of PTA. Under the final rules the following will NOT be considered a failure to engage in reasonable efforts to conclude processing of examination of the application under § 1.704(c)(10):  

  • status letters,
  • requests for a refund,
  • an inventor’s oath or declaration,
  • resubmission of previously filed papers,
  • comments on the substance of an interview and
  • certain request for acknowledgment of an IDS

Additionally, the final rules clarify that a request for a corrected filing receipt and a request to change or correct inventorship, if filed after a Notice of Allowance will result in a 1.704(c)(10) PTA reduction.

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