IP Update, Vol. 13, No. 2

Editor: Marc S. Weiner, Esq.

Changes to Patent Term Adjustment in view of the Federal Circuit Decision in Novartis v. Lee

On January 9, 2015, the USPTO issued a final rule, Changes to Patent Term Adjustment in view of the Federal Circuit Decision in Novartis v. Lee, setting forth final rule changes. The Notice (linked here) implements changes clarifying many PTA issues and implementing the holding of Novartis v. Lee, which are discussed below.

I.The USPTO revised the interpretation of “Time Consumed by Continued Examination” in light of Novartis to state that the day of allowance is excluded and still considered time consumed by a Request for Continued Examination.

This rule is effective immediately and applies, prospectively and retroactively, to all patents subject to American Inventors Protection Act (AIPA) Patent Term Adjustment (PTA).

II.Submission of a Request for Continued Examination (RCE) for any reason other than for an RCE to have an Information Disclosure Statement (IDS) accompanied with a statement under § 1.704(d), considered, will result in delay of PTA. Specifically, if an RCE is filed, without a statement under § 1.704(d), PTA is reduced from the date of filing of the RCE to and including the day of the mailing of the Notice of Allowance.

The USPTO has amended 37 CFR 1.704(d), to add a “safe harbor” exempting some post-allowance RCE/IDS filings from the new PTA reduction. To qualify, the RCE must only submit a compliant IDS, and the IDS must be accompanied by a statement under Rule 1.704(d), that:

[E]ach 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.

The new 37 CFR 1.704(c)(12) PTA reduction applies only to applications in which an RCE is filed on or after March 10, 2015. For example: Applicant provides prior art for submission in an application after the payment of the issue fee. If the Applicant can certify as in statements (i) or (ii) above, an IDS may be submitted with an RCE/ Quick Path IDS (QPIDS) as long as the 30 day certification applies and the statement under Rule 1.704(d) is made in the IDS. In such case no PTA reduction applies.

III. The USPTO clarifies which “other papers” if filed after allowance, will result in loss of PTA:

(1) an amendment under § 1.312;

(2) a paper containing a claim for priority or benefit or request to correct priority or benefit information (e.g., a new or supplemental application data sheet filed to correct foreign or domestic benefit information);

(3) a request for a corrected filing receipt;

(4) a certified copy of a priority document;

(5) drawings;

(6) a letter relating to biologic deposits;

(7) a request to change or correct inventorship; and

(8) an information disclosure statement not accompanied by a statement in compliance with § 1.704(d).

IV. The USPTO also clarifies which “other papers” if filed after allowance, will not result in loss of PTA:

(1) an Issue Fee(s) Transmittal (PTOL-85B);

(2) a power of attorney;

(3) a power to inspect;

(4) a change of address;

(5) a change of entity status (micro, small, non-small);

(6) a response to the examiner’s reasons for allowance or a request to correct an error or omission in the ”Notice of Allowance” or ”Notice of Allowability”;

(7) status letters;

(8) requests for a refund;

(9) an inventor’s oath or declaration;

(10) an information disclosure statement with a statement in compliance with § 1.704(d);

(11) the resubmission by applicant of unlocatable paper(s) previously filed in the application (§ 1.251);

(12) a request for acknowledgment of an information disclosure statement in compliance with §§ 1.97 and 1.98:

a. provided that the applicant had requested that the examiner acknowledge the information disclosure statement prior to the notice of allowance, or

b. the request for acknowledgement was applicant’s first opportunity to request that the examiner acknowledge the information disclosure statement;

(13) comments on the substance of an interview where the applicant-initiated interview resulted in a notice of allowance; and

(14) letters related to government interests (e.g., those between NASA and the Office).

Summary provided by BSKB PTA Team.