IP Update, Vol. 12, No. 6

Editor: Marc S. Weiner, Esq.

Optional Recalculation of Patent Term Adjustment Must be filed by July 31, 2014

The purpose of this notice is to provide you with an additional option that has been made available by the United States Patent and Trademark Office with respect to Patent Term Adjustment (PTA).

More specifically, the USPTO has provided an optional procedure to file a Request for Recalculation of PTA as a result of the USPTO delay in updating the computer program used to calculate PTA with respect to the changes resulting from the AIA Technical Corrections Act. This option is for patents issued between January 14, 2013 and May 20, 2014 that resulted from international applications, and is a recalculation of the PTA based solely on “A” delay (Patent Office delay based on the 14-month rule)(37 C.F.R. 1.703(a)(1)). There is no government official fee to file the request for recalculation, which must be filed by July 31, 2014.

If you are interested in this additional option to request recalculation of the “A” delay and possibly obtain additional PTA based on A delay, then any Request for Recalculation of “A” delay for this subset of patents must be filed no later than July 31, 2014. Implementation of this option includes analyzing the file to determine if the USPTO used the incorrect date from which the fourteen month patent term adjustment period is measured, preparing and filing the request, docketing the follow-up to the Request, reporting the decision on the Request, and forwarding the Certificate of Correction if issued.

Again, this option must be fully implemented by July 31, 2014.

Summary provided by Cynthia Leonard