U.S. Patent Office Proposes Changes in Patent Term Adjustment

June 23, 2014

By: Mary K. Murray, Ph.D.

Hamilton Brook Smith Reynolds Alert

  • Proposed rule changes by the U.S. Patent and Trademark Office (USPTO) would change the effect of continued examination on adjustments to patent term.

On June 18, 2014, the USPTO published proposed rules that modify calculation of adjustment to patent term as a consequence of a request for continued examination (RCE).  The proposed rules are a response by the USPTO to a recent decision by the Court of Appeals for the Federal Circuit (CAFC) in Novartis AG v. Lee.

Patent applicants are entitled to adjustments to the normal term of twenty years from filing of a non-provisional patent application, commonly referred to as “patent term adjustment” or “PTA,” if the USPTO does not comply with specific time frames for examination.  For example, a patent applicant is entitled to PTA if the USPTO delays issuance of a patent beyond three years from filing date of the application.  Calculation of PTA, however, excludes “any time consumed by continued examination,” regardless of when the RCE was filed.

In Novartis, the CAFC confirmed that time consumed by continued examination is subtracted in determining the extent to which application pendency exceeds three years.  However, the CAFC held that the time consumed by continued examination does not include the period extending from the notice of allowance to issuance of the patent, contrary to the USPTO’s previous practice.  As a consequence of Novartis and the USPTO’s proposed rule changes, only the time between filing of an RCE and allowance will be deducted when calculating PTA for USPTO delay beyond three years from the filing date of a patent application.

The proposed rules further provide that filing an RCE after a notice of allowance has been mailed constitutes “failure of an applicant to engage in reasonable efforts to conclude processing or examination,” which also results in a reduction of PTA.  The rationale of the USPTO is to “ensure that an applicant does not obtain multiple periods of patent term adjustment” by delaying issuance of a patent following receipt of a notice of allowance.

The proposed rules are open for comment within 60 days after their June 18, 2014 publication.
 

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June 23, 2014

By: Mary K. Murray, Ph.D.

Hamilton Brook Smith Reynolds Alert

  • Proposed rule changes by the U.S. Patent and Trademark Office (USPTO) would change the effect of continued examination on adjustments to patent term.

On June 18, 2014, the USPTO published proposed rules that modify calculation of adjustment to patent term as a consequence of a request for continued examination (RCE).  The proposed rules are a response by the USPTO to a recent decision by the Court of Appeals for the Federal Circuit (CAFC) in Novartis AG v. Lee.

Patent applicants are entitled to adjustments to the normal term of twenty years from filing of a non-provisional patent application, commonly referred to as “patent term adjustment” or “PTA,” if the USPTO does not comply with specific time frames for examination.  For example, a patent applicant is entitled to PTA if the USPTO delays issuance of a patent beyond three years from filing date of the application.  Calculation of PTA, however, excludes “any time consumed by continued examination,” regardless of when the RCE was filed.

In Novartis, the CAFC confirmed that time consumed by continued examination is subtracted in determining the extent to which application pendency exceeds three years.  However, the CAFC held that the time consumed by continued examination does not include the period extending from the notice of allowance to issuance of the patent, contrary to the USPTO’s previous practice.  As a consequence of Novartis and the USPTO’s proposed rule changes, only the time between filing of an RCE and allowance will be deducted when calculating PTA for USPTO delay beyond three years from the filing date of a patent application.

The proposed rules further provide that filing an RCE after a notice of allowance has been mailed constitutes “failure of an applicant to engage in reasonable efforts to conclude processing or examination,” which also results in a reduction of PTA.  The rationale of the USPTO is to “ensure that an applicant does not obtain multiple periods of patent term adjustment” by delaying issuance of a patent following receipt of a notice of allowance.

The proposed rules are open for comment within 60 days after their June 18, 2014 publication.
 

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