USPTO Proposes Revision of Patent Term Adjustment Provisions Concerning Appellate Review | Practical Law

USPTO Proposes Revision of Patent Term Adjustment Provisions Concerning Appellate Review | Practical Law

The USPTO issued a notice of proposed rulemaking to revise the patent term adjustment provisions concerning appellate review so that appellate review under the patent term adjustment rules begins when jurisdiction over the application passes to the Board of Patent Appeals and Interferences (BPAI) rather than the date when the appeal is filed. The USPTO also proposes to make failure to timely file an appeal brief a failure to engage in reasonable efforts to conclude prosecution of the application.

USPTO Proposes Revision of Patent Term Adjustment Provisions Concerning Appellate Review

by US Intellectual Property & Technology
Published on 28 Dec 2011 • USA (National/Federal)
The USPTO issued a notice of proposed rulemaking to revise the patent term adjustment provisions concerning appellate review so that appellate review under the patent term adjustment rules begins when jurisdiction over the application passes to the Board of Patent Appeals and Interferences (BPAI) rather than the date when the appeal is filed. The USPTO also proposes to make failure to timely file an appeal brief a failure to engage in reasonable efforts to conclude prosecution of the application.
On December 28, 2011, the USPTO issued a notice of proposed rulemaking in the Federal Register to revise the patent term adjustment provisions concerning appellate review.
A patent applicant is entitled to patent term adjustment for certain delays by the USPTO in examining the application, including:
  • The USPTO's failure to issue a patent within three years of the application filing date, not including the period of any appellate review of the application (35 USC § 154(b)(1)(B)) (the B provision).
  • Delays resulting from the applicant's successful appeal of an adverse patentability determination (35 USC § 154(b)(1)(C)) (the C provision).
The USPTO is proposing to revise the patent term adjustment provisions so that appellate review begins on the date when jurisdiction over the patent application passes to the Board of Patent Appeals and Interferences (BPAI) rather than the date when the appeal is filed. Jurisdiction over the application passes to the BPAI on the earlier date of the:
  • Filing of a reply brief.
  • Expiration of the time to file a reply brief.
(37 CFR § 41.35(a).)
This new rule would delay the beginning of the appellate review period for patent term adjustment calculations and would result in the possibility of both a:
  • Greater period of patent term adjustment under the B provision.
  • Lesser period of patent term adjustment under the C provision.
The USPTO is also proposing that the failure of an applicant to file an appeal brief within two months after the date the applicant filed the notice of appeal is a failure of an applicant to engage in reasonable efforts to conclude processing or examination of the application. This would reduce the period of patent term adjustment.
Written comments must be provided no later than January 27, 2012.
For more information on revisions to the patent term adjustment rules, see Legal Update, USPTO Revises Patent Term Adjustment Rule.