USPTO Proposes Changes to Patent Term Adjustment Rules | Practical Law

USPTO Proposes Changes to Patent Term Adjustment Rules | Practical Law

The US Patent and Trademark Office (USPTO) proposed changes to its rules of practice governing the patent term adjustment provisions of 35 USC § 154(b).

USPTO Proposes Changes to Patent Term Adjustment Rules

Practical Law Legal Update 5-571-4005 (Approx. 3 pages)

USPTO Proposes Changes to Patent Term Adjustment Rules

by Practical Law Intellectual Property & Technology
Published on 17 Jun 2014 • USA (National/Federal)
The US Patent and Trademark Office (USPTO) proposed changes to its rules of practice governing the patent term adjustment provisions of 35 USC § 154(b).
On June 17, 2014, the USPTO issued a notice of proposed rulemaking highlighting changes to its rules of practice regarding the patent term adjustment provisions of 35 U.S.C. § 154(b). The USPTO's proposed changes provide that:
  • The time consumed by continued examination under 35 U.S.C. § 132(b) does not include the time after a notice of allowance, unless the USPTO actually resumes examination of the application after allowance.
  • The submission of a request for continued examination under 35 U.S.C. § 132(b) after a notice of allowance under 35 U.S.C. § 151 has been mailed will:
    • constitute a failure of an applicant to engage in reasonable efforts to conclude processing or examination of an application; and
    • result in a reduction of any period of patent term adjustment under 35 U.S.C. § 154(b)(1).
Comments on the proposed changes will be accepted until 60 days after their publication in the Federal Register.
The proposed changes were prompted by the US Court of Appeals for the Federal Circuit's decision in Novartis AG v. Lee (740 F.3d 593 (Fed. Cir. 2014)). In Novartis, the Federal Circuit confirmed:
  • That any time consumed by continued examination under 35 U.S.C. § 132(b) is subtracted in determining the extent to which the period defined in 35 U.S.C. 154(b)(1)(B) exceeds three years, regardless of when the continued examination under 35 U.S.C. 132(b) was initiated.
  • The time consumed by continued examination under 35 U.S.C. 132(b) does not include the time after a notice of allowance unless the USPTO actually resumes examination of the application after allowance.
For more information on the Federal Circuit's decision in Novartis, see Legal Update, Any Request for Continued Examination Limits Patent Term Adjustment: Federal Circuit.