USPTO Changes Patent Term Adjustment Rules to Reflect Novartis AG v. Lee | Practical Law

USPTO Changes Patent Term Adjustment Rules to Reflect Novartis AG v. Lee | Practical Law

The US Patent and Trademark Office (USPTO) issued a final rule amending patent term adjustment rules in light of the US Court of Appeals for the Federal Circuit's decision in Novartis AG v. Lee.

USPTO Changes Patent Term Adjustment Rules to Reflect Novartis AG v. Lee

Practical Law Legal Update 9-595-2725 (Approx. 3 pages)

USPTO Changes Patent Term Adjustment Rules to Reflect Novartis AG v. Lee

by Practical Law Intellectual Property & Technology
Published on 08 Jan 2015 • USA (National/Federal)
The US Patent and Trademark Office (USPTO) issued a final rule amending patent term adjustment rules in light of the US Court of Appeals for the Federal Circuit's decision in Novartis AG v. Lee.
The USPTO issued a finale rule revising patent term adjustment rules in light of the US Court of Appeals for the Federal Circuit's decision in Novartis AG v. Lee (740 F.3d 593 (Fed. Cir. 2014)) (80 Fed. Reg. 1346-01 (Jan. 9, 2015)). In Novartis AG, the Federal Circuit held that any request for continued examination limits the length of a patent term adjustment under 35 U.S.C. § 154(b)(1)(B). For more information on the Federal Circuit's decision, see Legal Update, Any Request for Continued Examination Limits Patent Term Adjustment: Federal Circuit.
The USPTO's final rule amends 37 CFR 1.703 and 37 CFR 1.704 with the following changes:
  • For Section 1.703:
    • the time consumed by continued examination does not include the time after a notice of allowance, unless the applicant files a request for continued examination after this allowance; and
    • the submission of a request for continued examination after any notice of allowance has been mailed will constitute a failure of an applicant to engage in reasonable efforts to conclude processing or examination of an application and therefore result in a reduction of any period of patent term adjustment. However, there is an exception for a request for continued examination filed solely to submit information cited in a patent office communication in a counterpart application that is submitted to the USPTO within 30 days of receipt of the patent office communication.
  • For Section 1.704, the rule provides clarification on what papers may be submitted after a notice of allowance without the applicant being considered to have failed to engage in reasonable efforts to conclude processing or examination of the application.
The changes to Section 1.703 will take effect on January 9, 2015. The changes to Section 1.704 will take effect 60 days after January 9, 2015.