Fitch, Even, Tabin & Flannery LLP: Revisions of Patent Term Adjustment Provisions Relating to Appellate Review

Fitch, Even, Tabin & Flannery LLP: Revisions of Patent Term Adjustment Provisions Relating to Appellate Review

Effective September 17, 2012, the U.S. Patent and Trademark Office (USPTO) has changed the way patent term adjustment (PTA) is determined after a notice of appeal is filed in a patent application.

The new PTA provisions will apply to any application in which a notice of allowance is issued on or after September 17, 2012, and to any application in which a notice of appeal is filed on or after September 17, 2012. The timing of these USPTO rule changes coincides closely with several other changes mandated by the Leahy-Smith America Invents Act (AIA), but the AIA does not itself mandate these changes.

PTA Under 35 U.S.C. § 154

Under 35 U.S.C. § 154(b), an applicant is entitled to patent term adjustment if prosecution is delayed for one of the following reasons:

(a)  If the USPTO fails to take certain actions within set time frames (35 U.S.C § 154(b)(1)(A))

(b)  Subject to certain limitations, if the USPTO fails to issue a patent within three years of its filing date (35 U.S.C. § 154(b)(1)(B))

(c)  If the application is subject to delays due to an interference, secrecy order, or successful appellate review (35 U.S.C. § 154(b)(1)(C))

Term adjustment for these three cases above are designated respectively as type "A," "B," and "C" term adjustment. The term adjustment is reduced if the applicant has delayed prosecution.

Under the former USPTO rules, after a notice of appeal was filed, the applicant was credited with type A term adjustment if the USPTO failed to respond to an appellant's brief within four months. Once the notice of appeal was filed, however, applicants were not credited with type B term adjustment (failure to issue a patent within three years). Additionally, if the appeal was unsuccessful, if the applicant elected to withdraw the appeal, or if prosecution was reopened, then applicants were also not credited with type C term adjustment.

In some appeals, an applicant may elect to pursue continued examination by withdrawing an appeal or by requesting continued examination if the appeal is unsuccessful. Under the former rules, such applicants were ineligible for type B or C term adjustment accounting for the time the application was on appeal. Also, applicants who received a new office action after appeal also were ineligible for term adjustment for the time between the filing of the notice of appeal and the issuance of the new office action.

Revised Patent Term Adjustment Under the New Rules

The USPTO's new rules effectuate certain PTA revisions with respect to appeals.

Under the new rules, an appellant is now entitled to type B term adjustment after the date a notice of appeal is filed, until jurisdiction of the application passes to the Patent Trial and Appeal Board ("the Board"). Jurisdiction is deemed to pass to the Board upon the earlier of the date of filing of the appellant's reply brief or when the period for filing of the reply brief has expired. Accordingly, the time from filing the notice of appeal until the transfer of jurisdiction can be counted for purposes of type B term adjustment.

Under certain circumstances, the reopening of prosecution by the examiner may lead to additional type B patent term adjustment. Examiners may reopen prosecution until jurisdiction has passed to the Board. Because the period of time from the filing of the notice of appeal to any reopening of prosecution will elapse before jurisdiction passes to the Board, applicants are credited with type B term adjustment.

If the case proceeds to the Board and the appellant is successful, then the appellant will be entitled to less type C term adjustment than under the former rules. This is because the period for calculating the time on appeal now begins on the date the Board assumes jurisdiction, rather than the date on which the appellant files a notice of appeal. Because the applicant is now credited with type B term adjustment for the time period between the notice of appeal and the date the Board assumes jurisdiction, however, the loss of type C term adjustment will be offset by the gain to the applicant in type B term adjustment.

The rules also create a new category of applicant delay. If an applicant files an appeal brief more than three months after the date of filing the notice of appeal, then this counts as applicant delay, and PTA will be reduced accordingly. The appellant also will be charged with delay if the appellant files a noncompliant brief within this three-month period and does not file a compliant brief until after the end of the three-month period.

Applicability of New Rules

As indicated above, these new PTA rules apply to any application that receives a notice of allowance on or after September 17, 2012, and the patent that issues as a result. The new applicant delay provisions apply to the filing of an appeal brief in an application on which the notice of appeal is filed on or after September 17.

Also, the USPTO will apply these changes to any timely filed PTA reconsideration requests initiated pursuant to a remand from a timely filed civil action in federal court. The rules also will apply in certain requests under § 1.705(d).

For more information on these revisions, please contact Fitch Even partner Jeffrey A. Chelstrom.

© Copyright 2006-2012 Fitch, Even, Tabin & Flannery LLP - All Rights Reserved

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