by Alex Chan
On April 1, 2013, the U.S. Patent and Trademark Office
(USPTO) published interim final rules revising several patent term adjustment
(PTA) provisions in view of the AIA Technical Corrections Act of January 14,
2013. 78 Fed. Reg. 19416. The USPTO's interim final rules became effective on
April 1, 2013, and apply to any patent granted on or after January 14, 2013.
Applications pending as of January 14, 2013 are therefore subject to the new
The interim final rules aim to eliminate
administrative inefficiencies that existed under the old system and streamline
the legal procedures for challenging PTA within and outside the USPTO. The
interim final rules cover six different areas, each of which is discussed in
Initial PTA Determination is Eliminated
Under the revised rules, the USPTO will no longer provide
its initial PTA determination in the Notice of Allowance. Applicants will now
be notified of the actual PTA at the time of patent grant.
Under the previous rules, the USPTO determined the PTA in
two separate instances-one at the time of Notice of Allowance (initial
determination), and another at the time of Issue Notification (actual
determination taking into consideration any delay incurred between the Notice
of Allowance and Issue Notification). The old system was flawed because the
amount of PTA could not be finally calculated until the patent issued, despite
the previous rules that the Office make a determination at the time of the
Notice of Allowance.
Deadline for Requesting Reconsideration of
PTA is Extended
Under the old rules, a patentee dissatisfied with the
Office's PTA calculation must challenge it within two months after patent
Under the new rules, these two months can be extended for
an additional total of five months upon payment of fees. The new rules
effectively give patentees more time to review PTA and challenge its
To challenge the Office's PTA calculation, a patentee may
file a Request for Reconsideration of PTA to request correction of any PTA
errors that occurred during prosecution. The new rules also allow patentees for
patents granted during the transition period to file or re-file the Request for
Reconsideration that is otherwise unavailable under the old rules.
Deadline for Civil Action is Now Set at 180
Days from USPTO Decision on Request for Reconsideration
The interim final rules also implement significant
changes related to the conditions and circumstances under which a patentee can
bring a district court civil action to challenge a PTA determination.
Under the prior rules, a civil action must be filed
"within 180 days after the grant of the patent," which forced patentees to file
suits without having received a decision on a Request for Reconsideration by
the USPTO, only to have the actions dismissed if the USPTO's reconsideration
decision was ultimately satisfactory.
The interim final rules now provide the patentees with an
additional month to file suits (180 days v. 7 months). Additionally, under the
new rules, patentees seeking judicial review of the USPTO's PTA calculation
must first: (1) seek to file a Request with the USPTO Director within seven
months of the patent's grant date; and (2) obtain the USPTO's decision on the
Request. Patentees may seek judicial resolutions only after an
unsuccessful administrative challenge within the USPTO, but such legal remedies
must be sought with the District Court for the Eastern District of Virginia
within 180 days of the USPTO's decision.
The new rules also make clear that judicial remedies are
not alternatives to requesting reconsideration of the PTA, meaning that the
Request for Reconsideration is now a pre-requisite to bringing district court
civil actions. Patentees wishing to seek judicial review may no longer bypass
administrative resolutions, as the USPTO decision date is required to set the
180-day period for filing a civil action.
Interim Final Rules Use the National Stage
Commencement Date As the "Application Filing Date" for National Stage
The interim final rules also level the playing field for
national stage applications filed under 35 U.S.C. § 371. As background, the
current PTA statute (35 U.S.C. § 154) compensates patentees with additional PTA
for internal delays caused by the USPTO, including when the first action on the
merits is issued more than 14 months after the application filing date
(commonly known as the "A" delay).
The old rules prejudiced national stage applicants with
respect to the start time for this "A" delay, where the 14-month clock started
upon the fulfillment of all formal requirements of 35 U.S.C. § 371 for national
stage applications, whereas the clock started on the actual filing date for
utility applications filed under 35 U.S.C. 111(a). This meant that national
stage applications that were delayed as a result of missing formal documents
had a significant disadvantage because of the delayed start of the "A" delay
The new rules seek to remedy this uneven playing field by
employing the date of national phase commencement of the national stage
applications as the "application filing date," and not the date on which all
requirements of 35 U.S.C. § 371 are satisfied. The new rules permit national
stage applicants to take advantage of the new ability to delay submission of
formal documents without risking a loss of PTA that would otherwise be granted
for domestic utility applications filed under 35 U.S.C. 111(a).
Reinstatement of PTA Is Permitted Under the
New Rules Upon Showing of Good Cause
The current PTA statute mandates a reduction in PTA when
"the applicant failed to engage in reasonable efforts to conclude prosecution,"
which includes taking more than three months to reply to a notice or action by
the USPTO. See 37 C.F.R. 1.704.
The new rules now permit an applicant to request
reinstatement of all or part of the reduced period of adjustment upon showing
that, in spite of all due care, the applicant was unable to respond within
three months. Like the old rules, the new rules require such a request to be
filed prior to issuance.
The Interim Final Rules have an immediate effective date
of April 1, 2013. However, the USPTO will accept public comments within 60 days
up to May 31, 2013, after which the final rules are expected to be published.
articles at Sheppard Mullin Intellectual Property Law Blog
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