By
Donald Zuhn —

Last
week, the U.S. Patent and Trademark Office published a notice in the Federal
Register (75 Fed. Reg. 42079)
to clarify how the Office will treat certain letters submitted by
applicants and patentees regarding the Office's patent term adjustment (PTA) determinations.  In particular, the notice addresses
situations in which an applicant or patentee submits a letter (other than requests for reconsideration under 37 C.F.R. § 1.705) stating that the
Office's PTA determination is greater than what the applicant or patentee
believes is appropriate.  In such
situations, the notice states that the Office will no longer review the letter
or issue a certificate of correction, but instead will place the letter in the
application file without further review.

When reconsideration of a PTA
determination is desired, the notice reminds applicants and patentees that the procedures
set forth in 37 C.F.R. § 1.705 for requesting reconsideration must be used.  Alternatively,
a patentee may file a terminal disclaimer disclaiming any period considered in
excess of the appropriate PTA.  The
notice states, however, that "the USPTO does not require an applicant or
patentee to file either a request for reconsideration under 37 CFR 1.705 or a
terminal disclaimer when the patent term adjustment indicated on a notice of
allowance, issue notification, or patent is greater than what the applicant or
patentee believes is appropriate."

The Office notes that a 2004 revision to the M.P.E.P. permitted
applicants and patentees to wait until a patent issues and then request a
certificate of correction if a notice of allowance or patent specified a PTA
that was longer than expected (M.P.E.P. § 2733).  Despite this revision to the M.P.E.P., however, the notice declares
that "the USPTO has long maintained that a request for a certificate of
correction under either 35 U.S.C. 254 or 255 is not an appropriate venue for
seeking a change to the patent term adjustment indicated on a patent,"
because "[i]t would render the provisions of 35 U.S.C. 154(b)(3)
superfluous if patent term adjustment determinations could be revised at any
time during the life of the patent via a certificate of correction under 35
U.S.C. 254 or 255."

The
notice does offer two circumstances in which it would be appropriate to issue a
certificate of correction to revise a PTA determination:  to make the PTA determination consistent with (1) the PTA determined in a decision on a request for
reconsideration under 37 C.F.R. § 1.705, or (2) "the total patent term adjustment indicated on the Patent
Application Information Retrieval (PAIR) screen that displays the patent term
adjustment calculation for the patent."  According to the notice, the Office will issue
certificate of corrections to revise a PTA determination only under the two
circumstances described above.  As
a result:

If
the applicant or patentee wants the USPTO to reconsider its patent term
adjustment determination, the applicant or patentee must use the procedures set
forth in 37 CFR 1.705 for requesting reconsideration of a patent term
adjustment determination, whether the USPTO's patent term adjustment
determination is greater than or less than the adjustment that the applicant or
patentee believes to be appropriate.

The Office notes that the M.P.E.P. will be revised to correct the improper guidance provided in the 2004 revision.