USPTO Says Some Requests for PTA Reconsideration Are Premature

    By Sydney Kokjohn --

We recently received a dismissal of a Request for Reconsideration of Patent Term Adjustment Determination under 37 C.F.R. § 1.705(b).  The Request was filed solely on the basis that the Patent Office had taken more than three years to issue the patent.  The patent application was filed on December 7, 2005.  Thus, a patent should have issued by December 7, 2008.  A Request for Continued Examination (RCE) was filed on February 16, 2009, thus cutting off from that date any additional patent term for failure to issue the patent within three years under 37 C.F.R. § 1.702(b).

The Patent Office notice stated:

Knowledge of the actual date the patent issues is required to calculate the amount, if any, of additional patent term patentee is entitled to for Office failure to issue the patent within 3 years.  See § 1.702(b).  (This is true even where a request for continued examination (RCE) was filed).  The computer will not undertake the § 1.702(b) calculation until the actual date of issuance of the patent has been determined.  Likewise, the computer will not calculate any further Office delay under § 1.702(a)(4) or applicant delay under § 1.704(c)(10) until the actual date of issuance of the patent has been determined.  As such, the Office can not make a determination on the correctness of the patent term adjustment until the patent has issued.

Requesting reconsideration of the patent term adjustment to be indicated on the patent under 37 CFR 1.705(b) based on the initial determination of patent term adjustment and a projected issuance date of the patent (or even the filing date of the request for continued examination) is premature.  Accordingly, it is appropriate to dismiss as premature such a request.

Rather than file an application for patent term adjustment under 37 CFR 1.705(b) contesting the 37 CFR 1.702(b) calculation at the time of the mailing of the notice of allowance, applicant is advised that they may wait until the time of the issuance of the patent and file a request for reconsideration of the patent term adjustment pursuant to 37 CFR 1.705(d).  As the USPTO does not calculate the amount of time earned pursuant to 37 CFR 1702(b) until the time of the issuance of the patent, the Office will consider any request for reconsideration of the patent term adjustment due to an error in the calculation of 37 CFR 1.702(b) to be timely if the request for reconsideration is filed within two months of the issuance of the patent.  However, as to all other bases for contesting the initial determination of patent term adjustment received with the notice of allowance, applicant must timely file an application for patent term adjustment prior to the payment of the issue fee.

Even though filing an RCE effectively cuts off any additional patent term for failure to issue a patent within three years, the Patent Office's computers will not calculate delay under 37 C.F.R. § 1.702(b) (or 1.702(a)(4) or 1.704(c)(10)) until after the actual date of issuance has been determined.

The Office of Patent Legal Administration indicated that it plans to issue a statement regarding this matter.  In the meantime, a simple reading of the rules does not instill much confidence that a Request for Reconsideration of Patent Term Adjustment Determination when an RCE has been filed will not be considered untimely under 37 C.F.R. 1.705(d) if the Request is filed after the patent issues.  Section 1.705(d) states:

If there is a revision to the patent term adjustment indicated in the notice of allowance, the patent will indicate the revised patent term adjustment.  If the patent indicates or should have indicated a revised patent term adjustment, any request for reconsideration of the patent term adjustment indicated in the patent must be filed within two months of the date the patent issued and must comply with the requirements of paragraphs (b)(1) and (b)(2) of this section.  Any request for reconsideration under this section that raises issues that were raised, or could have been raised, in an application for patent term adjustment under paragraph (b) of this section shall be dismissed as untimely as to those issues.

Section 1.705(b) requires that the request be filed "no later than the payment of the issue fee."  As filing an RCE cuts off additional patent term, it seems that any request for additional patent term in the case of an RCE could be raised under 1.705(b).  Nevertheless, this dismissal indicates that the Patent Office's computers do not calculate any delay for failing to issue a patent within three years under 1.702(b) until the date of issuance of the patent has been determined.

In addition to a dismissal of the request as premature, note that another possible disadvantage of filing a request for additional patent term for failure to issue a patent within three years prior to the issuance of the patent is that the patent may issue later due to the time it takes the Patent Office to consider the request.  However, 37 C.F.R. § 1.704(e) indicates that filing a request for patent term adjustment under 1.705(b) "will not be considered a failure to engage in reasonable efforts to conclude prosecution."

Comments

[CB]

I have seen the same responses from the PTO and have the same concerns. The PTO either needs to update its computer program to match its rules or revise its rules to match its actual procedures.

[BioPatAtty]

We've been seeing this as well. This is an unfortunate consequence of the PTO's apparent inability (disingenuous at best) to correctly deal with the 3 year requirement that, in essence, puts applicant in a classic Catch-22. Request the reconsideration when you pay the issue fee (and the $200 fee) or risk having the reconsideration denied under 1.705(d).

So pay the $200 knowing that it will be lost.

It would be far better to calculate a PTA under 1.705(b) as of the date of the Notice of Allowance, since apparently they can calculate everything else on that date. Then, 1.705(b) PTA can be recalculated as of the issue date since, apparently, they are fully capable of doing that as well.

Alternatively, they have to come out with a statement that for the purposes of 1.705(b), this issue could not have been raised at the time the issue fee was paid, although in the vast majority of cases, the 3 year window has already passed and it is already an issue that is ripe for consideration.

[ptaguru]

Interestingly, if you read the language on the Determination of PTA included with the Notice of Allowance, it actually reads, 'If the issue fee is paid on the date that is three months after the mailing of this notice and the patent issues on the Tuesday before the date that is 28 weeks (six and a half months) after the mailing date of this notice, the Patent Term Adjustment will be [___] day(s).'

That's simply false. There isn't a single NOA that we've received that actually calculates correctly the amount of PTA that would be awarded if, in fact, the patent issued on the date indicated.

The ad hoc way in which the PTO is handling PTA is irresponsible, at best.

[PTAd Out]

Decision made by Office of Petitions to dismiss as premature, take the money and NOT allow it to be revisited post-issuance. Per the PTO (Patent Legal), it is inherently timely to petition B Delay post-issuance since the determination is never calculated by PTO until patent issues.