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« Court Report | Main | Changes in USPTO Senior Management »

September 07, 2009


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.

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.

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.

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.

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