By Sydney Kokjohn --
Patent practitioners concerned about patent term
adjustment should pay careful attention to 37 C.F.R. § 1.704(b) concerning applicant
delay, especially regarding the date of issue fee payments. This section provides that "an
applicant shall be deemed to have failed to engage in reasonable efforts to
conclude processing or examination of an application for the cumulative total
of any periods of time in excess of three months that are taken to reply to any
notice or action by the Office making any rejection, objection, argument, or
other request."
Importantly, 37 C.F.R § 1.704(b) also states that "[t]he
period, or shortened statutory period, for reply that is set in the Office
action or notice has no effect on the three-month period set forth in this
paragraph."
This explicit three-month period can be both
beneficial and detrimental to patent term. It is especially troublesome in the case of an issue fee
payment, because the notice of allowance explicitly states the due date of the
issue fee payment as the first secular or business day after the three-month
period if the three-month date falls on a Saturday, Sunday, or Federal
holiday. See 35 U.S.C. 21(b) ("When
the day, or the last day, for taking any action or paying any fee in the United
States Patent and Trademark Office falls on Saturday, Sunday, or a Federal
holiday within the District of Columbia the action may be taken, or the fee
paid, on the next succeeding secular or business day."). This date is often the date that is
docketed, so patent practitioners have to take special care to remember the
three-month rule. Similarly, any
additional patent term an applicant received for Patent Office delay would be
reduced if the applicant responded to a rejection more than three months after
the mailing of the notice, even if the response was deemed timely because the
three-month date fell on a Saturday, Sunday, or Federal holiday. However, the three-month period can
also be of benefit as an applicant is not deemed to have failed to engage in
reasonable efforts to conclude prosecution by responding to a restriction
requirement after the shortened statutory period of one month, as long as the
applicant responded within three months.
Therefore, in order to maximize patent term,
applicants should pay close attention to the three-month date, both in filing
responses and in analyzing applications for additional patent term adjustment.
For additional information regarding this and other related topics, please see:
• "USPTO Says Some Requests for PTA Reconsideration Are Premature," September 7, 2009
• "Fish & Richardson Catches Error in Patent Office's PTA Calculation," July 30, 2009
• "More § 154(b)(4)(A) Actions Filed against Director," February 8, 2009
• "Three More Patentees File § 154(b)(4)(A) Actions against Director Dudas," January 12, 2009
• "More Patentees Follow Wyeth's Lead in Seeking Additional PTA," December 3, 2008
• "USPTO to Appeal Wyeth v. Dudas," December 2, 2008
• "Two Patentees Follow Wyeth's Lead in Seeking Additional PTA," November 12, 2008
• "Wyeth v. Dudas (D.D.C. 2008)," October 16, 2008
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