USPTO Proposes Changes to PTA and PTE Provisions

By Donald Zuhn --

In a notice of proposed rulemaking published in today's Federal Register (76 Fed. Reg. 18990), the U.S. Patent and Trademark Office announced a proposal to revise the patent term adjustment (PTA) and patent term extension (PTE) provisions of the patent rules.  In particular, the Office is proposing changes to the PTA and PTE provisions with respect to some circumstances of appellate review and for the submission of certain information disclosure statements (IDSs).

With regard to changes relating to decisions during appellate review, the Office notes that the PTA and PTE provisions provide for an adjustment or extension of patent term when the issuance of a patent is delayed by appellate review (by either a Federal court or the Board) reversing a prior adverse determination of patentability.  Under the proposed revisions, an examiner's reopening of prosecution following the filing of a notice of appeal would be considered, under most circumstances, to be equivalent for PTA or PTE purposes to a court or Board reversal of a prior adverse determination of patentability, and as such, patentees would be entitled to an adjustment or extension of patent term.

The Office notes that under the current rules of practice, a decision by a pre-appeal brief conference panel to withdraw any or all of the claims on appeal is not a decision by the Board, and therefore would not result in any patent term adjustment or extension.  According to the notice, however, "[t]he Office has now concluded that it may and, in most situations, should treat a decision in a pre-appeal brief review reopening prosecution and issuing an Office action or notice of allowance as a 'decision in the review reversing an adverse determination of patentability' under 35 U.S.C. 154(b)(1)(C)(iii)."  The notice explains that "in many such situations the reopening of the application after notice of appeal has been filed is the result of a decision in the pre-BPAI review that there is some weakness in the adverse patentability determination from which the appeal was taken."

The Office will not, however, treat any reopening of prosecution after the filing of a notice of appeal as a "decision in the review reversing an adverse determination of patentability."  The notice indicates that when an applicant files a request for continued examination (RCE) after filing a notice of appeal, the reopening of prosecution will not be considered to be a "decision in the review reversing an adverse determination of patentability."  In addition, any reopening of prosecution that results from an applicant's filing of an amendment cancelling all claims on appeal or a request to dismiss or withdraw an appeal will not be considered to be a "decision in the review reversing an adverse determination of patentability."

With regard to the submission of certain IDSs, the Office proposes to change the rules of practice for PTA reductions due to applicant delay to exclude IDSs related to information cited by the USPTO in another application or by a foreign patent office in a counterpart foreign application.  In particular, the notice states that an applicant would no longer suffer a reduction in PTA when the applicant:

[P]romptly submits a reference in an information disclosure statement after the mailing of a notice of allowance if the reference was cited by the Office in another application, or when applicant promptly submits a copy of an Office communication (e.g., an Office action) in an information disclosure statement after the mailing of a notice of allowance if the Office communication was issued by the Office in another application or by a foreign patent office in a counterpart foreign application.

Pursuant to 37 C.F.R. § 1.704(d), prompt submission of information means that the information is submitted within 30 days of receipt.  The change with respect to IDS practice acknowledges recent decisions by the Federal Circuit in Dayco Products, Inc. v. Total Containment, Inc., 329 F.3d 1358 (Fed. Cir. 2003); McKesson Info. Solutions, Inc. v. Bridge Medical, Inc., 487 F.3d 897 (Fed. Cir. 2007); and Larson Mfg. Co. v. Aluminart Products Ltd., 559 F.3d 1317 (Fed. Cir. 2009).

Written comments regarding the proposed changes must be submitted on or before May 6, 2011.  Comments should be sent by e-mail to [email protected]; by regular mail to:  Mail Stop Comments -- Patents, Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313–1450, marked to the attention of Kery A. Fries, Senior Legal Advisor, Office of Patent Legal Administration, Office of the Associate Commissioner for Patent Examination Policy; or via the Federal eRulemaking Portal at http://www.regulations.gov.  Additional information regarding the proposed rulemaking can be found in the Federal Register notice (76 Fed. Reg. 18990).

Comments

[6]

Sounds substantive to me! Client's rights will be put in jeopardy. THEY LACK SUBSTANTIVE RULE MAKING AUTHORITY AMIRITE? SOMEONE MUST CHALLENGE THIS RULE MAKING IN COURT!