By Donald Zuhn --
In a Federal Register notice (76 Fed. Reg. 74700) published earlier this month, the U.S. Patent and Trademark Office announced that it was revising the rules of practice pertaining to patent term adjustment (PTA) determinations such that applicants would no longer be docked for delays when citing information from a counterpart U.S. application, where the information was promptly filed with the USPTO. In particular, the notice indicates that the Office will no longer reduce PTA in the following situations:
[W]hen applicant promptly 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.
As with the submission of information cited in a communication from a foreign patent office in a counterpart application under 37 C.F.R. § 1.704(d), the Office will not reduce PTA under the above circumstances if the applicant promptly files the information with the Office. In other words, "[t]he Office is revising 37 CFR 1.704(d) to also embrace information first cited in a communication from the Office, as well as the communication (e.g., Office action) in a counterpart foreign or international application." Under § 1.704(d), prompt submission means within thirty-days of receipt of the information.
According to the notice, the changes in PTA practice were "intended to ensure compliance with AIPA in light of the evolving case law." The notice cites three Federal Circuit decisions as the basis for the change in practice: 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).
According to the notice, the change in PTA practice is the first of several changes resulting from the Office's notice of proposed rulemaking and request for comments published in the Federal Register last spring (see "USPTO Proposes Changes to PTA and PTE Provisions"). The Office states that other changes to the rules of practice pertaining to patent term adjustment (PTA) determinations will be announced in forthcoming Federal Register notices.
For additional information on this and other related topics, please see:
• "USPTO Proposes Changes to PTA and PTE Provisions," April 6, 2011
• "USPTO Provides Clarification Regarding Treatment of PTA Letters," July 26, 2010
• "Novartis Challenges USPTO's Interim Procedure for Requesting PTA Recalculations," July 12, 2010
• "USPTO Continues to Modify System for Calculating PTA," May 25, 2010
• "USPTO Announces Interim Procedure for Requesting PTA Recalculations," January 28, 2010
• "Patent Term Adjustment: 37 C.F.R. § 1.704(b)'s Three-Month Provision," November 17, 2009
• "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
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