By Donald Zuhn --
On December 28, the U.S. Patent and Trademark Office issued a notice of proposed rule making regarding certain patent term adjustment (PTA) provisions in the Federal Register (76 Fed. Reg. 81432). In particular, the Office has proposed that the period of adjustment for applications involved in appellate review begin when jurisdiction over the application passes to the Board rather than the date on which a notice of appeal to the Board is filed. According to the notice, jurisdiction of an appeal passes to the Board at the earlier of the filing of the reply brief or upon the expiration of the time in which to file a reply brief. While the Office acknowledges that "the impact of the rule change would be to reduce the amount of patent term adjustment awarded for successful appeal under 35 USC 154(b)(1)(C)(iii)," the Office also notes that in certain circumstances, "the impact may be offset by potentially increasing the amount of patent term adjustment awarded for failing to issue the patent within three years of the actual filing date in the United States under 35 USC 154(b)(1)(B)." The notice explains that one such situation could be where the examiner reopens prosecution after a notice of appeal has been filed and the patent issues thereafter.
According to the notice, the proposed rule making is based on comments the Office received in response to a Federal Register notice the Office published in April 2011 (see "USPTO Proposes Changes to PTA and PTE Provisions"). In particular, the Office noted that several comments suggested that the appellate review period should be treated as beginning when jurisdiction passes to the BPAI, rather than on the date a notice of appeal to the BPAI was filed, so that applicants could obtain patent term adjustment under 35 U.S.C. 154(b)(1)(B) (i.e., delay arising from the USPTO's failure to issue a patent within three years of an application's actual filing date). Currently, "B" delay does not include the period of appellate review by the BPAI or a Federal court, and the period of appellate review begins with the filing of a notice of appeal. The Office's notice provides a detailed explanation as to how the Office arrived at the new interpretation of the start of the appellate review period (see page 81434).
Comments regarding the proposed change should be sent 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. The deadline for submitting comments is January 27, 2012.
"the impact may be offset by potentially increasing the amount of patent term adjustment awarded for failing to issue the patent within three years of the actual filing date in the United States under 35 USC 154(b)(1)(B)."
Not buying that line. The "may be offset" has nothing to do with the taking advanced by the Office.
Posted by: Skeptical | January 10, 2012 at 12:08 PM