By Donald Zuhn –-
In a Notification published in the Federal Register earlier this month (83 Fed. Reg. 55102), the U.S. Patent and Trademark Office announced the implementation of an interim procedure for patentees to request recalculation of Patent Term Adjustment (PTA) determinations for alleged errors due to the Office's failure to recognize that an Information Disclosure Statement (IDS) was accompanied by a safe harbor statement. The Office also announced the provision of a new form for applicants to use when making a safe harbor statement.
The interim procedure and new form address an issue with the computer program that the Office uses to make initial PTA determinations, which currently does not recognize when an applicant has filed an IDS concurrently with a safe harbor statement. According to the Notification, the interim procedure will remain in effect until the Office can update the PTA computer program and provide notice to the public that the computer program has been updated.
Pursuant to 37 C.F.R. § 1.704(d), an IDS that is not accompanied by a safe harbor statement will result in a reduction of PTA if the IDS is filed after a Notice of Allowance or after an initial reply by the applicant, is filed as a preliminary paper or paper after a decision by the Board or Federal court that requires the USPTO to issue a supplemental Office action, or constitutes the sole submission for a Request for Continued Examination after a Notice of Allowance has been mailed. According to the Notification, a proper safe harbor statement under 37 C.F.R. § 1.704(d):
[M]ust state that each item of information contained in the information disclosure statement: (1) Was first cited in any communication from a patent office in a counterpart foreign or international application or from the USPTO, and this communication was not received by any individual designated in 37 CFR 1.56(c) more than thirty days prior to the filing of the information disclosure statement (37 CFR 1.704(d)(1)(i)); or (2) is a communication that was issued by a patent office in a counterpart foreign or international application or by the USPTO, and this communication was not received by any individual designated in 37 CFR 1.56(c) more than thirty days prior to the filing of the information disclosure statement (37 CFR 1.704(d)(1)(ii)).
Under the interim procedure being implemented by the Office, a request for recalculation of a PTA determination can be made by submitting a "Request for Reconsideration of Patent Term Adjustment in View of Safe Harbor Statement Under 37 CFR 1.704(d)" form (PTO/SB/134) in lieu of the request and fee set forth in 37 C.F.R. § 1.705(b). The above form must be submitted within the time period set forth in 37 C.F.R. § 1.705(b), which may be extended under the provisions of 37 C.F.R. § 1.136(a) (any extension fees, however, will not be waived under the interim procedure). The Notification points out that patentees will be given one opportunity to respond to any recalculation carried out under the interim procedure, and that such response must be filed within two months of the mail date of the recalculation, with no availability of extensions of time.
In addition to the interim procedure, the Office has also created a new form for submitting an IDS with a safe harbor statement. According to the Notification, Applicants who submit a "Patent Term Adjustment Statement under 37 CFR 1.704(d)" form (PTO/SB/133) with an IDS will be considered to be making a proper safe harbor statement, and the filing will be reflected in the file record.
According to the Office's Notification, the interim procedure became effective on November 2, 2018. Questions regarding the Notification can be directed to Kery A. Fries, Senior Legal Advisor, Office of Patent Legal Administration, Office of Deputy Commissioner for Patent Examination Policy.
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