Patent Term Adjustment (PTA) Questions and Answers
Wyeth v. Kappos
Other PTA Questions and Answers
(Updated B6 on 6/18/04; Updated on 5/5/03; last reviewed 7/18/02)
B1. In view of the Patent Term Guarantee, does the United States Patent and Trademark Office plan to print an explicit indication of the expiration date on the face of a patent so that the expiration date can be ascertained without having to add the patent term extension to the original patent term?
The United States Patent and Trademark Office does not print the expiration date on issued patents because the actual date a patent will expire is dependent upon a number of future events. The actual date any particular patent will expire is, for example, dependent upon whether: (1) all maintenance fees are timely paid; (2) the patent is disclaimed, either by a statutory disclaimer of all claims or a terminal disclaimer; (3) all of the claims of the patent are canceled during a reexamination proceeding; or (4) an extension under 35 U.S.C. 156 is granted. Since less than forty percent of patentees pay all three maintenance fees, an expiration date based upon a calculation of date that is twenty years from the earliest filing date under 35 U.S.C. 111(a), 120, 121, 363, or 365(c) plus any calculated extension under 35 U.S.C. 154(b) would be incorrect and misleading over sixty percent of the time. However, the front page of the patent will indicate the number of days of term adjustment to which the patent is entitled.
B2. May an applicant obtain patent term adjustment even if prosecution is less than 3 years? (Updated 7/9/01)
Yes, assuming the application is eligible, patent term adjustment is available under either 35 USC 154(b)(1)(A) (administrative delays) or (C) (interferences, secrecy orders and successful appeals) regardless of how long the application was pending in the Office. See 37 CFR 1.702(a), (c), (d), and (e).
Example: An application is filed 6/1/00. A notice of allowance is mailed 9/1/01. The issue fee is paid and all formal requirements are satisfied on 12/1/01. The patent is not issued until 5/1/02. As the patent was not issued in four months following the payment of the issue fee, the period of delay from 4/2/02 to 5/1/02 would give rise to patent term adjustment pursuant 35 USC 154(b)(1)(A)(iv) and 37 CFR 1.702(a)(4) and 1.703(a)(6).
B3. Is an application for patent term adjustment under 37 CFR 1.705(c) required to include the fee set forth in 1.18(f) and the fee set forth in 1.18(e) or only the fee set forth in 1.18(f)?
Both fees. Even an application for term adjustment that is only requesting reinstatement of part of a period of adjustment by showing, in spite of all due care, that the applicant was unable to respond to any rejection, objection, argument or any other request made by the Office within a three-month period starting the date of mailing of the Office action or requirement, is required to pay the fee for an application for term adjustment set forth in 1.18(e) as well as the fee for a due care showing set forth in 1.18(f). In other words, an application under 37 CFR 1.705(c) is also required to comply with 37 CFR 1.705(b).
B4. When must an application be filed in order for the National Stage of an International Application to be eligible for Patent Term Adjustment (PTA) ?
The international application must have an international filing date of May 29, 2000 or later. The date on which the international application either complies with 35 USC 371(c) or enters the National Stage is not relevant for determining eligibility for PTA. See section 4405(a) of the AIPA, 35 USC § 363, and 37 CFR § 1.702(f).
B5. If an International Application is filed before May 29, 2000 and is pending on or after May 29, 2000, may a continuing application filed under 35 USC 111(a) be filed on or after May 29, 2000, to seek the benefit of Patent Term Adjustment (PTA)?
Yes, the filing date of the continuing application controls, thus, if the continuing application is filed on or after May 29, 2000, the continuing application is eligible for PTA. See section 4405(a) of the AIPA, 35 USC §§ 111(a) and 120, and 37 CFR § 1.702(f).
B6. 37 CFR 1.704(c)(10) provides that submission of an amendment under 37 CFR 1.312 or other paper after a notice of allowance has been mailed is a circumstance that constitutes a failure of the applicant to engage in reasonable efforts to conclude processing or examination of an application. Are formal drawings an “other paper” within the meaning of 37 CFR 1.704(c)(10), such that the submission of formal drawings after a notice of allowance is mailed will result in reduction of any patent term adjustment? What if the drawings are required by the notice of allowance? (Updated 6/18/04)
Yes (regardless of whether "formal," corrected, or replacement drawings are required by the notice of allowance). 37 CFR 1.85 no longer permits applicants to request that a requirement for correction of drawings be held in abeyance until a notice of allowance is mailed. The Office encourages that drawings appropriate for publication be submitted early in the prosecution of the patent application so that any patent application publication will be published, and the application will be examined, with the best quality drawings. See Changes to Implement Eighteen-Month Publication of Patent Applications, Final rule, 65 Fed. Reg. 57023, 57032, 57055 (Sept. 20, 2000). Applicants must file any "formal," corrected, or replacement drawings prior to the mailing of a notice of allowance to avoid a reduction of any patent term adjustment.
B7. An application for patent term adjustment cannot be filed before a Notice of Allowance has been mailed. If a contents error is noted in the Office Patent Application Location and Monitoring (PALM) records when they are viewed using the Patent Application Information Retrieval system (PAIR), who should I contact to have these records corrected? (Posted on 5/10/01; updated on 7/9/01)
If the error is a contents entry other than the filing date of an application, including a Continued Prosecution Application (CPA), contact the Customer Service Representative (Representative) for the Technology Center (TC) where your application is assigned. If you are alleging that the date shown in PAIR is an incorrect date, then the Representative may need documentary evidence (e.g., an Express Mail label or a post card receipt) showing that the paper was received on a certain date. Note that the certificate of mailing date (which may be relied upon for timely filing purposes) is not retained in the USPTO PALM records, and that the date a paper is received is the date that the USPTO actually received the papers, unless the paper was filed using Express Mail under 37 CFR 1.10. The Representative will obtain the application file wrapper and determine whether there is an error in the USPTO’s records. If there is a date error, the records will be corrected.
If the error is in the filing date of an application, including a CPA, a filing date petition is required. Contact the Office of Petitions by telephone at (703)305-9285 or by fax at (703)308-6916 for further information. If a telephone call is made to correct an Office PALM record, other than correcting such an error, no entries are made in PALM (the computer system used to calculate the Patent Term Adjustment), and there would be no reduction to any patent term adjustment. Note a reduction may apply if applicant repeatedly calls the customer service center concerning an application making frivolous requests, and the processing of the application is delayed. If applicant submits a letter with documentary evidence requesting that the Office PALM records be corrected, this letter is matched with the application, and the letter should be entered in PALM. Such a letter would generally not cause a reduction in PTA, however, if applicant were to repeatedly ask for the date to be changed to the certificate of mailing date, or any other improper date, or file such a letter after allowance, the PTA would be reduced under 37 CFR 1.704(a). There is no fee if the above procedure is followed. The above procedure (of contacting the Customer Service Representative) is not permitted after a notice of allowance has been mailed because the application is forwarded to the Office of Patent Publication after allowance, and thus is not readily available to the TCs. In addition, after a notice of allowance has been mailed, an application for patent term adjustment (and the fee) must be filed to have Office records corrected if the change results in a need to recalculate the patent term adjustment. See 37 CFR 1.705(b).
B8. Please indicate when the thirty-day period specified in 37 CFR 1.704(d) begins to run in the following circumstances, and explain the basis of the Office’s conclusions (note: 37 CFR 1.704(d) concerns the filing of an IDS in relation to discovery of reference during foreign prosecution of an invention that is also the basis of a U.S. application): (Posted on 9/17/01; revised on 9/24/01)
An applicant based in Chicago, Illinois, directs US counsel to prepare, file and prosecute an application in the United States Patent and Trademark Office. The US counsel subsequently sends the application to foreign counsel for filing and prosecution in foreign jurisdictions. The US counsel directs foreign counsel to provide copies of all communications from the foreign office (by fax or overnight mail) within seven days of receipt thereof, and expressly reserves all decision-making authority as to prosecution of the US and foreign applications.
On January 5, 2002, a foreign counsel in Germany receives a communication from the European Patent Office that includes a list of citations of patents. On January 8, the foreign counsel, pursuant to the standing instructions of US counsel, sends by overnight mail, a copy of the communication from the EPO. The document is received by US counsel on January 12, 2002. On January 30, the US counsel reviews the document and discovers a previously uncited patent. A copy of the patent and an IDS is then prepared and filed by the US counsel on February 11, 2002.
An applicant based in Paris, France, directs French counsel to prepare, file and prosecute an application in the European Patent Office. The EPO application is then sent to US counsel by French counsel to be reviewed, edited and prepared for filing in the United States Patent and Trademark Office. The US counsel works with the French counsel to review the edited application, and then files the US application. The review and editing of the US application also leads the French counsel to amend its EPO application.
On January 5, 2002, the French counsel receives a search report from the European Patent Office that includes a list of six patents. On January 20, 2002, the US counsel receives from French counsel (by overnight mail) a copy of the communication from the EPO and suggests that the US counsel review the search report and “take appropriate action.” On January 25, 2002, the French counsel provides a copy of the search report to the applicant. On January 30, 2002, the US counsel reviews the document and discovers a previously uncited patent. A copy of the patent and an IDS is then prepared and filed by the US counsel on February 14, 2002.
An applicant based in Chicago, Illinois, hires US counsel to prepare an application suitable for filing in the United States and the European Patent Office. The US counsel engages a German attorney to assist in the review and editing of the application to take account of issues relevant to EPO practice. The US counsel then reviews the edited application, approves the changes, and files it in the United States. The US counsel then directs the German attorney to file the application in the EPO. During prosecution of the US case, the US counsel receives an office action citing three patents.
On December 1, 2001, the US counsel sends the three patents to the German attorney for review and appropriate action. On January 5, 2002, the German attorney receives a search report from the EPO that cites the three previously cited patents, plus a fourth patent, designating all as “X” references. On January 15, the German attorney reviews the fourth patent and compares it to the three patents cited in the US prosecution. The German attorney concludes that the fourth patent is duplicative of one of the three patents, and takes no further action.
On March 1, 2002, during a routine status inquiry, the US counsel is informed of the citation of the fourth patent by the EPO and the decision of the German attorney that the information in the newly cited patent was duplicative of the three patents previously cited by the USPTO. The US counsel also obtains copies of the newly cited patent on this date. On March 5, 2002, the US counsel files an IDS containing the newly cited patent.
37 CFR 1.704(d) provides that a paper containing only an information disclosure statement in compliance with 37 CFR 1.97 and 1.98 will not be considered a failure to engage in reasonable efforts to conclude prosecution (processing or examination) of the application under 37 CFR 1.704(c)(6), (c)(8), (c)(9), or (c)(10) if it is accompanied by a statement that each item of information contained in the information disclosure statement was cited in a communication from a foreign patent office in a counterpart application and that 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.
The determination of when the thirty day period begins to run is dependent on the role of each entity involved in the prosecution of the US and foreign applications, and the role that each plays (if any) vis-à-vis the US application. The inventors, the assignee and the US patent counsel are all individuals designated in 37 CFR 1.56(c). The issue is whether the foreign patent counsel is also an individual designated in 37 CFR 1.56(c).
37 CFR 1.56(c) provides that individuals associated with the filing or prosecution of a patent application within the meaning of 37 CFR 1.56 are:
- Each inventor named in the application;
- Each attorney or agent who prepares or prosecutes the application; and
- Every other person who is substantively involved in the preparation or prosecution of the application and who is associated with the inventor, with the assignee or with anyone to whom there is an obligation to assign the application.
Based on these elements of 37 CFR 1.56(c), the following would be the conclusions of the Office in the three examples cited above.
Answer to Example A:
The thirty-day period would be calculated from January 12, 2002 . As such, the IDS filed on February 11th would be filed within the thirty-day window in 37 CFR 1.704(d), and thus would not result in a reduction of any patent term pursuant to 37 CFR 1.704(c)(6), (c)(8), (c)(9), or (c)(10).
In this example, the foreign counsel has no substantive role in the prosecution of the US application. The explicitly defined role of the foreign counsel relative to the US counsel in combination with the practice in the described fact pattern removes any potential doubt as to the role of the foreign counsel.
Answer to Example B:
The thirty-day period would be calculated from January 5, 2002 . As such, the submission of the IDS would not be received within the thirty-day window in 37 CFR 1.704(d), and thus could result in a reduction of any patent term pursuant to 37 CFR 1.704(c)(6), (c)(8), (c)(9), or (c)(10).
In this example, the USPTO would consider the French counsel to have been a party within the meaning of 37 CFR 1.56(c). The French counsel, based on the above facts, played a material role in the preparation and prosecution of the US application (e.g., counsel drafted the original application, worked with US counsel to amend the application and subsequently amended the EPO application based on the work product produced with US counsel). In addition to the French counsel, the applicant would in any case be a party within the meaning of 37 CFR 1.56(c).
Answer to Example C:
The thirty-day period would be calculated from January 5, 2002 . As such, the submission of the IDS would be determined to have not been received, received within the thirty-day window in 37 CFR 1.704(d), and thus could result in a reduction of any patent term pursuant to 37 CFR 1.704(c)(6), (c)(8), (c)(9), or (c)(10).
In this example, the USPTO would consider the participation of the German counsel in the prosecution and decision-making as to the relevance of the newly cited art vis-à-vis the previously cited three patents to be a material participation in the US prosecution. As such, the German counsel would be considered by the USPTO to be a party covered by 37 CFR 1.56(c), and as such, would evaluate compliance with 37 CFR 1.704(d) from the date that the foreign counsel first learned of the fourth patent (i.e., the newly cited reference).
B9. I have some questions regarding patent term adjustment (PTA). Who can help me? (Posted on 2/27/02; updated 4/1/02)
Inquiries related to PTA may be directed to the Office of Patent Legal Administration at (571) 272-7702.