DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Part 1
[Docket No.: 000308066-0066-01]
RIN 0651-AB06
Changes to Implement Patent Term Adjustment
Under Twenty-Year Patent Term
AGENCY: Patent and Trademark Office, Commerce.
ACTION: Notice of proposed rulemaking.
SUMMARY: The United States Patent and Trademark Office (Office) is
proposing changes to the rules of practice in patent cases to implement
certain provisions of section 4402 of the ``American Inventors
Protection Act of 1999.'' These provisions of the ``American Inventors
Protection Act of 1999'' provide patent term adjustment to compensate
patentees for certain delays in the application examination process.
DATES: Comment Deadline Date: To be ensured of consideration, written
comments must be received on or before May 30, 2000. No public hearing
will be held.
ADDRESSES: Comments should be sent by electronic mail message
over the Internet addressed to: patentterm.comments@uspto.gov.
Comments may also be submitted by mail addressed to: Box
Comments--Patents, Commissioner for Patents, Washington, D.C. 20231, or
by facsimile to (703) 872-9411 or (703) 308-6916, marked to the
attention of Karin L. Tyson. Although comments may be submitted by mail
or facsimile, the Office prefers to receive comments via the Internet.
If comments are submitted by mail, the Office would prefer that the
comments be submitted on a DOS formatted 3 1/2 inch disk accompanied by
a paper copy. The comments will be available for public inspection at
the Special Program Law Office, Office of the Deputy Assistant
Commissioner for Patent Policy and Projects, located at Room 3-C23 of
Crystal Plaza 4, 2201 South Clark Place, Arlington, Virginia, and will
be available through anonymous file transfer protocol (ftp) via the
Internet (address: http://www.uspto.gov). Since comments will be made
available for public inspection, information that is not desired to be
made public, such as an address or phone number, should not be included
in the comments.
FOR FURTHER INFORMATION CONTACT: Karin L. Tyson, Robert W. Bahr, or
Robert A. Clarke by telephone at (703) 305-1383, or by mail addressed
to: Box Comments -- Patents, Commissioner for Patents, Washington, D.C.
20231, or by facsimile to (703) 872-9411 or (703) 308-6916, marked to
the attention of Karin L. Tyson.
SUPPLEMENTARY INFORMATION: The ``American Inventors Protection Act of
1999'' (Title IV of the ``Intellectual Property and Communications
Omnibus Reform Act of 1999'' (S. 1948) as introduced in the 106th
Congress on November 17, 1999) was incorporated and enacted into law on
November 29, 1999, by Sec. 1000(a)(9), Division B, of Public Law 106-
113, 113 Stat. 1501 (1999). The ``American Inventors Protection Act of
1999'' contains a number of changes to title 35, United States Code.
This notice proposes changes to the rules of practice to implement the
provisions of Secs. 4401 and 4402 of the ``American Inventors Protection
Act of 1999.'' These provisions are effective on the date that is six
months after the date of enactment of the ``American Inventors
Protection Act of 1999'' (May 29, 2000) and apply to applications, other
than for a design patent, filed on or after the date that is six months
after the date of enactment of the ``American Inventors Protection Act
of 1999'' (May 29, 2000).
Section 532 of the Uruguay Round Agreements Act (Public Law 103-
465, 108 Stat. 4809 (1994)) amended 35 U.S.C. 154 to provide that the
term of patent protection begins on the date of patent grant and ends on
the date twenty years from the filing date of the application, or the
earliest filing date for which a benefit is claimed under 35 U.S.C. 120,
121, or 365(c). Public Law 103-465 also contained provisions, codified
at 35 U.S.C. 154(b), for patent term extension due to certain
examination delays.
Section 4402 of the ``American Inventors Protection Act of 1999''
amends 35 U.S.C. 154(b)(1) to provide day-by-day patent term adjustment
if the Office fails, within specified time periods, to: (1) initially
act on the application; (2) respond to a reply or appeal to the Board of
Patent Appeals and Interferences by the applicant; (3) act on an
application containing allowed claims after a decision by the Board of
Patent Appeals and Interferences or a Federal court; or (4) issue the
application after the issue fee is paid in reply to a notice of
allowance and all outstanding requirements are satisfied (35 U.S.C.
154(b)(1)(A)). Section 4402 of the ``American Inventors Protection Act
of 1999'' also amends 35 U.S.C. 154(b)(1) to provide day-by-day patent
term adjustment if, subject to a number of limitations, the Office fails
to issue a patent within three years of the actual filing date of the
application (35 U.S.C. 154(b)(1)(B)). Finally, Sec. 4402 of the
``American Inventors Protection Act of 1999'' also amends 35 U.S.C.
154(b)(1) to provide day-by-day patent term adjustment for delays due to
interference proceedings under 35 U.S.C. 135(a), imposition of a secrecy
order under 35 U.S.C. 181, or successful appellate review by the Board
of Patent Appeals and Interferences or a Federal court (35 U.S.C.
154(b)(1)(C)).
Section 4402 of the ``American Inventors Protection Act of 1999''
amends 35 U.S.C. 154(b)(2) to place limitations on the period of patent
term adjustment granted under 35 U.S.C. 154(b)(1). First: to the extent
that the periods of delay attributed to the grounds specified in 35
U.S.C. 154(b)(1) overlap, the period of adjustment shall not exceed the
actual number of days the issuance of the patent was delayed. Second: no
patent, the term of which has been disclaimed beyond a specified date,
may be adjusted under 35 U.S.C. 154(b) beyond the expiration date
specified in the disclaimer. Third: the period of patent term adjustment
under 35 U.S.C. 154(b)(1) shall be reduced by a period equal to the
period of time during which the applicant failed to engage in reasonable
efforts to conclude prosecution (or processing or examination) of the
application. Section 4402 of the ``American Inventors Protection Act of
1999,'' however, does not contain any limit (e.g., of five or ten years)
on the total extension or adjustment that may be granted under 35 U.S.C.
154(b).
An applicant is deemed to have failed to engage in reasonable
efforts to conclude prosecution of the application with respect to any
patent term adjustment under 35 U.S.C. 154(b)(1)(B) (failure to issue a
patent within three years of the actual filing date of the application)
for the cumulative total of any periods of time in excess of three
months that are taken to reply to a notice of any rejection, objection,
argument, or other request, measuring the three-month period from the
date the notice was mailed or given. In addition, 35 U.S.C. 154(b)(2)
directs the Office to prescribe regulations establishing the
circumstances that constitute a failure of the applicant to engage in
reasonable efforts to conclude processing or examination of the
application.
Section 4402 of the ``American Inventors Protection Act of 1999''
also amends 35 U.S.C. 154(b)(3) to establish procedures for patent term
adjustment determinations. 35 U.S.C. 154(b)(3) directs the Office to
prescribe regulations establishing procedures for the application for
and determination of patent term adjustment under 35 U.S.C. 154(b). 35
U.S.C. 154(b)(3), however, requires the Office to: (1) make a patent
term adjustment determination and transmit a notice of that
determination with the notice of allowance; and (2) provide the
applicant with one opportunity to request reconsideration of that patent
term adjustment determination. 35 U.S.C. 154(b)(3) also provides that
the Office shall reinstate all or part of the cumulative period of time
of an adjustment reduced under 35 U.S.C. 154(b)(2)(C) (for failure to
reply to a notice of any rejection, objection, argument, or other
request within three months of the date the notice was mailed or given)
if, prior to issuance of the patent, the applicant makes a showing that,
in spite of all due care, the applicant was unable to reply within the
three-month period, except that the Office may not reinstate more than
three additional months for each reply beyond the original three-month
period. Section 4402 of the ``American Inventors Protection Act of
1999'' also amends 35 U.S.C. 154(b)(3) to provide that the Office shall
proceed to grant the patent after completing its patent term adjustment
determination, and amends 35 U.S.C. 154(b)(4) to provide for judicial
review in the event that the applicant is dissatisfied with that patent
term adjustment determination.
Section 4405(a) of the ``American Inventors Protection Act of 1999''
provides that Sec. 4402 shall take effect on the date that is six months
after the date of enactment of the ``American Inventors Protection Act
of 1999'' (May 29, 2000) and shall apply to any application (other than
a reissue or design) filed on or after the date that is six months after
the date of enactment of the ``American Inventors Protection Act of
1999'' (May 29, 2000). Therefore, patents (other than reissue or design)
issued on applications filed on or after June 8, 1995, but before May
29, 2000, are subject to the patent term extension provisions of 35
U.S.C. 154(b) as amended by Sec. 532(a)(1) of Public Law 103-465 and
Sec. 1.701, whereas patents (other than reissue or design) issued on
applications filed on or after May 29, 2000, are subject to the patent
term adjustment provisions of 35 U.S.C. 154(b) as amended by Sec. 4402
of the ``American Inventors Protection Act of 1999'' (as it is proposed
to be implemented in Secs. 1.702 through 1.705).
The filing date of a continued prosecution application (CPA) under
Sec. 1.53(d) is the date that the request for CPA is filed (Sec.
1.53(d)(2)), even though the Office uses the filing date of the prior
application for identification purposes. Therefore, the patent term
adjustment provisions of 35 U.S.C. 154(b) as amended by Sec. 4402 of the
``American Inventors Protection Act of 1999'' apply to any CPA filed on
or after May 29, 2000, regardless of the filing date of the prior
application of the CPA. While an applicant may file a continuing
application under Sec. 1.53(b) on or after May 29, 2000, for the
application to be subject to the patent term adjustment provisions of 35
U.S.C. 154(b) as amended by Sec. 4402 of the ``American Inventors
Protection Act of 1999,'' an applicant need only file a CPA under Sec.
1.53(d) on or after May 29, 2000, for the application to be subject to
the patent term adjustment provisions of 35 U.S.C. 154(b) as amended by
Sec. 4402 of the ``American Inventors Protection Act of 1999.'' The
filing of a CPA on or after May 29, 2000, does not, however, entitle an
applicant to receive term adjustment for Office delays before May 29,
2000.
The six-month lead time provided in Sec. 4405(a) for implementing
the patent term adjustment provisions of Sec. 4402 of the ``American
Inventors Protection Act of 1999'' is not sufficient to conduct a notice
and comment rulemaking (giving a 60-day comment period) and adopt final
rules by the effective date (May 29, 2000) of the patent term adjustment
provisions of Sec. 4402 of the ``American Inventors Protection Act of
1999.'' Nevertheless, the Office does not anticipate that any patent
entitled to patent term adjustment based upon the provisions of Sec.
4402 of the ``American Inventors Protection Act of 1999'' will issue
until December of 2000, at the earliest. This notice of proposed
rulemaking, however, places applicants on notice as to the actions or
inactions that are considered by the Office (and may be adopted in the
final rules) as circumstances constituting a failure to engage in
reasonable efforts to conclude prosecution (processing or examination)
of the application, and which will result in a reduction of any patent
term adjustment.
Discussion of Specific Rules
Section 1.18(e) is proposed to be added to provide a $200.00 fee for
filing an application for patent term adjustment under Sec. 1.705.
Section 1.18(f) is proposed to be added to provide a $450.00 fee for
filing a request for reinstatement of all or part of the term reduced
pursuant to Sec. 1.704(b)(1) in an application for patent term
adjustment under Sec. 1.705. Section 1.18(d) is proposed to be added in
a rulemaking to implement the eighteen-month publication provisions of
the ``American Inventors Protection Act of 1999.'' The fees in proposed
Sec. 1.18(e) and (f) are set to recover the estimated average cost to
the Office for processing and evaluating an application for patent term
adjustment under Sec. 1.705 ($200.00), and for processing and evaluating
a request under 35 U.S.C. 154(b)(3)(C) for reinstatement of term reduced
under 35 U.S.C. 154(b)(2)(C) ($450.00), respectively. See 35 U.S.C.
41(d). In view of these proposed additions to Sec. 1.18, the heading of
Sec. 1.18 is also proposed to be amended to refer to patent
``post-allowance (including issue) fees'( instead of only patent ``issue
fees'').
Subpart F of 37 CFR Part 1 is proposed to be amended to include a
first undesignated center heading to read ``ADJUSTMENT OF PATENT TERM
DUE TO EXAMINATION DELAY'' followed by an amended Sec. 1.701 and newly
added Secs. 1.702 through 1.705 concerning patent term adjustment under
35 U.S.C. 154(b), and a second undesignated center heading to read
``EXTENSION OF PATENT TERM DUE TO REGULATORY REVIEW'' followed by
current Sec. 1.710 et seq. concerning patent term extension under 35
U.S.C. 156.
Section 1.701 is proposed to be amended by revising its heading to
indicate that its provisions concern the term provisions of the Uruguay
Round Agreements Act (Public Law 103-465), and to add a paragraph (e) to
specify that the provisions of Sec. 1.701 apply only to original patents
issued on applications filed on or after June 8, 1995, and before May
29, 2000. As discussed above, the provisions of 35 U.S.C. 154(b) as
amended by Sec. 532(a)(1) of Public Law 103-465 and current Sec. 1.701
apply to applications (other than for a reissue or design patent) filed
on or after June 8, 1995, but before May 29, 2000, and the provisions of
Sec. 4402 of the ``American Inventors Protection Act of 1999'' and
proposed Secs. 1.702 through 1.705 apply to applications (other than for
a reissue or design patent) filed on or after May 29, 2000.
Section 1.702 is proposed to be added to set forth the bases for
patent term adjustment under 35 U.S.C. 154(b)(1). Section 1.702(a) as
proposed indicates that a patent is entitled to patent term adjustment
if the Office fails to perform certain acts of examination within
specified time frames (35 U.S.C. 154(b)(1)(A)). Section 1.702(b) as
proposed indicates that a patent is entitled to patent term adjustment
if, subject to a number of limitations, the Office fails to issue a
patent within three years of the actual filing date of the application
(35 U.S.C. 154(b)(1)(B)). Section 1.702(c) as proposed indicates that a
patent is entitled to patent term adjustment if the issuance of the
patent was delayed by an interference proceeding (35 U.S.C.
154(b)(1)(C)(i)). Section 1.702(d) as proposed indicates that a patent
is entitled to patent term adjustment if the issuance of the patent was
delayed by the application being placed under a secrecy order under 35
U.S.C. 181 (35 U.S.C. 154(b)(1)(C)(ii)). Section 1.702(e) as proposed
indicates that a patent is entitled to patent term adjustment if the
issuance of the patent was delayed by successful appellate review under
35 U.S.C. 134, 141, or 145 (35 U.S.C. 154(b)(1)(C)(iii)). Section
1.702(f) as proposed provides that the provisions of Secs. 1.702 through
1.705 apply only to original applications, except applications for a
design patent, filed on or after May 29, 2000, and patents issued on
such applications.
Section 1.703 as proposed specifies the period of adjustment if a
patent is entitled to patent term adjustment under 35 U.S.C. 154(b)(1)
and Sec. 1.702.
Section 1.703(a) as proposed indicates that the period of adjustment
under Sec. 1.702(a) is the sum of the following periods (to the extent
that such periods are not overlapping): (1) The number of days, if any,
in the period beginning on the date fourteen months after the date on
which the application was filed under 35 U.S.C. 111(a) or fulfilled the
requirements of 35 U.S.C. 371 and ending on the mailing date of either
an action under 35 U.S.C. 132, or a notice of allowance under 35 U.S.C.
151, whichever occurs first (a written restriction requirement, a
written election of species requirement, and an action under Ex parte
Quayle, 1935 Comm'r Dec. 11 (1935) are each an action under 35 U.S.C.
132); (2) the number of days, if any, in the period beginning on the
date four months after the date a reply under Sec. 1.111 was filed and
ending on the mailing date of an action under 35 U.S.C. 132, or a notice
of allowance under 35 U.S.C. 151, whichever occurs first; (3) the number
of days, if any, in the period beginning on the date four months after
the date a reply in compliance with Sec. 1.113 (i.e., only an after
final reply that cancels all of the rejected claims and removes all
outstanding objections and requirements or otherwise places the
application in condition for allowance) was filed and ending on the date
of mailing of an action under 35 U.S.C. 132, or a notice of allowance
under 35 U.S.C. 151, whichever occurs first; (4) the number of days, if
any, in the period beginning on the date four months after the date a
notice of appeal to the Board of Patent Appeals and Interferences under
35 U.S.C. 134 and Sec. 1.191 was filed and ending on the mailing date of
an examiner's answer under Sec. 1.193, an action under 35 U.S.C. 132, or
a notice of allowance under 35 U.S.C. 151, whichever occurs first; (5)
the number of days, if any, in the period beginning on the date four
months after the date of a final decision by the Board of Patent Appeals
and Interferences or by a Federal court in an appeal under 35 U.S.C. 141
or a civil action under 35 U.S.C. 145 or 146 in an application
containing allowable claims and ending on the mailing date of either an
action under 35 U.S.C. 132, or a notice of allowance under 35 U.S.C.
151, whichever occurs first; and (6) the number of days, if any, in the
period beginning on the date four months after the date the issue fee
was paid and all outstanding requirements were satisfied (i.e., the date
the issue fee was paid or the date all outstanding requirements were
satisfied, whichever is later) and ending on the date a patent was
issued.
Section 1.703(b) as proposed indicates that the period of adjustment
under Sec. 1.702(b) is the number of days, if any, in the period
beginning on the date three years after the actual filing date of the
application and ending on the date a patent was issued. Section 1.703(b)
as proposed also sets forth the limitations on patent term adjustment
specified in 35 U.S.C. 154(b)(1)(B)(i) and (ii). Section 1.703(b) as
proposed specifically provides that the period of adjustment of the term
of a patent under Sec. 1.703(b) shall not include the period equal to
the sum of the following periods: (1) The period of pendency consumed by
continued examination of the application under 35 U.S.C. 132(b) (35
U.S.C. 154(b)(1)(B)(i)); (2) the period of pendency consumed by
interference proceedings (35 U.S.C. 154(b)(1)(B)(ii)); (3) the period of
pendency consumed by imposition of a secrecy order (35 U.S.C.
154(b)(1)(B)(ii)); and (4) the period of pendency consumed by appellate
review under 35 U.S.C. 134, 141, 145, whether successful or unsuccessful
(35 U.S.C. 154(b)(1)(B)(ii)). The provisions of 35 U.S.C.
154(b)(1)(B)(iii) concerning the period of pendency consumed by delays
in the processing of the application requested by the applicant are
treated in Sec. 1.704 as such delays are also circumstances constituting
a failure of an applicant to engage in reasonable efforts to conclude
processing or examination of the application.
Section 1.703(c) as proposed indicates that the period of adjustment
under Sec. 1.702(c) is the sum of the following periods (to the extent
that such periods are not overlapping): (1) The number of days, if any,
in the period beginning on the date an interference was declared or
redeclared to involve the application in the interference and ending on
the date that the interference was terminated with respect to the
application; and (2) the number of days, if any, in the period beginning
on the date prosecution in the application was suspended by the Office
due to interference proceedings under 35 U.S.C. 135(a) not involving the
application and ending on the date of the termination of the suspension.
Section 1.703(d) as proposed indicates that the period of adjustment
under Sec. 1.702(d) is the sum of the following periods (to the extent
that such periods are not overlapping): (1) The number of days, if any,
the application was maintained in a sealed condition under 35 U.S.C.
181; (2) the number of days, if any, in the period beginning on the date
of mailing of an examiner's answer under Sec. 1.193 in the application
under secrecy order and ending on the date the secrecy order was
removed; (3) the number of days, if any, in the period beginning on the
date applicant was notified that an interference would be declared but
for the secrecy order and ending on the date the secrecy order was
removed; and (4) the number of days, if any, in the period beginning on
the date of notification under Sec. 5.3(c) and ending on the date of
mailing of the notice of allowance under Sec. 1.311.
Section 1.703(e) as proposed indicates that the period of adjustment
under Sec. 1.702(e) is the sum of the number of days, if any, in the
period beginning on the date on which a notice of appeal to the Board of
Patent Appeals and Interferences was filed under 35 U.S.C. 134 and Sec.
1.191 and ending on the date of a final decision in favor of the
applicant by the Board of Patent Appeals and Interferences or by a
Federal court in an appeal under 35 U.S.C. 141 or a civil action under
35 U.S.C. 145.
Section 1.703(f) as proposed indicates that the adjustment will run
from the expiration date of the patent as set forth in 35 U.S.C.
154(a)(2). Section 1.703(f) also indicates that to the extent that
periods of adjustment attributable to the grounds specified in Sec.
1.702 overlap, the period of adjustment will not exceed the actual
number of days the issuance of the patent was delayed (35 U.S.C.
154(b)(2)(A)). Section 1.703(f) as proposed also specifically indicates
that the term of a patent entitled to adjustment under Sec. 1.702 and
this section shall be adjusted for the sum of the periods calculated
under Sec. 1.703(a) through (e), to the extent that such periods are not
overlapping, less the sum of the periods calculated under Sec. 1.704.
Section 1.703(f) as proposed also provides that the date indicated on
any certificate of mailing or transmission under Sec. 1.8 shall not be
taken into account in this calculation. That is, while the date
indicated on any certificate of mailing or transmission under Sec. 1.8
will continue to be taken into account in determining timeliness, the
date of filing (Sec. 1.6) will be the date used in a patent term
adjustment calculation. Applicant may wish to consider the use of the
``Express Mail Post Office to Addressee'' service of the United States
Postal Service (Sec. 1.10) for replies (as well as original
applications) to be accorded the earliest possible filing date for
patent term adjustment calculations.
Section 1.703(g) as proposed indicates that no patent, the term of
which has been disclaimed beyond a specified date, shall be adjusted
under Secs. 1.702 and 1.703 beyond the expiration date specified in the
disclaimer (35 U.S.C. 154(b)(2)(B)).
Section 1.704 as proposed implements the provisions of 35 U.S.C.
154(b)(2)(C). 35 U.S.C. 154(b)(2)(C) specifies certain circumstances as
constituting a failure of an applicant to engage in reasonable efforts
to conclude processing or examination of an application, and also
provides for the Office to prescribe regulations establishing
circumstances that constitute a failure of an applicant to engage in
reasonable efforts to conclude processing or examination of the
application.
Section 1.704(a) as proposed implements the provisions of 35 U.S.C.
154(b)(2)(C)(i) and indicates that the period of adjustment shall be
reduced by a period equal to the period of time during which the
applicant failed to engage in reasonable efforts to conclude prosecution
(i.e., processing or examination) of the application.
Section 1.704(b) as proposed provides that with respect to the
ground for adjustments set forth in Sec. 1.702(a) though (e), and in
particular Sec. 1.702(b), an applicant shall be deemed to have failed to
engage in reasonable efforts to conclude prosecution for the cumulative
total of any periods of time in excess of three months that are taken to
reply to any notice or action by the Office making any rejection,
objection, argument, or other request, measuring such three- month
period from the date the notice or action was mailed or given to the
applicant. A Notice of Omitted Items (PTO-1669) is not a notice or
action by the Office making a rejection, objection, argument, or other
request within the meaning of 35 U.S.C. 154(b)(2)(C)(ii) or Sec.
1.704(b), since the Office does not require a reply to that notice to
continue the processing and examination of the application. The
three-month period in 35 U.S.C. 154(b)(2)(C)(ii) and Sec. 1.704(b)
applies regardless of the period for reply set in the Office action or
notice. For example, if an Office action sets a one-month period for
reply (restriction requirement), the applicant may obtain a two-month
extension of time under Sec. 1.136(a) before being subject to a
reduction of patent term adjustment under 35 U.S.C. 154(b)(2)(C)(ii) and
Sec. 1.704(b). If, however, an Office action set a six-month period for
reply, as is commonly set in applications subject to secrecy orders (see
section 130 of the Manual of Patent Examining Procedure (7th ed. 1998)
(MPEP)), the applicant is subject to a reduction of patent term
adjustment under 35 U.S.C. 154(b)(2)(C)(ii) and Sec. 1.704(b) if the
applicant does not reply to the Office action within three months,
notwithstanding that a reply may be timely filed six months after the
mailing date of the Office action. Section 1.704(b) as proposed
indicates that in such a case the period of adjustment set forth in Sec.
1.703 shall be reduced by the number of days, if any, beginning on the
date three months after the date of mailing of the Office communication
notifying the applicant of the rejection, objection, argument, or other
request and ending on the date the reply was filed.
Section 1.704(c) as proposed also establishes further circumstances
that constitute a failure of an applicant to engage in reasonable
efforts to conclude processing or examination of the application.
Section 1.704(c)(1) through (c)(16) set forth actions or inactions by an
applicant that interfere with the Office's ability to process or examine
an application (and thus circumstances that constitute a failure of an
applicant to engage in reasonable efforts to conclude processing or
examination of the application), as well as the period by which a period
of adjustment set forth in Sec. 1.703 shall be reduced if an applicant
engages in any of the enumerated actions or inactions. Sections
1.704(c)(1) through 1.704(c)(16) address situations that occur with
sufficient frequency to warrant being specifically provided for in the
rules of practice. An attempt to provide an exhaustive listing of
actions or inactions that interfere with the Office's ability to process
or examine an application, but do not occur with great frequency (e.g.,
applicant files and persists in requesting reconsideration of a
meritless petition under Sec. 1.10 or when the scope of the broadest
claim in the application at the time an application is placed in
condition for allowance is substantially the same as suggested or
allowed by the examiner more than six months earlier than the date the
application was placed in condition for allowance), is impractical.
Thus, the actions or inactions set forth in Sec. 1.704(c) are exemplary
circumstances that constitute a failure of an applicant to engage in
reasonable efforts to conclude processing or examination of the
application. The Office may also reduce a period of adjustment provided
in Sec. 1.703 on the basis of conduct that interferes with the Office's
ability to process or examine an application under the authority
provided in 35 U.S.C. 154(b)(2)(C)(iii), even if such conduct is not
specifically addressed in Sec. 1.704(c).
Section 1.704(c)(1) as proposed establishes suspension of action
under Sec. 1.103 at the applicant's request as a circumstance that
constitutes a failure of an applicant to engage in reasonable efforts to
conclude processing or examination of an application. Obviously, if
action is suspended at the applicant's request, the Office is precluded
from processing or examining the application as a result of an action by
the applicant. Section 1.704(c)(1) as proposed also provides that in
such a case the period of adjustment set forth in Sec. 1.703 shall be
reduced by the number of days, if any, beginning on the date a request
for suspension of action under Sec. 1.103 was filed and ending on the
date of the termination of the suspension.
Section 1.704(c)(2) as proposed establishes deferral of issuance of
a patent under Sec. 1.314 as a circumstance that constitutes a failure
of an applicant to engage in reasonable efforts to conclude processing
or examination of an application. Obviously, if issuance of the patent
is deferred under Sec. 1.314, the Office is precluded from issuing the
application as a result of an action by the applicant. When a petition
under Sec. 1.314 is granted, the petition decision generally states that
the application will be held for a period of a month to await the filing
of a paper. At the end of the period, the application is returned to the
issue process without a further communication from the Office to the
applicant. Section 1.704(c)(2) as proposed also provides that in such a
case the period of adjustment set forth in Sec. 1.703 shall be reduced
by the number of days, if any, beginning on the date a request for
deferral of issuance of a patent under Sec. 1.314 was filed and ending
on the issue date of the patent.
Section 1.704(c)(3) as proposed establishes abandonment of the
application or late payment of the issue fee as a circumstance that
constitutes a failure of an applicant to engage in reasonable efforts to
conclude processing or examination of an application. Obviously, if the
application is abandoned (either by failure to prosecute or late payment
of the issue fee), the Office is precluded from processing or examining
the application as a result of an action or inaction by the applicant.
Section 1.704(c)(3) as proposed also provides that in such a case the
period of adjustment set forth in Sec. 1.703 shall be reduced by the
number of days, if any, beginning on the date of abandonment or the date
after the day the issue fee was due and ending on the date of mailing of
the decision reviving the application or accepting late payment of the
issue fee.
Section 1.704(c)(4) as proposed establishes failure to file a
petition to withdraw a holding of abandonment or to revive an
application within two months from the mailing date of a notice of
abandonment as a circumstance that constitutes a failure of an applicant
to engage in reasonable efforts to conclude processing or examination of
an application. Any applicant who considers an application to have been
improperly held abandoned (the reduction in Sec. 1.704(c)(3) is
applicable to the revival of an application properly held abandoned) is
expected to file a petition to withdraw the holding of abandonment (or
to revive the application) within two months from the mailing date of a
notice of abandonment. See MPEP 711.03(c)(I). Section 1.704(c)(4) as
proposed also provides that in such a case the period of adjustment set
forth in Sec. 1.703 shall be reduced by the number of days, if any,
beginning on the date two months from the mailing date of a notice of
abandonment and ending on the date a petition to withdraw the holding of
abandonment or to revive the application was filed.
Section 1.704(c)(5) as proposed establishes conversion of a
provisional application under 35 U.S.C. 111(b) to a nonprovisional
application under 35 U.S.C. 111(a) (pursuant to 35 U.S.C. 111(b)(5)) as
a circumstance that constitutes a failure of an applicant to engage in
reasonable efforts to conclude processing or examination of an
application. Section 4801(a) of the ``American Inventors Protection Act
of 1999'' provides for the conversion of a provisional application under
35 U.S.C. 111(b) and Sec. 1.53(c) to a nonprovisional application under
35 U.S.C. 111(a) and Sec. 1.53(b), and it is being implemented in a
separate rulemaking. Conversion of a provisional application to a
nonprovisional application will require the Office to reprocess the
application (as a nonprovisional application) up to one year after the
filing date that will be accorded to such nonprovisional application as
a result of an action by the applicant. Section 1.704(c)(5) as proposed
also provides that in such a case the period of adjustment set forth in
Sec. 1.703 shall be reduced by the number of days, if any, beginning on
the date the application was filed under 35 U.S.C. 111(b) and ending on
the date a request in compliance with Sec. 1.53(c)(3) to convert the
provisional application into a nonprovisional application was filed.
Section 1.704(c)(6) as proposed establishes failure to file the
basic filing fee (Sec. 1.16(a) or (g)), any English translation required
by Sec. 1.52(d), or an oath or declaration (Sec. 1.63) executed by all
of the inventors in an application under 35 U.S.C. 111(a) as a
circumstance that constitutes a failure of an applicant to engage in
reasonable efforts to conclude processing or examination of an
application. The Office cannot act on an application until the applicant
files the basic filing fee, an English translation (if the application
is filed in a language other than English), and an oath or declaration
(Sec. 1.63) executed in compliance with Sec. 1.64 (by all of the
inventors or applicants under Secs. 1.42, 1.43, or 1.47). The rules of
practice (Sec. 1.53(f) and 1.136(a)), however, currently permit an
applicant to delay filing the basic filing fee, any English translation
required by Sec. 1.52(d), and oath or declaration by up to seven months
from the date the applicant is notified that the application is missing
the basic filing fee, English translation, or oath or declaration. To
avoid changing these provisions and requiring that the basic filing fee
and oath or declaration be filed when an application is filed under 35
U.S.C. 111(a), the Office is setting forth failure to file the basic
filing fee (Sec. 1.16(a) or (g)), any English translation required by
Sec. 1.52(d), or an oath or declaration (Sec. 1.63) executed by all of
the inventors in an application under 35 U.S.C. 111(a) as a circumstance
that constitutes a failure of an applicant to engage in reasonable
efforts to conclude processing of the application. Section 1.704(c)(6)
as proposed provides that in such a case the period of adjustment set
forth in Sec. 1.703 shall be reduced by the number of days, if any,
beginning on the date the application was filed and ending on the later
of the date the applicant supplied the basic filing fee (Sec. 1.16), an
English translation (Sec. 1.52(d)), and an oath or declaration (Sec.
1.63) executed in compliance with Sec. 1.64 and, if the oath or
declaration was not executed by all of the inventors, the earliest of
the date the application was accorded status under Sec. 1.47, or four
months after a grantable petition under Sec. 1.47 was filed.
Section 1.704(c)(7) as proposed establishes failure to fulfill the
requirements of 35 U.S.C. 371(c) and Sec. 1.494 or Sec. 1.495 in an
international application as a circumstance that constitutes a failure
of an applicant to engage in reasonable efforts to conclude processing
of an application. The three-year period in 35 U.S.C. 154(b)(1)(B) is
measured from the ``actual filing date of the application in the United
States'' and 35 U.S.C. 363 provides that an international application
designating the United States has the same effect from its international
filing date as a national application regularly filed in the United
States (except as provided in 35 U.S.C. 102(e)). Nevertheless, the
Office cannot act on an international application until the applicant
fulfills the requirements of 35 U.S.C. 371(c) and Sec. 1.494 or Sec.
1.495, and the legislative history of 35 U.S.C. 154(b) makes clear that
an applicant may not use the Patent Cooperation Treaty (PCT) application
filing system to have the time period set forth in Sec. 1.494 or Sec.
1.495 count against the three-year time period in 35 U.S.C.
154(b)(1)(B). See 145 Cong. Rec. S14708, S14718 (daily ed. November 17,
1999) (statement of Sen. Lott); see also H.R. Rep. No. 106-464 at 126
(1999). Section 1.704(c)(7) as proposed also provides that in such a
case the period of adjustment set forth in Sec. 1.703 shall be reduced
by the number of days, if any, beginning on the date the international
application was filed under 35 U.S.C. 363 and the later of the date the
application fulfilled the requirements of 35 U.S.C. 371(c) and Secs.
1.494 or 1.495 and, if the oath or declaration was not executed by all
of the inventors (Sec. 1.497), the earliest of the date the application
was accorded status under Sec. 1.47, or four months after a grantable
petition under Sec. 1.47 was filed.
Section 1.704(c)(8) as proposed establishes failure to request the
national stage of processing in an international application if the
application fulfills the requirements of 35 U.S.C. 371(c) and Sec. 1.494
or Sec. 1.495 before the expiration of the applicable time period set
forth in Sec. 1.494(b) or Sec. 1.495(b) as a circumstance that
constitutes a failure of an applicant to engage in reasonable efforts to
conclude processing or examination of an application. The Office cannot
act on an international application before the expiration of the
applicable time period set forth in Sec. 1.494(b) or Sec. 1.495(b)
without the applicant's express request (35 U.S.C. 371(f)), even if the
application fulfills the requirements of 35 U.S.C. 371(c) and Sec. 1.494
or Sec. 1.495 prior to the expiration of the applicable time period set
forth in Sec. 1.494(b) or Sec. 1.495(b). Section 1.704(c)(8) as proposed
also provides that in such a case the period of adjustment set forth in
Sec. 1.703 shall be reduced by the number of days, if any, beginning on
the date the international application was filed under 35 U.S.C. 363 and
the earlier of the date of expiration of the applicable time period in
Sec. 1.494(b) or Sec. 1.495(b) or the date on which an express request
for national stage of processing is filed.
Section 1.704(c)(9) as proposed establishes failure to file an
application with a specification on papers in compliance with Sec. 1.52
and having a title and abstract in compliance with Sec. 1.72, drawings
in compliance with Sec. 1.84 (if applicable), and a sequence listing in
compliance with Secs. 1.821 through 1.825 (if applicable) as a
circumstance that constitutes a failure of an applicant to engage in
reasonable efforts to conclude processing or examination of an
application. The Office must require these items during its
preexamination processing of an application to implement the pre-grant
publication provisions of the ``American Inventors Protection Act of
1999.'' Therefore, the Office cannot act on an application until it
contains a specification on papers in compliance with Sec. 1.52 and
having an abstract (Sec. 1.72(b)), drawings in compliance with Sec. 1.84
(if applicable), and a sequence listing in compliance with Secs. 1.821
through 1.825 (if applicable). Section 1.704(c)(9) as proposed also
provides that in such a case the period of adjustment set forth in Sec.
1.703 shall be reduced by the number of days, if any, beginning on the
filing date of the application and ending on the date the application
contains a specification on papers in compliance with Sec. 1.52 and
having an abstract (Sec. 1.72(b)), drawings in compliance with Sec. 1.84
(if applicable), and a sequence listing in compliance with Secs. 1.821
through 1.825 (if applicable).
Section 1.704(c)(10) as proposed establishes submission of a
preliminary amendment or other preliminary paper less than one month
before the mailing of an Office action under 35 U.S.C. 132 or a notice
of allowance under 35 U.S.C. 151 that requires the mailing of a
supplemental Office action or notice of allowance as a circumstance that
constitutes a failure of an applicant to engage in reasonable efforts to
conclude processing or examination of an application. If the submission
of a preliminary amendment or other paper requires the Office to issue a
supplemental Office action or notice of allowance, the submission of
that preliminary amendment or other paper has interfered with the
processing and examination of an application. Section 1.704(c)(10) as
proposed also provides that in such a case the period of adjustment set
forth in Sec. 1.703 shall be reduced by the number of days, if any,
beginning on the mailing date of the original Office action or notice of
allowance and ending on the mailing date of the supplemental Office
action or notice of allowance.
Section 1.704(c)(11) as proposed establishes submission of a reply
having an omission (Sec. 1.135(c)) as a circumstance that constitutes a
failure of an applicant to engage in reasonable efforts to conclude
processing or examination of an application. Submitting a reply having
an omission requires the Office to issue an action under Sec. 1.135(c)
and await and process the applicant's reply before the initial reply (as
completed) can be treated on its merits. Section 1.704(c)(11) as
proposed also provides that in such a case the period of adjustment set
forth in Sec. 1.703 shall be reduced by the number of days, if any,
beginning on the date the reply having an omission was filed and ending
on the date that the omission was filed.
Section 1.704(c)(12) as proposed establishes submission of a
supplemental reply or other paper after a reply has been filed as a
circumstance that constitutes a failure of an applicant to engage in
reasonable efforts to conclude processing or examination of an
application. The submission of a supplemental reply or other paper
(e.g., IDS or petition) after an initial reply was filed requires the
Office to restart consideration of the initial reply in view of the
supplemental reply or other paper, which will result in a delay in the
Office's response to the initial reply. Section 1.704(c)(12) as proposed
also provides that in such a case the period of adjustment set forth in
Sec. 1.703 shall be reduced by the number of days, if any, beginning on
the date the initial reply was filed and ending on the date that the
supplemental reply or such other paper was filed.
Section 1.704(c)(13) as proposed establishes failure to file an
appeal brief (and brief fee) in compliance with Sec. 1.192 with the
notice of appeal to the Board of Patent Appeals and Interferences under
35 U.S.C. 134 and Sec. 1.191 as a circumstance that constitutes a
failure of an applicant to engage in reasonable efforts to conclude
processing or examination of an application. The examiner cannot prepare
an examiner's answer in response to an appeal until the applicant files
an appeal brief in compliance with Sec. 1.192, and the rules of practice
(Secs. 1.192(a) and 1.136(a)) now allow the applicant to delay filing an
appeal brief for up to seven months from the filing date of the notice
of appeal under Sec. 1.191. Thus, to continue to permit this time frame
for filing an appeal brief, the Office must establish the failure to
file an appeal brief (and brief fee) in compliance with Sec. 1.192 with
the notice of appeal to the Board of Patent Appeals and Interferences
under 35 U.S.C. 134 and Sec. 1.191 as a circumstance that constitutes a
failure of an applicant to engage in reasonable efforts to conclude
processing or examination of the application. Section 1.704(c)(13) as
proposed also provides that in such a case the period of adjustment set
forth in Sec. 1.703 shall be reduced by the number of days, if any,
beginning on the date a notice of appeal under 35 U.S.C. 134 and Sec.
1.191 was filed and ending on the day an appeal brief (and brief fee) in
compliance with Sec. 1.192 was filed, or, if no appeal brief under Sec.
1.192 is filed, ending on the day an amendment in compliance with Sec.
1.113 was filed.
Section 1.704(c)(14) as proposed establishes submission of an
amendment or other paper in an application containing allowed claims
after a decision by the Board of Patent Appeals and Interferences (other
than a decision containing a rejection under Sec. 1.196(b)) or a Federal
court less than one month before the mailing of an Office action under
35 U.S.C. 132 or notice of allowance under 35 U.S.C. 151 that requires
the mailing of a supplemental Office action or supplemental notice of
allowance as a circumstance that constitutes a failure of an applicant
to engage in reasonable efforts to conclude processing or examination of
the application. The submission of an amendment or other paper (e.g.,
IDS or petition) in an application after a Board of Patent Appeals and
Interferences or court decision requires the Office to restart
consideration of the application in view of the amendment or other
paper, which will result in a delay in the Office's taking action on the
application. Section 1.704(c)(14) as proposed also provides that in such
a case the period of adjustment set forth in Sec. 1.703 shall be reduced
by the number of days, if any, beginning on the mailing date of the
original Office action or notice of allowance and ending on the mailing
date of the supplemental Office action or notice of allowance.
Section 1.704(c)(15) as proposed establishes submission of an
amendment under Sec. 1.312 or other paper after a notice of allowance
has been given or mailed as a circumstance that constitutes a failure of
an applicant to engage in reasonable efforts to conclude processing or
examination of an application. The submission of amendments (or other
papers) after an application is allowed causes substantial interference
with the patent issue process. See Filing of Continuing Applications,
Amendments, or Petitions after Payment of Issue Fee, Notice, 1221 Off.
Gaz. Pat. Office 14 (April 6, 1999); and Patents to Issue More Quickly
After Issue Fee Payment, Notice, 1220 Off. Gaz. Pat. Office 42 (March 9,
1999). Thus, to continue to permit applicants to submit an amendment or
other paper after a notice of allowance is mailed or given, the Office
must establish submission of an amendment under Sec. 1.312 or other
paper after a notice of allowance has been given or mailed as a
circumstance that constitutes a failure of an applicant to engage in
reasonable efforts to conclude processing or examination of the
application. Section 1.704(c)(15) as proposed also provides that in such
a case the period of adjustment set forth in Sec. 1.703 shall be reduced
by the lesser of: (1) The number of days, if any, beginning on the date
the amendment under Sec. 1.312 was filed and ending on the mailing date
of the Office action or notice in response to the amendment under Sec.
1.312 or such other paper; or (2) four months. The ``lesser of * * * or
four months'' provision is to provide a four-month cap for reductions
under Sec. 1.704(c)(15).
Section 1.704(c)(16) as proposed establishes further prosecution via
a continuing application as a circumstance that constitutes a failure of
an applicant to engage in reasonable efforts to conclude processing or
examination of the application. Currently, a continuing application may
be used to: (1) Obtain further examination of an invention disclosed and
claimed in the prior application (continuation application); (2) obtain
examination (for the first time) of an invention disclosed but not
claimed or not elected for examination in the prior application
(divisional application); or (3) obtain examination of an invention
neither disclosed nor claimed in the prior application
(continuation-in-part application). The provisions of 35 U.S.C. 132(b)
(which are being implemented in a separate rulemaking) will permit an
applicant to obtain further or continued examination of an invention
disclosed and claimed in an application, which renders it unnecessary
for an applicant whose application is eligible for patent term
adjustment under 35 U.S.C. 154(b) to file a continuing application to
obtain further examination of an invention disclosed and claimed in an
application. If an applicant is filing a continuing application to
obtain examination (for the first time) of an invention disclosed but
not claimed or not elected for examination in the prior application or
an invention neither disclosed nor claimed in the prior application, it
is not appropriate for that applicant to obtain any benefit in the
continuing application for examination delays that might have occurred
in the prior application. Thus, the Office is establishing further
prosecution via a continuing application as a circumstance that
constitutes a failure of an applicant to engage in reasonable efforts to
conclude processing or examination of the application, in that the
period of adjustment set forth in Sec. 1.703 shall not include any
period that is prior to the actual filing date of the application that
resulted in the patent. Thus, if the application that resulted in the
patent is a CPA, the period of adjustment set forth in Sec. 1.703 (if
any) will not include any period that is prior to the filing date of the
request for that CPA.
As discussed above, an applicant may file a CPA under Sec. 1.53(d)
on or after May 29, 2000, for the application to be subject to the
patent term adjustment provisions of 35 U.S.C. 154(b) as amended by Sec.
4402 of the ``American Inventors Protection Act of 1999.'' The period of
patent term adjustment Sec. 1.703 (if any), however, will not include
any period that is prior to the filing date of the request for that CPA.
These are three examples of how 35 U.S.C. 154(b) and the proposed
rules to implement 35 U.S.C. 154(b) would apply. For purposes of clarity
and ease of calculation, the examples illustrate mailing of some Office
actions on non-business days, and granting of patents on days other than
Tuesdays.
In a first example: (1) A first application (``Application A'') is
filed on January 2, 1998; (2) a second application (``Application B'')
is filed as a continued prosecution application (CPA under Sec. 1.53(d))
of Application A on May 29, 2000, without payment of the filing fee or
providing a deposit account authorization for payment of the filing fee;
(3) a ``Notice to File Missing Parts of Application (CPA)'' is mailed on
July 25, 2000, requiring the filing fee, and setting a two-month period
for reply; (4) the filing fee is paid on September 25, 2000; (5) a
written restriction requirement is mailed on November 13, 2000; (6) a
petition for a four-month extension of time and an election are filed on
April 6, 2001; (7) an Office action (first action on the merits) is
mailed on September 10, 2001; (8) an amendment is filed in reply (Sec.
1.111) to that Office action on November 1, 2001; (9) a notice of
allowability requiring a biological material deposit (Sec. 1.809(c)) and
notice of allowance are mailed on December 3, 2001; (10) the issue fee
is paid on February 28, 2002; (11) the biological material deposit is
made on March 15, 2002, with a one-month extension of time; and (12) the
patent issues on July 9, 2002.
The fourteen-month time period set forth in 35 U.S.C.
154(b)(1)(A)(i)(Sec. 1.702(a)(1) and Sec. 1.703(a)(1)) was met by the
mailing of the written restriction requirement on November 13, 2000,
within fourteen months of the filing date of the application (May 29,
2000). The four-month time period set forth in 35 U.S.C.
154(b)(1)(A)(ii)(Sec. 1.702(a)(2) and Sec. 1.703(a)(2)) was not met for
acting on the reply (election) of April 6, 2001, but was met for acting
on the reply (amendment) of November 1, 2001. The four-month time period
for acting on the reply of April 6, 2001, expired on August 6, 2001;
however, the Office's response to the reply of April 6, 2001, was not
mailed until September 10, 2001, the difference in time between August
6, 2001, and September 10, 2001, being 35 days. The four-month time
period set forth in 35 U.S.C. 154(b)(1)(A)(iii)(Sec. 1.702(a)(2) through
(a)(3) and Sec. 1.703(a)(3) through (a)(4)) is not applicable in this
example. The four-month time period set forth in 35 U.S.C.
154(b)(1)(A)(iv)(Sec. 1.702(a)(4) and Sec. 1.703(a)(6)) was met as all
formal requirements were satisfied on March 15, 2002, and the patent was
issued on July 9, 2002 (within four months of March 15, 2002). As the
application (Application B) was pending for less than three years (from
May 29, 2000, until July 9, 2002), there is no adjustment pursuant to 35
U.S.C. 154(b)(1)(B)(Sec. 1.702(b) and Sec. 1.703(b)). In addition, as
there was also no interference, secrecy order or appellate review in the
application, there is no adjustment pursuant to 35 U.S.C.
154(b)(1)(C)(Sec. 1.702(b) through (e) and Sec. 1.703(c) through (e)).
35 U.S.C. 154(b)(2)(C)(i) provides that the period of adjustment
shall be reduced by the period of time during which applicant failed to
engage in reasonable efforts to conclude prosecution of the application.
Section 1.704(b) as proposed sets forth that any time periods in excess
of three months taken to reply to any notice or action by the Office
shall each be deemed failures to engage in reasonable efforts to
conclude prosecution of an application, and that the period of
adjustment shall be reduced by the period of time beginning on the date
three months after the date of mailing of the Office communication
notifying the applicant of the rejection, objection, argument, or other
request and ending on the date the reply was filed. In this example, the
period of time from three months after the written restriction (February
13, 2001) until the reply (April 6, 2001) is 52 days, and the period of
time from three months after the notice of allowance (March 3, 2002) and
the date the biological material deposit was made (March 15, 2002) is 12
days, for a total reduction under Sec. 1.704(b) of 64 days. Sections
1.704(c)(1) through 1.704(c)(16) as proposed set forth actions or
inactions, each of which further constitutes a failure by the applicant
to engage in reasonable efforts to conclude prosecution of an
application. As applicable in this example, proposed Sec. 1.704(c)(6)
provides that a failure to file the basic filing fee of an application
on filing will result in a reduction of any period of adjustment (Sec.
1.703) by the period between the application filing date and the
submission of the basic filing fee, and proposed Sec. 1.704(c)(16)
provides that the period of adjustment (Sec. 1.703) shall not include
any period that is prior to the actual filing date of the application
that resulted in the patent. In this example, the period of time from
filing of Application B (May 29, 2000) until submission of the basic
filing fee (September 25, 2000) is 119 days, and the period of
adjustment does not include any period that is prior to May 29, 2000
(the actual filing date of Application B).
Accordingly, the total period during which applicant failed to engage in
reasonable efforts to conclude prosecution would be 64 days (1.704(b))
plus 119 days (1.704(c)) for a total of 183 days. It should be noted
that the reduction attributed to the extension of time (Sec. 1.704(b))
may be reduced if a proper showing pursuant to Sec. 1.705(c) is
submitted after mailing of the notice of allowance and before or with
payment of the issue fee.
In this example, the period of adjustment pursuant to 35 U.S.C.
154(b)(1)(Sec. 1.702 and Sec. 1.703) is 35 days, which is reduced by the
183-day period in which applicant failed to engage in reasonable efforts
to conclude prosecution (Sec. 1.704). Since 35 is less than 183, there
is no adjustment to the term of the patent issuing on Application B,
whose projected expiration date remains January 2, 2018.
In a second example: (1) An application is filed which includes a
sequence listing as required by Sec. 1.821(c) on March 1, 2001; (2) a
PTOL-1661 Notice stating that the computer readable form (CRF) was not
in compliance with the requirements of Sec. 1.824 was mailed by the
Office on April 1, 2001; (3) Applicant submits a substitute or corrected
CRF on May 1, 2001; (4) a second PTOL-1661 Notice stating that the
corrected or substitute CRF is not in compliance with the requirements
of Sec. 1.824 was mailed by the Office on June 1, 2001; (5) a second
corrected CRF is submitted on July 1, 2001; (6) a third PTOL-1661 Notice
stating that the corrected or substitute CRF is not in compliance with
the requirements of Sec. 1.824 was mailed by the Office on September 1,
2001; (7) a third corrected CRF is submitted on October 1, 2001; (8) a
fourth PTOL-1661 Notice stating that the corrected or substitute CRF is
not in compliance with the requirements of Sec. 1.824 was mailed by the
Office on December 1, 2002; (9) a fourth corrected CRF is submitted on
January 1, 2002; (10) a fifth PTOL-1661 Notice stating that the
corrected or substitute CRF is not in compliance with the requirements
of Sec. 1.824 was mailed by the Office on February 1, 2002; (11) a
proper CRF submission is filed on March 1, 2002; (12) an Office action
(first action on the merits) is mailed on July 1, 2002; (13) an
amendment is filed in reply (Sec. 1.111) to that Office action on
October 1, 2002; (14) a second Office action is mailed on February 1,
2003; (15) an amendment is filed in reply to the second Office action on
May 1, 2003; (16) a third (final) Office action is mailed on September
1, 2003; (17) an amendment is filed, which adopts the allowable subject
matter noted in the final Office action, on November 1, 2003; (18) a
notice of allowance and notice of allowability are mailed by the Office
on December 1, 2003; (19) applicant provides the issue fee on January 1,
2004; (20) the patent issues on March 1, 2004.
The fourteen-month period set forth in 35 U.S.C. 154(b)(1)(A)(i)
(Secs. 1.702(a)(1) and 1.703(a)(1)) was not met by the mailing of the
first Office action on July 1, 2002, by a 61-day period. The four-month
time period set forth in 35 U.S.C. 154(b)(1)(A)(ii) (Sec. 1.702(a)(2)
and Sec. 1.703(a)(2)) was met for acting on the replies of October 1,
2002, May 1, 2003, and November 1, 2003. The four-month time period set
forth in 35 U.S.C. 154(b)(1)(A)(iv)(Sec. 1.702(a)(4) and Sec.
1.703(a)(6)) was met as all formal requirements were satisfied on
January 1, 2004, and the patent was issued on March 1, 2004 (within four
months of January 1, 2004). As the application was pending for three
years (from March 1, 2001, to March 1, 2004), there is no adjustment
pursuant to 35 U.S.C. 154(b)(1)(B)(Sec. 1.702(b) and Sec. 1.703(b)). In
addition, as there was also no interference, secrecy order or appellate
review in the application, there is no adjustment pursuant to 35 U.S.C.
154(b)(1)(C)(Sec. 1.702(b) through (e) and Sec. 1.703(c) through (e)).
35 U.S.C. 154(b)(2)(C)(i) provides that the period of adjustment
shall be reduced by the period of time during which applicant failed to
engage in reasonable efforts to conclude prosecution of the application.
Sections 1.704(b) and 1.704(c)(1) through 1.704(c)(16) as proposed set
forth actions or inactions, each of which constitutes a failure by the
applicant to engage in reasonable efforts to conclude prosecution of an
application. As applicable in this example, proposed Sec. 1.704(c)(9)
provides that a failure to file an application with a sequence listing
in compliance with Secs. 1.821 through 1.825 will result in a reduction
of any period of adjustment (Sec. 1.703) by the period between the
application filing date and the date a sequence listing in compliance
with Secs. 1.821 through 1.825 is submitted. In this example, the period
of time from filing date (March 1, 2001) and the filing of the correct
CRF submission (March 1, 2002) is 365 days.
In this example, the period of adjustment pursuant to 35 U.S.C.
154(b)(1)(Sec. 1.702 and Sec. 1.703) is 61 days, which is reduced by the
365-day period in which applicant failed to engage in reasonable efforts
to conclude prosecution (Sec. 1.704). Since 61 is less than 365, there
is no adjustment to the term of the patent, whose projected expiration
date remains March 1, 2021.
In a third example: (1) An international application is filed in the
United States Receiving Office on January 1, 2001; (2) a Demand for
international preliminary examination is filed on July 1, 2002; (3) the
documents and fees to fulfill the requirements of 35 U.S.C. 371(c) (Sec.
1.495) were filed on July 1, 2003; (4) an Office action is mailed on
November 1, 2003; (5) a reply to the first Office action is filed May 1,
2004, with a three-month extension of time; (6) a notice of allowance
and notice of allowability are mailed on February 1, 2009; (7) applicant
pays the issue fee on March 1, 2009; (8) patent issues on July 1, 2010.
The fourteen-month period set forth in 35 U.S.C. 154(b)(1)(A)(i)
(Secs. 1.702(a)(1) and 1.703(a)(1)) was met by the mailing of the first
Office action on November 1, 2003, since the fourteen-month period is
measured from the date on which the international application fulfilled
the requirements of 35 U.S.C. 371 (35 U.S.C. 154(b)(1)(A)(i)(II)). The
four-month time period set forth in 35 U.S.C. 154(b)(1)(A)(ii) (Sec.
1.702(a)(2) and Sec. 1.703(a)(2)) was not met for acting on the reply of
May 1, 2004, by a period of 1,614 days. The four-month time period set
forth in 35 U.S.C. 154(b)(1)(A)(iv)(Sec. 1.702(a)(4) and Sec.
1.703(a)(6)) was not met as all formal requirements were satisfied on
March 1, 2009, and the patent was issued on July 1, 2010, 365 days after
the expiration of the four-month time period (on July 1, 2009) for
issuing the patent. The application was pending for more than three
years from January 1, 2001, to July 1, 2010, without continued
examination under 35 U.S.C. 132(b), a proceeding under 35 U.S.C. 135(a)
(interference), an order under 35 U.S.C. 181 (secrecy order), or
appellate review.
Therefore, there is an adjustment pursuant to 35 U.S.C. 154(b)(1)(B)
(Sec. 1.702(b) and Sec. 1.703(b)) of 2,373 days. As there was no
interference, secrecy order or appellate review in the application,
there is no adjustment pursuant to 35 U.S.C. 154(b)(1)(C)(Sec. 1.702(c)
through (e) and Sec. 1.703(c) through (e)).
35 U.S.C. 154(b)(2)(C)(i) provides that the period of adjustment
shall be reduced by the period of time during which applicant failed to
engage in reasonable efforts to conclude prosecution of the application.
Section 1.704(c) as proposed sets forth that any time periods in excess
of three months taken to reply to any notice or action by the Office
shall each be deemed failures to engage in reasonable efforts to
conclude prosecution of an application, and that the period of
adjustment shall be reduced by the period of time beginning on the date
three months after the date of mailing of the Office communication
notifying the applicant of the rejection, objection, argument, or other
request and ending on the date the reply was filed. In this example, the
period of time from three months after the Office action (November 1,
2003) until the reply (May 1, 2004) is 90 days. Sections 1.704(c)(1)
through 1.704(c)(16) as proposed set forth actions or inactions, each of
which further constitutes a failure by the applicant to engage in
reasonable efforts to conclude prosecution of an application. As
applicable in this example, proposed Sec. 1.704(c)(7) provides that a
failure to fulfill the requirements of 35 U.S.C. 371(c) and Sec. 1.494
or Sec. 1.495 in an international application will result in a reduction
of any period of adjustment (Sec. 1.703) by the period between the date
the application was filed under 35 U.S.C. 363 and the later date the
application fulfilled the requirements of 35 U.S.C. 371(c) and Sec.
1.494 or Sec. 1.495 or, if the oath or declaration (Sec. 1.497) is not
executed by all of the inventors, the earliest of the date the
application was accorded status under Sec. 1.47, or four months after a
grantable petition under Sec. 1.47 was filed. In this example, the
period of time from filing (January 1, 2001) and fulfillment of 35
U.S.C. 371(c) and Sec. 1.494 or Sec. 1.495 (July 1, 2003) is 911 days.
The total period during which applicant failed to engage in reasonable
efforts to conclude prosecution would be 90 days (1.704(b)) plus 911
days (1.704(c)) for a total of 1,001 days.
As set forth in Sec. 1.703(f), the term adjustment is the sum of the
periods calculated under Sec. 703(a)-(e), to the extent the periods are
not overlapping, less the sum of the periods calculated under Sec.
1.704. In this example, the period of adjustment pursuant to 35 U.S.C.
154(b)(1)(Sec. 1.703(b)) of 2,373 days overlaps entirely with the period
of adjustment pursuant to 35 U.S.C. 154(b)(1)(Sec. 1.703(a)) of 1,979
days. Consequently, 1,001 days (the sum of the periods in which
applicant failed to engage in reasonable efforts to conclude prosecution
(Sec. 1.704)) is deducted from 2,373 days, which leaves a term
adjustment of 1,372 days. As a result, the projected expiration date of
the patent is adjusted from January 1, 2021, to October 4, 2024.
Section 1.705 as proposed implements the provisions of 35 U.S.C.
154(b)(3) and (b)(4)(B).
Section 1.705(a) as proposed indicates that the notice of allowance
will include notification of any patent term adjustment under 35 U.S.C.
154(b) (35 U.S.C. 154(b)(3)(B)(i)).
Section 1.705(b) as proposed provides that any request for review or
reconsideration of the patent term adjustment indicated in the notice of
allowance (except as provided in Sec. 1.705(d)) and any request for
reinstatement of all or part of the term reduced pursuant to Sec.
1.704(b)(1) must be filed no later than payment of the issue fee but may
not be filed earlier than the date of mailing of the notice of
allowance. Section 1.705(b) as proposed provides that any such request
must be by way of an application for patent term adjustment accompanied
by the fee set forth in Sec. 1.18(e) and a statement of the facts
involved. Section 1.705(b) as proposed also provides that such statement
of facts must specify: (1) The basis or bases under Sec. 1.702 for the
adjustment; (2) the relevant dates as specified in Sec. 1.703(a) through
(e) for which an adjustment is sought and the adjustment as specified in
Sec. 1.703(f) to which the patent is entitled; (3) whether the patent is
subject to a terminal disclaimer and any expiration date specified in
the terminal disclaimer; and (4) any circumstances during the
prosecution of the application resulting in the patent that constitute a
failure to engage in reasonable efforts to conclude processing or
examination of such application as set forth in Sec. 1.704 (or that
there were no such circumstances). Since the Office must complete its
determination of patent term adjustment before proceeding to issue the
patent (35 U.S.C. 154(b)(3)(D)), the Office must require that such
application for patent term adjustment be filed within a non-extendable
time period and set forth with particularity why the Office's patent
term adjustment determination is not correct. In the absence of these
requirements, the issuance of the patent will be further delayed by a
protracted patent term adjustment determination proceeding.
Section 1.705(c) as proposed implements the provisions of 35 U.S.C.
154(b)(3)(C). Section 1.705(c) as proposed specifically provides that a
request for reinstatement of all or part of the time reduced pursuant to
Sec. 1.704(b)(1) for failing to reply to a rejection, objection,
argument, or other request within three months of the date of mailing of
the Office communication notifying the applicant of the rejection,
objection, argument, or other request must include: (1) the fee set
forth in Sec. 1.18(f); and (2) a showing to the satisfaction of the
Director that, in spite of all due care, the applicant was unable to
reply to the rejection, objection, argument, or other request within
three months of the date of mailing of the Office communication
notifying the applicant of the rejection, objection, argument, or other
request. Section 1.705(c) as proposed also provides that the Office
shall not grant any request for reinstatement for more than three
additional months for each reply beyond three months of the date of
mailing of the Office communication notifying the applicant of the
rejection, objection, argument, or other request (35 U.S.C.
154(b)(3)(C)).
Since the Office is obligated to provide a determination of patent
term adjustment under 35 U.S.C. 154(b) in the notice of allowance (i.e.,
before the actual patent issue date), the Office must project (or
estimate) the actual patent issue date and base its patent term
adjustment determination on that projection. Thus, Sec. 1.705(d) as
proposed provides for a request to change the period of patent term
adjustment in the event that the patent is issued on a date other than
the projected date of issue and this change necessitates a revision of
the patent term adjustment indicated in the notice of allowance. Section
1.705(d) specifically provides that if the patent is issued on a date
other than the projected date of issue and this change necessitates a
revision of the patent term adjustment indicated in the notice of
allowance, the patent will indicate the revised patent term adjustment.
Section 1.705(d) also provides that if the patent indicates a revised
patent term adjustment due to the patent being issued on a date other
than the projected date of issue, any request for reconsideration of the
patent term adjustment indicated in the patent must be filed within
thirty days of the date the patent issued and must comply with the
requirements of Sec. 1.705(b)(1) and Sec. 1.705(b)(2).
Section 1.705(e) as proposed provides that the periods set forth in
this section are not extendable. As discussed above, the Office must set
non-extendable time periods in Sec. 1.705 to avoid delay in the issuance
of the patent.
Section 1.705(f) as proposed implements the provisions of 35 U.S.C.
154(b)(4)(B), and provides that no submission or petition on behalf of a
third party concerning patent term adjustment under 35 U.S.C. 154(b)
will be considered by the Office, and that any such submission or
petition, will be returned to the third party, or otherwise disposed of,
at the convenience of the Office.
Classification
Regulatory Flexibility Act
The Chief Counsel for Regulation of the Department of Commerce certified
to the Chief Counsel for Advocacy, Small Business Administration, that
the changes proposed in this notice, if adopted, would not have a
significant impact on a substantial number of small entities (Regulatory
Flexibility Act, 5 U.S.C. 605(b)). This rulemaking implements the
provisions of Secs. 4401 and 4402 of the ``American Inventors Protection
Act of 1999.'' The changes proposed in this notice (if adopted) would
provide procedures for the Office's patent term adjustment determination
and for filing an application to request reconsideration of the Office's
patent term adjustment determination.
The Office mails a notice of allowance in roughly 160,000
applications each year. The Office's patent term adjustment
determination will be a calculation based upon time periods involving
the dates of various actions by the Office and the applicant during the
application process. Because of the number of actions by the Office and
the applicant during the application process, the Office anticipates
that there will be disagreement on at least one of these dates in
roughly fifteen percent of applications (24,000). Based upon the
percentage of applicants who are small entities (thirty percent), the
Office expects that 7,200 small entities will file an application
requesting reconsideration of a patent term adjustment determination
each year. Since a small entity applicant who exercises reasonable due
care or diligence should be able to reply to any Office action or notice
within three months, the Office does not anticipate that any small
entities will file a request for reinstatement of reduced patent term
adjustment (based upon a showing that the applicant was unable to reply
to an Office action or notice within three months in spite of all due
care).
Filing an application requesting reconsideration of a patent term
adjustment determination (as well as a request for reinstatement of
reduced patent term adjustment) is optional. To obtain any benefit from
an application requesting reconsideration of the Office's patent term
adjustment determination, the applicant must plan to pay the three
maintenance fees required by law (35 U.S.C. 41(b)) to maintain a patent
in force until the end of the non-adjusted patent term as specified in
35 U.S.C. 154. The current first, second, and third maintenance fees are
$415.00, $950.00, and $1,455.00, respectively. Since the fee ($200.00)
for filing an application requesting reconsideration of the Office's
patent term adjustment determination is less than one-tenth of the
combined cost of these three maintenance fees (and the fee ($450.00) for
filing a request for reinstatement of reduced patent term adjustment is
less than one-sixth of the combined cost of these three maintenance
fees), there will not be a significant economic impact on a substantial
number of small entities due to the procedures for requesting
reconsideration of the Office's patent term adjustment determination.
Executive Order 13132
This rulemaking does not contain policies with federalism implications
sufficient to warrant preparation of a Federalism Assessment under
Executive Order 13132 (August 4, 1999).
Executive Order 12866
This rulemaking has been determined to be not significant for purposes
of Executive Order 12866 (September 30, 1993).
Paperwork Reduction Act
This notice of proposed rulemaking involves information collection
requirements which are subject to review by the Office of Management and
Budget (OMB) under the Paperwork Reduction Act of 1995 (44 U.S.C. 3501
et seq.). The collection of information involved in this notice of
proposed rulemaking has been reviewed and previously approved by OMB
under OMB control number 0651-0020.
As required by the Paperwork Reduction Act of 1995 (44 U.S.C.
3507(d)), the Patent and Trademark Office has submitted an information
collection package to OMB for its review and approval of the proposed
information collections under OMB control number 0651-0020. The Patent
and Trademark Office is submitting this information collection to OMB
for its review and approval because this notice of proposed rulemaking
will add the request for reconsideration of a patent term adjustment
determination by the Patent and Trademark Office and the request for
reinstatement of reduced patent term adjustment (based upon a showing
that the applicant was unable to reply to an Office action or notice
within three months in spite of all due care) provided for in 35 U.S.C.
154(b)(3) to that collection.
The title, description, and respondent description of the
information collection is shown below with an estimate of the annual
reporting burdens. Included in this estimate is the time for reviewing
instructions, gathering, and maintaining the data needed, and completing
and reviewing the collection of information. The principal impact of the
changes in this notice of proposed rulemaking is to implement the
changes to Office practice necessitated by Sec. 4402 of the ``American
Inventors Protection Act of 1999'' (enacted into law by Sec. 1000(a)(9),
Division B, of Public Law 106-113).
OMB Number: 0651-0020.
Title: Patent Term Extension.
Form Numbers: None.
Type of Review: Approved through September of 2001.
Affected Public: Individuals or households, businesses or other
for-profit, not-for-profit institutions, farms, Federal Government, and
state, local, or tribal governments.
Estimated Number of Respondents: 26,857.
Estimated Time Per Response: 1.15 hour.
Estimated Total Annual Burden Hours: 30,902 hours.
Needs and Uses: The information supplied to the Patent and Trademark
Office by an applicant requesting reconsideration of a patent term
adjustment determination under 35 U.S.C. 154(b) (proposed Sec. 1.702 et
seq.) is used by the Patent and Trademark Office to determine whether
its determination of patent term adjustment under 35 U.S.C. 154(b) is
correct, and whether the applicant is entitled to reinstatement of
reduced patent term adjustment. The information supplied to the Patent
and Trademark Office by an applicant seeking a patent term extension
under 35 U.S.C. 156 (Sec. 1.710 et seq.) is used by the Patent and
Trademark Office, the Department of Health and Human Services, and the
Department of Agriculture to determine the eligibility of a patent for
extension and to determine the period of any such extension. The
applicant can apply for patent term and interim extensions, petition the
Patent and Trademark Office to review final eligibility decisions,
withdraw patent term applications, and declare his or her eligibility to
apply for a patent term extension.
Comments are invited on: (1) Whether the collection of information
is necessary for proper performance of the functions of the agency; (2)
the accuracy of the agency's estimate of the burden; (3) ways to enhance
the quality, utility, and clarity of the information to be collected;
and (4) ways to minimize the burden of the collection of information to
respondents.
Interested persons are requested to send comments regarding these
information collections, including suggestions for reducing this burden,
to Robert J. Spar, Director, Special Program Law Office, Patent and
Trademark Office, Washington, D.C. 20231, or to the Office of
Information and Regulatory Affairs of OMB, New Executive Office
Building, 725 17th Street, N.W., Room 10235, Washington, D.C. 20503,
Attention: Desk Officer for the Patent and Trademark Office.
Notwithstanding any other provision of law, no person is required to
respond to nor shall a person be subject to a penalty for failure to
comply with a collection of information subject to the requirements of
the Paperwork Reduction Act unless that collection of information
displays a currently valid OMB control number.
List of Subjects in 37 CFR Part 1
Administrative practice and procedure, Courts, Freedom of information,
Inventions and patents, Reporting and recordkeeping requirements, Small
businesses.
For the reasons set forth in the preamble, 37 CFR Part 1 is proposed to
be amended as follows:
PART 1--RULES OF PRACTICE IN PATENT CASES
1. The authority citation for 37 CFR Part 1 is revised to read as
follows:
Authority: 35 U.S.C. 2(b)(2), unless otherwise noted.
2. Section 1.18 is amended by revising the section heading, adding and
reserving paragraph (d), and adding paragraphs (e) and (f) to read as
follows:
Sec. 1.18 Patent post allowance (including issue) fees.
* * * * *
(d) [Reserved]
(e) For filing an application for patent term adjustment under Sec.
1.705--$200.00
(f) For filing a request for reinstatement of all or part of the
term reduced pursuant to Sec. 1.704(b) in an application for patent term
adjustment under Sec. 1.705--$450.00
Subpart F--Adjustment and Extension of Patent Term
3. The heading of subpart F is revised to read as set forth above.
4. An undesignated center heading is added to Subpart F Sec. 1.701 to
read as follows:
Adjustment of Patent Term due to Examination Delay
5. Section 1.701 is amended by revising the section heading and
adding paragraph (e) to read as follows:
Sec. 1.701 Extension of patent term due to examination delay under the
Uruguay Round Agreements Act (original applications, other than designs,
filed on or after June 8, 1995, and before May 29, 2000).
* * * * *
(e) The provisions of this section apply only to original patents,
except for design patents, issued on applications filed on or after June
8, 1995.
6. Sections 1.702 through 1.705 are added to read as follows:
Sec. 1.702 Grounds for adjustment of patent term due to examination
delay under the Patent Term Guarantee Act of 1999 (original
applications, other than designs, filed on or after May 29, 2000).
(a) Failure to take certain actions within specified time frames.
Subject to the provisions of 35 U.S.C. 154(b) and this subpart, the term
of an original patent shall be adjusted if the issuance of the patent
was delayed due to the failure of the Office to:
(1) Mail at least one of a notification under 35 U.S.C. 132 or a
notice of allowance under 35 U.S.C. 151 not later than fourteen months
after the date on which the application was filed under 35 U.S.C. 111(a)
or fulfilled the requirements of 35 U.S.C. 371;
(2) Respond to a reply under 35 U.S.C. 132 or to an appeal taken
under 35 U.S.C. 134 not later than four months after the date on which
the reply was filed or the appeal was taken;
(3) Act on an application not later than four months after the date
of a decision by the Board of Patent Appeals and Interferences under 35
U.S.C. 134 or 135 or a decision by a Federal court under 35 U.S.C. 141,
145, or 146 where allowable claims remain in the application; or
(4) Issue a patent not later than four months after the date on
which the issue fee was paid under 35 U.S.C. 151 and all outstanding
requirements were satisfied.
(b) Failure to issue a patent within three years of the actual
filing date of the application. Subject to the provisions of 35 U.S.C.
154(b) and this subpart, the term of an original patent shall be
adjusted if the issuance of the patent was delayed due to the failure of
the Office to issue a patent within three years after the actual filing
date of the application, not including:
(1) Any time consumed by continued examination of the application
under 35 U.S.C. 132(b);
(2) Any time consumed by an interference proceeding under 35 U.S.C.
135(a);
(3) Any time consumed by the imposition of a secrecy order under 35
U.S.C. 181;
(4) Any time consumed by review by the Board of Patent Appeals and
Interferences or a Federal court; or
(5) Any delay in the processing of the application by the Office
that was requested by the applicant.
(c) Delays caused by interference proceedings. Subject to the
provisions of 35 U.S.C. 154(b) and this subpart, the term of an original
patent shall be adjusted if the issuance of the patent was delayed due
to interference proceedings under 35 U.S.C. 135(a).
(d) Delays caused by secrecy order. Subject to the provisions of 35
U.S.C. 154(b) and this subpart, the term of an original patent shall be
adjusted if the issuance of the patent was delayed due to the
application being placed under a secrecy order under 35 U.S.C. 181.
(e) Delays caused by successful appellate review. Subject to the
provisions of 35 U.S.C. 154(b) and this subpart, the term of an original
patent shall be adjusted if the issuance of the patent was delayed due
to review by the Board of Patent Appeals and Interferences under 35
U.S.C. 134 or by a Federal court under 35 U.S.C. 141 or 145, if the
patent was issued pursuant to decision reversing an adverse
determination of patentability.
(f) The provisions of this section and Secs. 1.703 through 1.705
apply only to original applications, except applications for a design
patent, filed on or after May 29, 2000, and patents issued on such
applications.
Sec. 1.703 Period of adjustment of patent term due to examination delay.
(a) The period of adjustment under Sec. 1.702(a) is the sum of the
following periods, to the extent that the periods are not overlapping:
(1) The number of days, if any, in the period beginning on the date
fourteen months after the date on which the application was filed under
35 U.S.C. 111(a) or fulfilled the requirements of 35 U.S.C. 371 and
ending on the date of mailing of either an action under 35 U.S.C. 132,
or a notice of allowance under 35 U.S.C. 151, whichever occurs first;
(2) The number of days, if any, in the period beginning on the date
four months after the date a reply under Sec. 1.111 was filed and ending
on the date of mailing of an action under 35 U.S.C. 132, or a notice of
allowance under 35 U.S.C. 151, whichever occurs first;
(3) The number of days, if any, in the period beginning on the date
four months after the date a reply in compliance with Sec. 1.113 was
filed and ending on the date of mailing of an action under 35 U.S.C.
132, or a notice of allowance under 35 U.S.C. 151, whichever occurs
first;
(4) The number of days, if any, in the period beginning on the date
four months after the date a notice of appeal to the Board of Patent
Appeals and Interferences under 35 U.S.C. 134 and Sec. 1.191 was filed
and ending on the date of mailing of an examiner's answer under Sec.
1.193, an action under 35 U.S.C. 132, or a notice of allowance under 35
U.S.C. 151, whichever occurs first;
(5) The number of days, if any, in the period beginning on the date
four months after the date of a final decision by the Board of Patent
Appeals and Interferences or by a Federal court in an appeal under 35
U.S.C. 141 or a civil action under 35 U.S.C. 145 or 146 in an
application containing allowable claims and ending on the date of
mailing of either an action under 35 U.S.C. 132 or a notice of allowance
under 35 U.S.C. 151, whichever occurs first; and
(6) The number of days, if any, in the period beginning on the date
four months after the date the issue fee was paid and all outstanding
requirements were satisfied and ending on the date a patent was issued.
(b) The period of adjustment under Sec. 1.702(b) is the number of
days, if any, in the period beginning on the date three years after the
actual filing date of the application and ending on the date a patent
was issued, but not including the sum of the following periods:
(1) The number of days, if any, in the period beginning on the date
on which a request for continued examination of the application under 35
U.S.C. 132(b) was filed and ending on the date the patent was issued;
(2)(i) The number of days, if any, in the period beginning on the
date an interference was declared or redeclared to involve the
application in the interference and ending on the date that the
interference was terminated with respect to the application; and
(ii) The number of days, if any, in the period beginning on the date
prosecution in the application was suspended by the Office due to
interference proceedings under 35 U.S.C. 135(a) not involving the
application and ending on the date of the termination of the suspension;
(3)(i) The number of days, if any, the application was maintained in
a sealed condition under 35 U.S.C. 181;
(ii) The number of days, if any, in the period beginning on the date
of mailing of an examiner's answer under Sec. 1.193 in the application
under secrecy order and ending on the date the secrecy order was removed;
(iii) The number of days, if any, in the period beginning on the
date applicant was notified that an interference would be declared but
for the secrecy order and ending on the date the secrecy order was
removed; and
(iv) The number of days, if any, in the period beginning on the date
of notification under Sec. 5.3(c) of this chapter and ending on the date
of mailing of the notice of allowance under Sec. 1.311; and,
(4) The number of days, if any, in the period beginning on the date
on which a notice of appeal to the Board of Patent Appeals and
Interferences was filed under 35 U.S.C. 134 and Sec. 1.191 and ending on
the date of a final decision by the Board of Patent Appeals and
Interferences or by a Federal court in an appeal under 35 U.S.C. 141 or
a civil action under 35 U.S.C. 145.
(c) The period of adjustment under Sec. 1.702(c) is the sum of the
following periods, to the extent that the periods are not overlapping:
(1) The number of days, if any, in the period beginning on the date
an interference was declared or redeclared to involve the application in
the interference and ending on the date that the interference was
terminated with respect to the application; and
(2) The number of days, if any, in the period beginning on the date
prosecution in the application was suspended by the Office due to
interference proceedings under 35 U.S.C. 135(a) not involving the
application and ending on the date of the termination of the suspension.
(d) The period of adjustment under Sec. 1.702(d) is the sum of the
following periods, to the extent that the periods are not overlapping:
(1) The number of days, if any, the application was maintained in a
sealed condition under 35 U.S.C. 181;
(2) The number of days, if any, in the period beginning on the date
of mailing of an examiner's answer under Sec. 1.193 in the application
under secrecy order and ending on the date the secrecy order was removed;
(3) The number of days, if any, in the period beginning on the date
applicant was notified that an interference would be declared but for
the secrecy order and ending on the date the secrecy order was removed;
and
(4) The number of days, if any, in the period beginning on the date
of notification under Sec. 5.3(c) of this chapter and ending on the date
of mailing of the notice of allowance under Sec. 1.311.
(e) The period of adjustment under Sec. 1.702(e) is the sum of the
number of days, if any, in the period beginning on the date on which a
notice of appeal to the Board of Patent Appeals and Interferences was
filed under 35 U.S.C. 134 and Sec. 1.191 and ending on the date of a
final decision in favor of the applicant by the Board of Patent Appeals
and Interferences or by a Federal court in an appeal under 35 U.S.C. 141
or a civil action under 35 U.S.C. 145.
(f) The adjustment will run from the expiration date of the patent
as set forth in 35 U.S.C. 154(a)(2). To the extent that periods of
adjustment attributable to the grounds specified in Sec. 1.702 overlap,
the period of adjustment granted under this section shall not exceed the
actual number of days the issuance of the patent was delayed. The term
of a patent entitled to adjustment under Sec. 1.702 and this section
shall be adjusted for the sum of the periods calculated under paragraphs
(a) through (e) of this section, to the extent that such periods are not
overlapping, less the sum of the periods calculated under Sec. 1.704.
The date indicated on any certificate of mailing or transmission under
Sec. 1.8 shall not be taken into account in this calculation.
(g) No patent the term of which has been disclaimed beyond
specified date shall be adjusted under Sec. 1.702 and this section
beyond the expiration date specified in the disclaimer.
Sec. 1.704 Reduction of period of adjustment of patent term.
(a) The period of adjustment of the term of a patent under Sec. 1.703(a)
through (e) shall be reduced by a period equal to the period of time
during which the applicant failed to engage in reasonable efforts to
conclude prosecution (processing or examination) of the application.
(b) With respect to the ground for adjustment set forth in Sec. 1.702(a)
through (e), and in particular the ground of adjustment set forth in
Sec. 1.702(b), an applicant shall be deemed to have failed to engage in
reasonable efforts to conclude processing or examination of the
application for the cumulative total of any periods of time in excess of
three months that are taken to reply to any notice or action by the
Office making any rejection, objection, argument, or other request,
measuring such three-month period from the date the notice or action was
mailed or given to the applicant, in which case the period of adjustment
set forth in Sec. 1.703 shall be reduced by the number of days, if any,
beginning on the date three months after the date of mailing of the
Office communication notifying the applicant of the rejection,
objection, argument, or other request and ending on the date the reply
was filed.
(c) Circumstances that constitute a failure of the applicant to engage
in reasonable efforts to conclude processing or examination of the
application also include the following circumstances, which will result
in the following reduction of the period of adjustment set forth in Sec.
1.703 to the extent that the periods are not overlapping:
(1) Suspension of action under Sec. 1.103 at the applicant's request, in
which case the period of adjustment set forth in Sec. 1.703 shall be
reduced by the number of days, if any, beginning on the date a request
for suspension of action under Sec. 1.103 was filed and ending on the
date of the termination of the suspension;
(2) Deferral of issuance of a patent under Sec. 1.314, in which case the
period of adjustment set forth in Sec. 1.703 shall be reduced by the
number of days, if any, beginning on the date a request for deferral of
issuance of a patent under Sec. 1.314 was filed and ending on the date
the patent was issued;
(3) Abandonment of the application or late payment of the issue fee, in
which case the period of adjustment set forth in Sec. 1.703 shall be
reduced by the number of days, if any, beginning on the date of
abandonment or the date after the day the issue fee was due and ending
on the date of mailing of the decision reviving the application or
accepting late payment of the issue fee;
(4) Failure to file a petition to withdraw the holding of abandonment or
to revive an application within two months from the mailing date of a
notice of abandonment, in which case the period of adjustment set forth
in Sec. 1.703 shall be reduced by the number of days, if any, beginning
on the date two months from the mailing date of a notice of abandonment
and ending on the date a petition to withdraw the holding of abandonment
or to revive the application was filed;
(5) Conversion of a provisional application under 35 U.S.C. 111(b) to a
nonprovisional application under 35 U.S.C. 111(a) pursuant to 35 U.S.C.
111(b)(5), in which case the period of adjustment set forth in Sec.
1.703 shall be reduced by the number of days, if any, beginning on the
date the application was filed under 35 U.S.C. 111(b) and ending on the
date a request in compliance with Sec. 1.53(c)(3) to convert the
provisional application into a nonprovisional application was filed;
(6) Failure to file the basic filing fee (Sec. 1.16(a) or (g)), any
English language translation required by Sec. 1.52(d), or an oath or
declaration (Sec. 1.63) executed by all of the inventors in an
application under 35 U.S.C. 111(a), in which case the period of
adjustment set forth in Sec. 1.703 shall be reduced by the number of
days, if any, beginning on the date the application was filed and ending
on the later of the date the applicant supplied the basic filing fee
(Sec. 1.16), supplied any English language translation required by Sec.
1.52(d), and either supplied an oath or declaration (Sec. 1.63) executed
in compliance with Sec. 1.64 or, if the oath or declaration was not
executed by all of the inventors, the earliest of date the application
was accorded status under Sec. 1.47 or four months after a grantable
petition under Sec. 1.47 was filed;
(7) Failure to fulfill the requirements of 35 U.S.C. 371(c) and Sec.
1.494 or Sec. 1.495 in an international application, in which case the
period of adjustment set forth in Sec. 1.703 shall be reduced by the
number of days, if any, beginning on the date the application was filed
under 35 U.S.C. 363 and the later of the date the application fulfilled
the requirements of 35 U.S.C. 371(c) and Sec. 1.494 or Sec. 1.495 or, if
the oath or declaration (Sec. 1.497) is not executed by all of the
inventors, the earliest of date the application was accorded status
under Sec. 1.47 or four months after a grantable petition under Sec.
1.47 was filed;
(8) Failure to request the national stage of processing in an
international application if the application fulfills the requirements
of 35 U.S.C. 371(c) and Sec. 1.494 or Sec. 1.495 before the expiration
of the applicable time period set forth in Sec. 1.494(b) or Sec.
1.495(b), in which case the period of adjustment set forth in Sec. 1.703
shall be reduced by the number of days, if any, beginning on the date
the application was filed under 35 U.S.C. 363 and ending on the earlier
of date of expiration of the applicable time period in Sec. 1.494(b) or
Sec. 1.495(b) or the date on which an express request for national stage
of processing is filed;
(9) Failure to file an application with a specification on papers in
compliance with Sec. 1.52 and having a title and abstract in compliance
with Sec. 1.72, drawings in compliance with Sec. 1.84 (if applicable),
and a sequence listing in compliance with Secs. 1.821 through 1.825 (if
applicable), in which case the period of adjustment set forth in Sec.
1.703 shall be reduced by the number of days, if any, beginning on the
filing date of the application and ending on the date the application
contains a specification on papers in compliance with Sec. 1.52 and
having an abstract (Sec. 1.72(b)), drawings in compliance with Sec. 1.84
(if applicable), and a sequence listing in compliance with Secs. 1.821
through 1.825 (if applicable);
(10) Submission of a preliminary amendment or other preliminary paper
less than one month before the mailing of an Office action under 35
U.S.C. 132 or notice of allowance under 35 U.S.C. 151 that requires the
mailing of a supplemental Office action or notice of allowance, in which
case the period of adjustment set forth in Sec. 1.703 shall be reduced
by the number of days, if any, beginning on the mailing date of the
original Office action or notice of allowance and ending on the mailing
date of the supplemental Office action or notice of allowance;
(11) Submission of a reply having an omission under Sec. 1.135(c), in
which case the period of adjustment set forth in Sec. 1.703 shall be
reduced by the number of days, if any, beginning on the date the reply
having an omission was filed and ending on the date that the omission
was filed;
(12) Submission of a supplemental reply or other paper after reply has
been filed, in which case the period of adjustment set forth in Sec.
1.703 shall be reduced by the number of days, if any, beginning on the
date the initial reply was filed and ending on the date that the
supplemental reply or other such paper was filed;
(13) Failure to file an appeal brief (and brief fee) in compliance with
Sec. 1.192 with a notice of appeal to the Board of Patent Appeals and
Interferences under 35 U.S.C. 134 and Sec. 1.191, in which case the
period of adjustment set forth in Sec. 1.703 shall be reduced by the
number of days, if any, beginning on the date a notice of appeal to the
Board of Patent Appeals and Interferences under 35 U.S.C. 134 and Sec.
1.191 was filed and ending on the day an appeal brief in compliance with
Sec. 1.192 was filed, or, if no appeal brief under Sec. 1.192 is filed,
ending on the day an amendment in compliance with Sec. 1.113 was filed;
(14) Submission of an amendment or other paper after a decision by the
Board of Patent Appeals and Interferences, other than a decision
designated as containing a new ground of rejection under Sec. 1.196(b)
or statement under Sec. 1.196(c), or a decision by a Federal court less
than one month before the mailing of an Office action under 35 U.S.C.
132 or notice of allowance under 35 U.S.C. 151 that requires the mailing
of a supplemental Office action or supplemental notice of allowance, in
which case the period of adjustment set forth in Sec. 1.703 shall be
reduced by the number of days, if any, beginning on the mailing date of
the original Office action or notice of allowance and ending on the
mailing date of the supplemental Office action or notice of allowance;
(15) Submission of an amendment under Sec. 1.312 or other paper after a
notice of allowance has been given or mailed, in which case the period
of adjustment set forth in Sec. 1.703 shall be reduced by the lesser of:
(i) The number of days, if any, beginning on the date the amendment
under Sec. 1.312 or other paper was filed and ending on the mailing date
of the Office action or notice in response to the amendment under Sec.
1.312 or such other paper; or
(ii) Four months; and
(16) Further prosecution via a continuing application, in which case the
period of adjustment set forth in Sec. 1.703 shall not include any
period that is prior to the actual filing date of the application that
resulted in the patent.
Sec. 1.705 Patent term adjustment determination.
(a) The notice of allowance will include notification of any patent term
adjustment under 35 U.S.C. 154(b).
(b) Any request for reconsideration of the patent term adjustment
indicated in the notice of allowance, except as provided in paragraph
(d) of this section, and any request for reinstatement of all or part of
the term reduced pursuant to Sec. 1.704(b) must be by way of an
application for patent term adjustment. An application for patent term
adjustment under this section must be filed no later than payment of the
issue fee but may not be filed earlier than the date of mailing of the
notice of allowance. An application for patent term adjustment under
this section must be accompanied by:
(1) The fee set forth in Sec. 1.18(e); and
(2) A statement of the facts involved, specifying:
(i) The correct patent term adjustment and the basis or bases under Sec.
1.702 for the adjustment;
(ii) The relevant dates as specified in Sec. 1.703(a) through (e) for
which an adjustment is sought and the adjustment as specified in Sec.
1.703(f) to which the patent is entitled;
(iii) Whether the patent is subject to a terminal disclaimer and any
expiration date specified in the terminal disclaimer; and
(iv)(A) Any circumstances during the prosecution of the application
resulting in the patent that constitute a failure to engage in
reasonable efforts to conclude processing or examination of such
application as set forth in Sec. 1.704; or
(B) That there were no circumstances constituting a failure to engage in
reasonable efforts to conclude processing or examination of such
application as set forth in Sec. 1.704.
(c) Any application for patent term adjustment under this section that
requests reinstatement of all or part of the term reduced pursuant to
Sec. 1.704(b) for failing to reply to a rejection, objection, argument,
or other request within three months of the date of mailing of the
Office communication notifying the applicant of the rejection,
objection, argument, or other request must also be accompanied by:
(1) The fee set forth in Sec. 1.18(f); and
(2) A showing to the satisfaction of the Director that, in spite of all
due care, the applicant was unable to reply to the rejection, objection,
argument, or other request within three months of the date of mailing of
the Office communication notifying the applicant of the rejection,
objection, argument, or other request. The Office shall not grant any
request for reinstatement for more than three additional months for each
reply beyond three months of the date of mailing of the Office
communication notifying the applicant of the rejection, objection,
argument, or other request.
(d) If the patent is issued on a date other than the projected date of
issue and this change necessitates a revision of the patent term
adjustment indicated in the notice of allowance, the patent will
indicate the revised patent term adjustment. If the patent indicates a
revised patent term adjustment due to the patent being issued on a date
other than the projected date of issue, any request for reconsideration
of the patent term adjustment indicated in the patent must be filed
within thirty days of the date the patent issued and must comply with
the requirements of paragraphs (b)(1) and (b)(2) of this section.
(e) The periods set forth in this section are not extendable.
(f) No submission or petition on behalf of a third party concerning
patent term adjustment under 35 U.S.C. 154(b) will be considered by the
Office. Any such submission or petition will be returned to the third
party, or otherwise disposed of, at the convenience of the Office.
7. A undesignated center heading is added to Subpart F before Sec. 1.710
to read as follows:
Extension of Patent Term due to Regulatory Review
Dated: March 24, 2000 Q. TODD DICKINSON
Assistant Secretary of Commerce
and Commissioner
of Patents and Trademarks
[FR Doc. 00-7938 Filed 3-30-00; 8:45 am]
BILLING CODE 3510-16-P