DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
37 CFR Part 1
RIN 0651-AB06
Changes to Implement Patent Term Adjustment under
Twenty-Year Patent Term
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Final rule.
SUMMARY: The United States Patent and Trademark Office (Office) is
revising the rules of practice in patent cases to implement certain
provisions 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: EFFECTIVE DATES: Sections 1.702 through 1.705 and the amendment
to 1.701 are effective Oct. 18, 2000. The amendment to 1.18 is
effective Nov. 17, 2000.
APPLICABILITY DATE: Section 1.701 applies to original (non-reissue)
patents issued on applications (other than for a design patent) filed on
or after June 8, 1995, and before May 29, 2000. Sections 1.702 through
1.705 apply to original applications (other than for a design patent)
filed on or after May 29, 2000, and to patents issued on such
applications.
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
1000(a)(9), Division B, of Pub. L. 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 final rule changes the
rules of practice to implement the provisions of 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 original (non-reissue) 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(a)(1) of the Uruguay Round Agreements Act (Pub. L. 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). Pub. L. 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
after a decision by the Board of Patent Appeals and Interferences or a
Federal court where at least one allowable claim remains in the
application; 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)).
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
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 an 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 an 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 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 for 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 532(a)(1) of Pub. L. 103-465 and 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 4402 of the American
Inventors Protection Act of 1999.
The filing date of a continued prosecution application (CPA) under
1.53(d) is the date that the request for CPA is filed ( 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 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
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
4402 of the American Inventors Protection Act of 1999, an applicant
need only file a CPA under 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 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 the filing date of the CPA (i.e., before May 29, 2000).
The Office published a notice proposing changes to the rules of practice
to implement the provisions of 4402 of the American Inventors
Protection Act of 1999. See Changes to Implement Patent Term Adjustment
Under Twenty-Year Patent Term, Notice of Proposed Rulemaking, 65 FR
17215 (Mar. 31, 2000), 1233 Off. Gaz. Pat. Office 109 (Apr. 25, 2000)
(notice of proposed rulemaking). This final rule adopts changes to the
rules of practice to implement the provisions of 4402 of the American
Inventors Protection Act of 1999.
Section 4732 of the American Inventors Protection Act of 1999 changed
(among other things) the title "Commissioner" to "Director." The title
"Commissioner," however, is not being changed to "Director" where it
appears in the rules of practice involved in this final rule because
legislation is pending before Congress that (if enacted) would restore
the former title "Commissioner." See Intellectual Property Technical
Amendments Act of 2000, H.R. 4870, 106th Cong. (2000).
Discussion of Specific Rules
Sections 1.18(e) and (f) are added to set forth the fees for filing an
application for patent term adjustment under 1.705, and for filing a
request for reinstatement of all or part of the term reduced pursuant to
1.704(b) in an application for patent term adjustment under 1.705.
The fees in 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 1.705, and for processing and evaluating
a request under 35 U.S.C. 154(b)(3)(C) for reinstatement of the term
reduced under 35 U.S.C. 154(b)(2)(C), respectively.See 35 U.S.C. 41(d).
Section 1.18(e) is added to provide a $200 fee for filing an application
for patent term adjustment under 1.705. An application for patent
term adjustment under 1.705(b) requires the Office to calculate the
applicable patent term adjustment to determine the correct patent term
adjustment. Handling such applications for patent term adjustment will
involve careful record review and date calculation, but not a great deal
of legal analysis. The Office expects them to be as burdensome as
petitions of medium level complexity. Based upon activity-based cost
estimates (using the costs of treating similar petitions, that is,
petitions of medium level burden), a $200 fee was determined to be the
appropriate fee amount for cost-recovery as provided for in 35 U.S.C.
41(d).
Section 1.18(f) is added to provide a $400 fee for filing a request for
reinstatement of all or part of the term reduced pursuant to 1.704(b)
in an application for patent term adjustment under 1.705. The request
for reinstatement provided for in 1.705(c) requires the Office to
evaluate the merits of the applicant's showing that at least one delay
occurred in spite of all due care. Evaluating such "due care" showings
is expected to be as burdensome as evaluating the "unavoidable" delay
petitions provided for in 1.137(a) and 1.378(b), which are some of
the most burdensome petitions. Thus, based upon activity-based cost
estimates (using the costs of treating "unavoidable" delay petitions), a
$400 fee was determined to be the appropriate fee amount for
cost-recovery as provided for in 35 U.S.C. 41(d).
The Office initially proposed a $450 fee for filing a request for
reinstatement of all or part of the term reduced pursuant to 1.704(b)
in an application for patent term adjustment under 1.705. The Office,
however, has since further refined its cost estimates for processing and
evaluating such requests for reinstatement and has determined that $400
is the appropriate fee amount for cost-recovery as provided for in 35
U.S.C. 41(d).
Subpart F of 37 CFR Part 1 is amended to include a first undesignated
center heading to read "ADJUSTMENT OF PATENT TERM DUE TO EXAMINATION
DELAY" followed by an amended 1.701 and newly added 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 1.710 et seq.
concerning patent term extension under 35 U.S.C. 156.
Section 1.701 is amended by revising its heading to indicate that its
provisions concern the patent term extension provisions of the Uruguay
Round Agreements Act (Pub. L. 103- 465), and to add a paragraph (e) to
specify that the provisions of 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 532(a)(1) of Pub. L. 103-465 and 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
4402 of the American Inventors Protection Act of 1999 and 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 added to set forth the bases for patent term adjustment
under 35 U.S.C. 154(b)(1). Section 1.702(a) 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) 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)
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) 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) 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) provides
that the provisions of 1.702 through 1.705 apply only to original
(i.e., non-reissue) applications, except applications for a design
patent, filed on or after May 29, 2000, and patents issued on such
applications.
Section 1.703 specifies the period of adjustment if a patent is entitled
to patent term adjustment under 35 U.S.C. 154(b)(1) and 1.702. When a
period is indicated (in 1.703 or 1.704) as "beginning" on a
particular day, that day is included in the period, in that such day is
"day one" of the period and not "day zero." For example, a period
beginning on April 1 and ending on April 10 is ten (and not nine) days
in length.
35 U.S.C. 154(b)(1)(A) and (B) provide for an adjustment of one day for
each day after the end of the period set forth in 35 U.S.C.
154(b)(1)(A)(i), (ii), (iii), (iv), and (B) until the prescribed action
is taken, whereas 35 U.S.C. 154(b)(1)(C) provides for an adjustment of
one day for each day of the pendency of the proceeding, order, or review
prescribed in 35 U.S.C. 154(b)(1)(C)(i) through (iii). Therefore, the
end of the period set forth in 1.703(a) and 1.703(b) (which
correspond to 35 U.S.C. 154(b)(1)(A) and (B)) is "day zero" (not "day
one") as to the period of adjustment, whereas the first day of the
proceeding, order, or review set forth in 1.703(c), 1.703(d), and
1.703(e) (which correspond to 35 U.S.C. 154(b)(1)(C)(i) through (iii))
is "day one" of the period of adjustment.
Section 1.703(a) pertains to 35 U.S.C. 154(b)(1)(A) and indicates that
the period of adjustment under 1.702(a) is the sum of the periods
specified in 1.703(a)(1) through 1.703(a)(6).
Section 1.703(a)(1) pertains to the provisions of 35 U.S.C.
154(b)(1)(A)(i). Section 1.703(a)(1) specifies that the period is the
number of days, if any, beginning on the date after the day that is
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 in an
international application 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, a requirement for information
under 1.105, an action under Ex parte Quayle, 1935 Comm'r Dec. 11
(1935), and a notice of allowability (PTOL-37) are each an action issued
as a result of the examination conducted pursuant to 35 U.S.C. 131. As
such, each of these Office actions is a notification under 35 U.S.C.
132. Office notices and letters issued as part of the pre-examination
processing of an application are not notices issued as a result of an
examination conducted pursuant to 35 U.S.C. 131, and thus are not
notifications under 35 U.S.C. 132. Examples of such notices are: a
Notice of Incomplete Nonprovisional Application (PTO-1123), a Notice of
Omitted Item(s) in a Nonprovisional Application (PTO-1669), a Notice to
File Missing Parts of Application (PTO-1533), a Notice of Informal
Application (PTO-152), a Notice to File Corrected Application Papers
Filing Date Granted (PTO-1660), or a Notice to Comply with Requirements
for Patent Applications Containing Nucleotide Sequence and/or Amino Acid
Sequence Disclosures (PTO-1661).
Section 1.703(a)(2) pertains to the provisions of 35 U.S.C.
154(b)(1)(A)(ii). Section 1.703(a)(2) specifies that the period is the
number of days, if any, beginning on the day after the date that is four
months after the date a reply under 1.111 was filed 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.
Section 1.703(a)(3) also pertains to the provisions of 35 U.S.C.
154(b)(1)(A)(ii). Section 1.703(a)(3) specifies that the period is the
number of days, if any, beginning on the day after the date that is four
months after the date a reply in compliance with 1.113(c) was filed
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. A reply under 1.113 is a reply to a final Office action, and a
reply in compliance with 1.113 is a reply that cancels all of the
rejected claims and removes all outstanding objections and requirements
or otherwise places the application in condition for allowance. Any
amendment after final that does not cancel all of the rejected claims
and remove all outstanding objections and requirements or otherwise
place the application in condition for allowance is not a reply in
compliance with 1.113(c).
Section 1.703(a)(4) also pertains to the provisions of 35 U.S.C.
154(b)(1)(A)(ii). Section 1.703(a)(4) specifies that the period is the
number of days, if any, beginning on the day after the date that is four
months after the date an appeal brief in compliance with 1.192 was
filed and ending on the mailing date of any of an examiner's answer
under 1.193, an action under 35 U.S.C. 132, or a notice of allowance
under 35 U.S.C. 151, whichever occurs first. As discussed below, the
phrase "the date on which" an "appeal was taken" in 35 U.S.C.
154(b)(1)(A)(ii) means the date on which an appeal brief (and not a
notice of appeal) was filed. The phrase "appeal brief in compliance with
1.192" requires that:(1) the appeal brief fee ( 1.17(c)) be paid (
1.192(a)); and (2) the appeal brief complies with 1.192(c)(1)
through (c)(9).
Section 1.703(a)(5) pertains to the provisions of 35 U.S.C.
154(b)(1)(A)(iii). Section 1.703(a)(5) specifies that the period is the
number of days, if any, beginning on the day after the date that is 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, where at least one
allowable claim remains in the application 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.
For a Board of Patent Appeals and Interferences decision to be a
"decision by the Board of Patent Appeals and Interferences under [35
U.S.C.] 134" within the meaning of 35 U.S.C. 154(b)(1)(A)(iii) (and
1.703(a)(5)), the decision must sustain or reverse the rejection(s) of
the claim(s) on appeal. For a Board of Patent Appeals and Interferences
decision to be a "decision by the Board of Patent Appeals and
Interferences under [35 U.S.C.] 135" within the meaning of 35 U.S.C.
154(b)(1)(A)(iii) (and 1.703(a)(5)), the decision must include a
decision on the patentability of the claims or priority of invention. A
remand or other administrative order by the Board of Patent Appeals and
Interferences (even if by a merits panel) is not a "decision" within the
meaning of 35 U.S.C. 154(b)(1)(A)(iii) (and 1.703(a)(5)).
The phrase "final decision" in 1.703(a)(5) means that: (1) the
decision is the last decision in the review by the Board of Patent
Appeals and Interferences (or by a Federal court); and (2) the decision
does not require further action by the applicant to avoid termination of
proceedings as to the rejected claims. Thus, a Board of Patent Appeals
and Interferences decision containing a new ground of rejection under
1.196(b) requires action by the applicant to avoid termination of
proceedings as to the rejected claims and is thus not considered a
"final decision" for purposes of 1.703(a)(5). The phrase "final
decision," however, does not require that the decision be final for
purposes of judicial review (e.g., a Board of Patent Appeals and
Interferences decision reversing the rejection of all of the claims on
appeal is not "final" for purposes of judicial review, but (absent a
subsequent decision by the Board of Patent Appeals and Interferences) is
a "final decision" for purposes of 1.703(a)(5)).
The phrase "allowable claims remain in the application" for purposes of
35 U.S.C. 154(b)(1)(A)(iii) means that after the decision there is at
least one pending claim (for purposes of statutory construction, "words
importing the plural include the singular" (1 U.S.C. 1)) that is not
withdrawn from consideration and is not subject to a rejection,
objection, or other requirement. This applies in the following
situations: (1) at least one claim is allowable (not merely objected to)
at the time the examiner's answer is mailed and is not canceled before,
or made subject to a rejection as a result of, the appellate review; or
(2) when all of the rejections applied to at least one claim are
reversed, and such claim is not made subject to a rejection, as a result
of the appellate review. For example:
(1) If claims 1 and 2 (both independent) are pending, the decision
affirms the rejection of claim 1, and claim 2 was indicated as allowable
prior to the appeal, "allowable claims remain in the application" for
purposes of 35 U.S.C. 154(b)(1)(A)(iii).
(2) If claims 1 and 2 are pending, the decision affirms the rejection
of claim 1, and claim 2 was objected to by the examiner prior to the
appeal as being allowable except for its dependency from claim 1,
"allowable claims" do not "remain in the application" for purposes of 35
U.S.C. 154(b)(1)(A)(iii) (claim 2 is not allowable because there is an
outstanding objection to it).
(3) If claims 1 and 2 are pending, the decision affirms the rejection
of claim 1 and reverses the rejection of claim 2, "allowable claims
remain in the application" for purposes of 35 U.S.C. 154(b)(1)(A)(iii)
(claim 2 is "allowable" within the meaning of 1.703(a)(5) because
there is no outstanding objection or requirement as to it until the
examiner issues a notice under section 1214.06, paragraph (I)(B) of the
Manual of Patent Examining Procedure (7th ed.1998) (Rev. 1, Feb. 2000)
(MPEP)).
Section 1.703(a)(6) pertains to the provisions of 35
U.S.C. 154(b)(1)(A)(iv). Section 1.703(a)(6) specifies that the period
is the number of days, if any, beginning on the day after the date that
is four months after the date the issue fee was paid and all outstanding
requirements were satisfied and ending on the date the patent was
issued. The date the issue fee was paid and all outstanding requirements
were satisfied is the later of the date the issue fee was paid or the
date all outstanding requirements were satisfied. If prosecution in an
application is reopened after allowance (see MPEP 1308), all outstanding
requirements are not satisfied until the application is again in
condition for allowance as indicated by the issuance of a new notice of
allowance under 35 U.S.C. 151 (see MPEP 1308).
Section 1.703(b) pertains to the provisions of 35 U.S.C. 154(b)(1)(B).
Section 1.703(b) indicates that the period of adjustment under
1.702(b) is the number of days, if any, in the period beginning on the
day after the date that is three years after the actual filing date of
the application and ending on the date a patent was issued. Section
1.703(b) 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)
specifically provides that the period of adjustment of the term of a
patent under 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 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 an application.
Section 1.703(c) pertains to the provisions of 35 U.S.C.
154(b)(1)(C)(i). Section 1.703(c) indicates that the period of
adjustment under 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) pertains to the provisions of 35 U.S.C.
154(b)(1)(C)(ii). Section 1.703(d) indicates that the period of
adjustment under 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 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 5.3(c) and ending on the date of
mailing of the notice of allowance under 35 U.S.C. 151 and 1.311.
Section 1.703(e) pertains to the provisions of 35 U.S.C.
154(b)(1)(C)(iii). Section 1.703(e) indicates that the period of
adjustment under 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 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. The phrase "in which the patent was issued under a
decision in the review reversing an adverse determination of
patentability" (a final decision in favor of the applicant) in 35 U.S.C.
154(b)(1)(C)(iii) requires a Board of Patent Appeals and Interferences
or Federal court decision in the review that reverses all of the
rejections of at least one claim and that such claim is not subject to a
rejection under 1.196(b). For example:
(1) If claims 1 and 2 are pending, claim 1 stands rejected under 35
U.S.C. 103 and claim 2 was indicated as allowable prior to the appeal,
the rejection of claim 1 under 35 U.S.C. 103 is affirmed, and a patent
is issued (containing claim 2), the patent was not issued under a
decision in the review reversing an adverse determination of
patentability.
(2) If claims 1 and 2 are pending, claims 1 and 2 stand rejected
under 35 U.S.C. 103, as well as 35 U.S.C. 112, ô 2, the rejection of
claims 1 and 2 under 35 U.S.C. 103 is affirmed but the rejection of
claims 1 and 2 under 35 U.S.C. 112, ô 2, is reversed, and a patent is
issued as a result of continued examination under the provisions of 35
U.S.C. 132(b) and 1.114, the patent was not issued under a decision
in the review reversing an adverse determination of patentability.
(3) If claims 1 and 2 are pending, claims 1 and 2 stand rejected
under 35 U.S.C. 102, the rejection of claims 1 and 2 under 35 U.S.C. 102
is reversed, and the decision by the Board of Patent Appeals and
Interferences enters a new ground of rejection of claims 1 and 2 under
35 U.S.C. 103 ( 1.196(b)), and a patent is issued as a result of
further prosecution before the examiner, the patent was not issued under
a decision in the review reversing an adverse determination of
patentability.
(4) If claims 1 and 2 are pending, claims 1 and 2 stand rejected
under 35 U.S.C. 103, the rejection of claim 1 under 35 U.S.C. 103 is
affirmed but the rejection of claim 2 under 35 U.S.C. 103 is reversed,
and a patent is issued (containing claim 2), the patent was issued under
a decision in the review reversing an adverse determination of
patentability.
The Committee Reports for the predecessors of the American Inventors
Protection Act of 1999 in the 105th Congress (the 21st Century Patent
System Improvement Act, H.R. 400, 105th Cong. (1997), and The Omnibus
Patent Act of 1997, S. 507, 105th Cong. (1997)) indicate that the Office
should not determine whether "the patent was issued under a decision in
the review reversing an adverse determination of patentability" in a
mechanistic way, but should consider the particulars of each application
after an appeal to determine whether patent term adjustment
(restoration) is appropriate. See H.R. Rep. No. 105-39, at 66-67 (1997),
and S. Rep. No. 105-42, at 102-03 (1997). Nevertheless, this language
cannot be relied upon in interpreting the phrase "the patent was issued
under a decision in the review reversing an adverse determination of
patentability" because:(1) while H.R. 400 was passed by the House of
Representatives on April 23, 1997, neither H.R. 400 nor S. 507 were
enacted into law; and (2) this language is not contained in the
section-by-section analysis of the American Inventors Protection Act of
1999 or the Committee or Conference Reports for its predecessors (the
Intellectual Property and Communications Omnibus Reform Act of 1999,
H.R. 1554, 106th Cong. (1999), and the American Inventors Protection Act
of 1999, H.R. 1907, 106th Cong. (1999)) in the 106th Congress. See 145
Cong. Rec. S14,708-26 (1999)(daily ed. Nov. 17, 1999), H.R. Conf. Rep.
No. 106-464 (1999), and H.R. Rep. No. 106-287 (1999).
As discussed below, the Office must make its patent term adjustment
determinations by a computer program that uses the information recorded
in the Office's automated patent application information system (the
Patent Application Location and Monitoring system or PALM system). Thus,
the Office must determine whether the Board of Patent Appeals and
Interferences (or court) decision was of a nature such that "the patent
was issued under a decision in the review reversing an adverse
determination of patentability" under 35 U.S.C. 154(b)(1)(C)(iii) from
information concerning the decision susceptible of being recorded in the
PALM system (rather than by a case-by-case review of each decision).
Section 1.703(f) 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 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) also specifically indicates that the term of a patent entitled
to adjustment under 1.702 and this section shall be adjusted for the
sum of the periods calculated under 1.703(a) through (e), to the
extent that such periods are not overlapping, less the sum of the
periods calculated under 1.704. Section 1.703(f) also provides that
the date indicated on any certificate of mailing or transmission under
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
1.8 will continue to be taken into account in determining timeliness,
the date of filing ( 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 ( 1.10) or facsimile transmission ( 1.6(d)) for
replies to be accorded the earliest possible filing date for patent term
adjustment calculations.
Section 1.703(g) indicates that no patent, the term of which has been
disclaimed beyond a specified date, shall be adjusted under 1.702
and 1.703 beyond the expiration date specified in the disclaimer (35
U.S.C. 154(b)(2)(B)).
Section 1.704 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 an application.
Section 1.704(a) 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 an application.
Section 1.704(b) provides that with respect to the ground for
adjustments set forth in 1.702(a) through (e), and in particular
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 in a Nonprovisional Application (PTO-1669), however, 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 1.704(b), since the Office does not require a
reply to that notice to continue the processing and examination of an
application. Section 1.704(b) indicates that the period of adjustment
set forth in 1.703 shall be reduced by the number of days, if any,
beginning on the day after the date that is three months after the date
of mailing or transmission of the Office communication notifying the
applicant of the rejection, objection, argument, or other request and
ending on the date the reply was filed. As discussed above, a reply is
considered filed on the date of its actual receipt in the Office as
defined by 1.6, and the date indicated on any certificate of mailing
or transmission under 1.8 will not be taken into account for patent
term adjustment purposes.
The three-month period in 1.704(b) applies to the Office notices and
letters issued as part of the pre-examination processing of an
application (except a Notice of Omitted Items in a Nonprovisional
Application (PTO-1669) as discussed above). These notices include: (1) a
Notice of Incomplete Nonprovisional Application (PTO-1123) (except as to
any period prior to the filing date ultimately accorded to the
application); (2) a Notice to File Missing Parts of Application
(PTO-1533); (3) a Notice of Informal Application (PTO-152); (4) a Notice
to File Corrected Application Papers Filing Date Granted (PTO-1660); or
(5) a Notice to Comply with Requirements for Patent Applications
Containing Nucleotide Sequence and/or Amino Acid Sequence Disclosures
(PTO-1661).
In addition, the three-month period in 35 U.S.C. 154(b)(2)(C)(ii) and
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 1.136(a) before being subject to a
reduction of patent term adjustment under 35 U.S.C. 154(b)(2)(C)(ii) and
1.704(b). If, however, an Office action sets a six-month period for
reply, as is commonly set in applications subject to secrecy orders (see
MPEP 130), the applicant is subject to a reduction of patent term
adjustment under 35 U.S.C. 154(b)(2)(C)(ii) and 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(c) establishes further circumstances that constitute a
failure of an applicant to engage in reasonable efforts to conclude
processing or examination of an application.Sections 1.704(c)(1) through
(c)(11) 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 an
application), as well as the period by which a period of adjustment set
forth in 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)(11) 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 is impractical, since there are a myriad of
actions or inactions that occur infrequently but will interfere with the
Office's ability to process or examine an application (e.g., applicant
files and persists in requesting reconsideration of a meritless petition
under 1.10; parties to an interference obtain an extension for
purposes of settlement negotiations which do not result in settlement of
the interference; and 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). Thus, the actions or inactions set
forth in 1.704(c) are exemplary circumstances that constitute a
failure of an applicant to engage in reasonable efforts to conclude
processing or examination of an application. The Office may also reduce
a period of adjustment provided in 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 1.704(c).
Section 1.704(c)(1) establishes suspension of action under 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) also provides that in such a case the period of
adjustment set forth in 1.703 shall be reduced by the number of days,
if any, beginning on the date a request for suspension of action under
1.103 was filed and ending on the date of the termination of the
suspension.
Section 1.704(c)(2) establishes deferral of issuance of a patent under
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
1.314, the Office is precluded from issuing the application as a result
of an action by the applicant. When a petition under 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) also provides that in such a case the period of
adjustment set forth in 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 1.314 was filed and ending on the issue date of the
patent.
Section 1.704(c)(3) 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) also provides that in such a case the period of
adjustment set forth in 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 earlier of: (1) the date of
mailing of the decision reviving the application or accepting late
payment of the issue fee; or (2) the date that is four months after the
date the grantable petition to revive the application or accept late
payment of the issue fee was filed. The phrase "earlier of . . . [t]he
date that is four months after the date the grantable petition to revive
the application or accept late payment of the issue fee was filed" is to
place a cap (measured from the filing date of the grantable petition) on
the reduction if the Office does not act on (grant) the grantable
petition to revive within four months of the date it was filed.
Section 1.704(c)(4) 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 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), paragraph (I). Section 1.704(c)(4) also provides that in
such a case the period of adjustment set forth in 1.703 shall be
reduced by the number of days, if any, beginning on the day after 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) 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, which provides for the
conversion of a provisional application under 35 U.S.C. 111(b) and
1.53(c) to a nonprovisional application under 35 U.S.C. 111(a) and
1.53(b), 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) also provides that in such a case the period of
adjustment set forth in 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 1.53(c)(3)
to convert the provisional application into a nonprovisional application
was filed.
Section 1.704(c)(6) 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)(6) also provides that in
such a case the period of adjustment set forth in 1.703 shall be
reduced by the lesser of the number of days, if any, beginning on the
mailing date of the original Office action or notice of allowance and
ending on the date of mailing of the supplemental Office action or
notice of allowance or four months. The phrase "lesser of . . . or
[f]our months" is to provide a four-month cap for a reduction under
1.704(c)(6) if the Office takes longer than four months to issue a
supplemental Office action or notice of allowance.
Section 1.704(c)(7) establishes submission of a reply having an omission
( 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 1.135(c) and await and
process the applicant's reply to the action under 1.135(c) before the
initial reply (as corrected) can be treated on its merits. Section
1.704(c)(7) also provides that in such a case the period of adjustment
set forth in 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 reply or other paper correcting the omission was
filed. The reference to " 1.135(c)" is parenthetical because
1.704(c)(7) is not limited to Office actions under 1.135(c) but
applies when the Office issues any action or notice indicating that a
reply has an omission which must be corrected: e.g., (1) a decision on a
petition under 1.47 dismissing the petition as lacking an item
necessary to grant the petition; or (2) a notice indicating that the
computer readable format sequence listing filed in reply to a Notice to
Comply with Requirements for Patent Applications Containing Nucleotide
Sequence and/or Amino Acid Sequence Disclosures (PTO-1661) does not
comply with 1.821 et seq.
Section 1.704(c)(8) 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., an information disclosure
statement (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)(8) does not
apply to a supplemental reply or other paper that was expressly
requested by the examiner. Section 1.704(c)(8) also provides that in
such a case the period of adjustment set forth in 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)(9) 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 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 an
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)(9) also provides that in such a case the
period of adjustment set forth in 1.703 shall be reduced by the
lesser of 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 or
four months.The phrase "lesser of . . . or [f]our months" is to provide
a four-month cap for a reduction under 1.704(c)(9) if the Office
takes longer than four months to issue a supplemental Office action or
notice of allowance.
Section 1.704(c)(10) establishes submission of an amendment under
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 (Apr. 6, 1999); and Patents to Issue More Quickly After Issue Fee
Payment, Notice, 1220 Off. Gaz. Pat. Office 42 (Mar. 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 such papers as circumstances that constitute a
failure of an applicant to engage in reasonable efforts to conclude
processing or examination of an application. Section 1.704(c)(10) also
provides that in such a case the period of adjustment set forth in
1.703 shall be reduced by the lesser of: (1) the number of days, if any,
beginning on the date the amendment under 1.312 was filed and ending
on the mailing date of the Office action or notice in response to the
amendment under 1.312 or such other paper; or (2) four months. The
phrase "lesser of . . . or [f]our months" is to provide a four-month cap
for a reduction under 1.704(c)(10) if the Office takes longer than
four months to issue an Office action or notice in response to the
amendment under 1.312 or other paper.
Section 1.704(c)(11) 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
an 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) and 1.114 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 an application, in that the period
of adjustment set forth in 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
continuing application (including a CPA), the period of adjustment set
forth in 1.703 (if any) will not include any period that is prior to
the actual filing date of the application (in the case of a CPA, the
filing date of the request for a CPA) that resulted in the patent.
As discussed above, an applicant may file a CPA under 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 4402 of the
American Inventors Protection Act of 1999. The period of patent term
adjustment set forth in 1.703 (if any), however, will not include any
period that is prior to the filing date of the request for that CPA.
Section 1.704(d) provides that a paper containing only an information
disclosure statement in compliance with 1.97 and 1.98 will not be
considered (result in a reduction) under 1.704(c)(6), 1.704(c)(8),
1.704(c)(9), or 1.704 (c)(10) if it is accompanied by a certification
that each item of information contained in the information disclosure
statement was cited in a communication from a foreign patent office in a
counterpart application and that this communication was not received by
any individual designated in 1.56(c) more than thirty days prior to
the filing of the information disclosure statement. This provision will
permit applicants to submit information cited in a communication from a
foreign patent office in a counterpart application to the Office without
a reduction in patent term adjustment if an information disclosure
statement is promptly (within thirty days of receipt of the
communication) submitted to the Office.Obviously, compliance with the
certification requirement of 1.704(d) does not substitute for
compliance with any relevant requirement of 1.97 or 1.98. Section
1.704(d) also provides that this thirty-day period is not extendable.
Section 1.704(e) provides that submission of an application for patent
term adjustment under 1.705(b) (with or without request under
1.705(c) for reinstatement of reduced patent term adjustment) will not
be considered a failure to engage in reasonable efforts to conclude
prosecution (processing or examination) of the application under
1.704(c)(10).Due to the time constraints on the Office under 35 U.S.C.
154(b)(1)(A)(iv) and (B) to complete its patent term adjustment
determination and issue the patent, the Office must require applicants
to follow the specific procedure set forth in 1.705 for requesting
reconsideration of the Office's initial patent term adjustment
determination and for requesting reinstatement of patent term adjustment
reduced under 1.704(b). Thus, while submission of an application for
patent term adjustment under 1.705(b) (regardless of whether it
contains a request under 1.705(c) for reinstatement of reduced patent
term adjustment) will interfere with the patent printing process,
submission of the application will not be considered a failure to engage
in reasonable efforts to conclude prosecution (processing or
examination) of the application under 1.704 (c)(10). Other papers
concerning patent term adjustment (e.g., status letters, untimely
applications for patent term adjustment, requests for reconsideration of
the Office's decisions on applications for patent term adjustment,
petitions under 1.181, 1.182, or 1.183 concerning patent term
adjustment, or miscellaneous letters concerning patent term adjustment),
however, will be considered a failure to engage in reasonable efforts to
conclude prosecution (processing or examination) of the application
under 1.704(c)(10).
Section 1.705 implements the provisions of 35 U.S.C. 154(b)(3) and
(b)(4)(B).
Section 1.705(a) 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)). Since the Office now issues over 160,000
patents each year, the only practical way to make the patent term
adjustment determinations required by 35 U.S.C. 154(b)(3)(B)(i) is by a
computer program that uses the information (dates of receipt and nature
of applicant correspondence and of the dates of mailing and nature of
Office actions or notices) recorded in the PALM system.
Section 1.705(b) provides that any request for review or reconsideration
of the patent term adjustment indicated in the notice of allowance
(except as provided in 1.705(d)) and any request for reinstatement of
all or part of the term reduced pursuant to 1.704(a) must be filed no
later than the 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)
provides that any such request must be by way of an application for
patent term adjustment accompanied by the fee set forth in 1.18(e)
and a statement of the facts involved. Section 1.705(b) also provides
that such statement of facts must specify: (1) the basis or bases under
1.702 for the adjustment; (2) the relevant dates as specified in
1.703(a) through (e) for which an adjustment is sought and the
adjustment as specified in 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
1.704 (or a statement 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 setting 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) implements the provisions of 35 U.S.C. 154(b)(3)(C).
Section 1.705(c) specifically provides that a request for reinstatement
of all or part of the period of adjustment reduced pursuant to
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 include: (1) the fee set forth in
1.18(f); and (2) a showing to the satisfaction of the Commissioner 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) 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, 1.705(d) provides
for the situation in which 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 1.705(b)(1) and 1.705(b)(2).
Section 1.705(e) provides that the periods set forth in this section are
not extendable. As discussed above, the Office must set non-extendable
time periods in 1.705 to avoid delay in the issuance of the patent.
Section 1.705(f) 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.
Response to comments: The Office received twenty-three written comments
(from Intellectual Property Organizations, Businesses, Law Firms, Patent
Practitioners, and others) in response to the notice of proposed
rulemaking. Comments generally in support of a change are not discussed.
The comments and the Office's responses to those comments follow:
Comment 1: One comment argued that charging a fee as set forth in
1.18(e) to correct an Office error was unfair. In addition, several
comments argued that the fee for a patent term adjustment calculation
should be refundable if the Office does not calculate the term
adjustment correctly.
Response: 35 U.S.C. 154(b)(3) provides for the Office to establish
procedures for the application for and determination of patent term
adjustment under 35 U.S.C. 154(b). The Office will provide an initial
determination of the patent term adjustment in the notice of allowance.
If, however, an applicant wishes to request reconsideration of the
initial determination in the notice of allowance, the applicant must
file an application for patent term adjustment. 35 U.S.C. 41(d)
authorizes the Office to establish a fee to recover the estimated
average cost of treating applications for patent term adjustment (as
well as a fee for treating a request for reinstatement of patent term
adjustment), and the cost of treating an application for patent term
adjustment is about the same regardless of whether the Office's initial
determination of patent term adjustment indicated in the notice of
allowance is correct. In any event, refunding the fee under 1.18(e)
when the application for patent term adjustment is correct would: (1)
require the Office to raise the fee set forth in 1.18(e) (to enable
the Office to recover the same aggregate amount); and (2) add further
complication to a review process that must take place in a limited
period of time.
Comment 2: One comment argued that the fees under 1.18(e) and (f)
should be reduced for small entities.
Response: As discussed above, 35 U.S.C. 41(d) authorizes the Office to
establish a fee to recover the estimated average cost of treating
applications for patent term adjustment (as well as a fee for treating a
request for reinstatement of patent term adjustment). The small entity
discount in 35 U.S.C. 41(h)(1) applies only to fees charged under 35
U.S.C. 41(a) and (b). Thus, the Office has no authority to apply the
small entity discount to the fees set forth in 1.18(e) and (f).
Comment 3: One comment noted that the heading of 1.701 was
inconsistent with 1.701(e), and suggested that "and before May 29,
2000" be added to the heading of 1.701.
Response: The phrase "and before May 29, 2000" has been added to the
heading of 1.701.
Comment 4: Several comments argued that for purposes of 1.702(a)(1),
a restriction requirement or an election of species requirement should
not be considered a notification under 35 U.S.C. 132. The comments
stated an Office action containing only a restriction requirement or an
election of species requirement should be issued only after there has
been an attempt to make the restriction requirement or the election of
species requirement by telephone, and that treating a restriction
requirement or election of species requirement as an action under 35
U.S.C. 132 will further exacerbate a concern of applicants that a
restriction requirement is not proper.
Response: The comment cannot be adopted. The Office did not "decide" to
treat restriction requirements and election of species requirements as
notifications under 35 U.S.C. 132; they are notifications under 35
U.S.C. 132.
In considering whether a restriction requirement under 35 U.S.C. 121 was
appealable under 35 U.S.C. 134, the Court of Customs and Patent Appeals
(CCPA) noted that:(1) 35 U.S.C. 121 denoted its procedure as a
"requirement"; (2) 35 U.S.C. 132 stated that the Commissioner shall give
notice to the applicant whenever "any claim for a patent is rejected, or
any objection or requirement made"; and (3) 35 U.S.C. 134 provided for
an appeal only by an applicant whose claims have been "twice rejected."
See In re Hengehold, 440 F.2d 1395, 1402-03, 169 USPQ 473, 479 (CCPA
1971). Thus, the CCPA concluded that Congress intended to differentiate
between objections and requirements (under 35 U.S.C. 132) and actual
rejections of claims (under 35 U.S.C. 132) and made appeal applicable
only to the latter. See Hengehold, 440 F.2d at 1403, 169 USPQ at 479.
Since the CCPA discussed and differentiated between rejections,
objections, and requirements under 35 U.S.C. 132 in determining whether
a restriction requirement was appealable under 35 U.S.C. 134, the CCPA
must have considered a restriction requirement to be a requirement under
35 U.S.C. 132, thus making a written restriction (or election)
requirement a notification under 35 U.S.C. 132. See also Digital
Equipment Corp. v. Diamond, 653 F.2d 701, 713 n.13, 210 USPQ 521, 535-36
n.13 (1st Cir. 1981) (citing 35 U.S.C. 132 when noting that the terms
"requirement" and "objection" are distinct from "rejection" (as used in
title 35, U.S.C.) and that requirements and objections were not
appealable under 35 U.S.C. 134).
In addition, the Office has long considered (at least implicitly) a
written restriction requirement containing no action on the merits to be
a notice under 35 U.S.C. 132. MPEP 710.02(b) instructs examiners to set
a shortened statutory period for reply of one month for a written
restriction requirement containing no action on the merits under the
authority given by 35 U.S.C. 133 (35 U.S.C. 133 would not apply to the
period for reply to a written restriction requirement, if a written
restriction requirement containing no action on the merits is not a
notice under 35 U.S.C. 132).
The Office encourages examiners to make an oral restriction requirement.
Many applicants, however, prefer a written restriction requirement
because it gives them more time to consider the requirement.
Comment 5: One comment requested a definition of the term "original
application" as used in 1.702(f) and asked whether the term refers to
a parent application or a divisional or continuation. Several comments
expressed confusion as to whether term adjustment for a first-filed
application would result in the same term adjustment in a continuation
of that application. One comment suggested that the term "applications
other than reissue applications" be used instead of "original
applications."
Response: An "original application" is any application other than a
reissue application.See Guidelines Concerning the Implementation of
Changes to 35 U.S.C. 102(g) and 103(c) and the Interpretation of the
Term "Original Application" in the American Inventors Protection Act of
1999, 1233 Off. Gaz. Pat. Office 54 (Apr. 11, 2000). Thus, the term
"original application" includes a continuing application (continuation,
divisional, or continuation-in-part, whether the application is filed
under 1.53(b) or as a continued prosecution application under
1.53(d)), and the national stage of an international application. Since
a request for continued examination under 35 U.S.C. 132(b) and 1.114
is not an application (but a submission in a previously filed
application), the term "original application" does not include a request
for continued examination under 35 U.S.C. 132(b) and 1.114.
While 35 U.S.C. 154(b) does not use the term "original application," its
provisions concern the situation in which the issue of an original
patent is delayed due to the failure of the Office to take certain
actions in the application that issued as the patent. Patent term
adjustment events in one application may not be relied upon as giving
rise to patent term adjustment in another application, even if the other
application claims the benefit of the first application under 35 U.S.C.
120, 121, or 365(c) (i.e., patent term adjustment events in a parent
application do not carry over to a child application).
Comment 6: One comment stated that 1.702(f) should also provide that
the provisions apply to international applications in which the
requirements of 35 U.S.C. 371 are met on or after May 29, 2000.
Response: The date on which an international application fulfills the
requirements of 35 U.S.C. 371 is not the filing date, or even relevant
to the filing date, of the international application. Section 4405 of
the American Inventors Protection Act of 1999 provides that the
amendments relating to patent term adjustment shall apply to any
application filed on or after May 29, 2000, but does not provide that
its patent term adjustment provisions apply to international
applications filed before May 29, 2000, that complied with the
requirements of 35 U.S.C. 371 on or after May 29, 2000.
Comment 7: As to 1.703(a)(6), one comment requested clarification as
to whether the filing of a priority document would be an "outstanding
requirement" which would cause a delay in the beginning of the "four
months after payment of the issue fee and all outstanding requirements
were satisfied" period. The comment argued that filing of a priority
document should not be considered an outstanding requirement because if
the priority document is not filed the patent simply issues without the
priority claim (the application is not abandoned).
Response: Section 1.55 has been amended to eliminate the need for a
petition to accept a priority document filed after payment of the issue
fee, as well as the need for the Office to evaluate the priority claim
before a patent is granted. Therefore, the filing of a priority document
(and processing fee) is not considered an outstanding requirement under
35 U.S.C. 154(b)(1)(A)(iv) and 1.703(a)(6).
Comment 8: One comment objected to the exclusion from the three-year
period in 1.703(b)(1) of the period of time in which a request for
continued examination under 35 U.S.C. 132(b) and 1.114 is processed.
The comment argues that filing a request for continued examination
should not preclude an applicant from obtaining a term adjustment for
printing delays of a patent.
Response: 35 U.S.C. 154(b)(1)(B) provides that an applicant may receive
a term adjustment if the application is not issued within three years of
the filing date of the application, excluding (among other things) any
time consumed by continued examination requested under 35 U.S.C. 132(b).
Once a request for continued examination under 35 U.S.C. 132(b) and
1.114 is filed in an application, any further processing or examination
of the application, including granting of a patent, is by virtue of the
continued examination given to the application under 35 U.S.C. 132(b)
and 1.114. Nevertheless, if a request for continued examination is
filed in an application, the applicant may still accrue patent term
adjustment under 35 U.S.C. 154(b)(1)(A) or (C). Accordingly, if two
years after the filing date of an application, a request for continued
examination is filed, and three years after the filing date of the
application, the issue fee is paid (and all outstanding requirements are
satisfied), but the patent does not issue as a patent until four years
after the application's filing date, applicant may be entitled to an
eight-month term adjustment because the application did not issue within
four months of payment of the issue fee. Since the request for continued
examination was filed within three years of the filing date of the
application, applicant cannot accrue any term adjustment under the
"three-year" statutory basis (35 U.S.C. 154(b)(1)(B)), but may accrue
patent term adjustment under the other bases (e.g., 35 U.S.C.
154(b)(1)(A)(iv)).
Comment 9: One comment asked whether "a final decision in favor of
applicant" as used in 1.703(e) and "a decision in the [appellate]
review reversing an adverse determination of patentability" as used in
35 U.S.C. 154(b)(1)(C)(iii) is limited to successful appeals on purely
statutory grounds or would also include non-statutory grounds (e.g.,
obviousness-type double patenting).
Response: A "final decision in favor of applicant" is understood to
include any final decision of the Board of Patent Appeals and
Interferences or Federal court that reverses all of the rejections of at
least one claim (without subjecting the claim to a new rejection).The
type of rejection (i.e., whether the rejection is based upon a statutory
or judicial basis) is not relevant.
Comment 10: A number of comments objected to the provision in
1.703(f) that the certificate of mailing date under 1.8 will not be
used for determining when applicant is considered to "respond to a
notice from the Office making any rejection, objection argument or other
request." The comments included suggestions, objections, or arguments
that: (1) the date set forth in the 1.8 statement should be used as
the date when applicant is considered to have responded within three
months of the Office action; (2) applicants should not be compelled to
hand-carry papers to the Office or to use the Express Mail service of
the United States Postal Service in order to be able to meet the
three-month timeliness goal or reduce a period of time in which they are
considered to have "failed to engage in reasonable efforts to conclude
processing or examination of an application"; (3) a certificate of
mailing is now accepted for purposes of a filing date; (4) using the
date of receipt rather than the date of mailing by a practitioner would
require the Office to keep "separate books" of the date of mailing and
date of receipt of papers; and (5) United States Postal Service delays
are insignificant compared to Office mailroom delays.
Response: The suggestion is not adopted. The date indicated on a
certificate of mailing is used only to determine whether the
correspondence is timely (including whether any extension of the time
and fee are required) so as to avoid abandonment of the application or
termination or dismissal of proceedings. The actual date of receipt of
the correspondence in the Office is used for all other purposes. See
1.8(a). In addition, a certificate of mailing date under 1.8 cannot
be relied upon for purposes of according a filing date to a patent
application. See 1.8(a)(2)(i)(A). Rather, correspondence is
considered filed in the Office on the date of its actual receipt in the
Office ( 1.6(a)) or the date it was deposited with the United States
Postal Service under 1.10 as shown by the "date-in" on the Express
Mail mailing label. Nevertheless, 1.8 will continue to be used in
determining whether correspondence is timely filed and whether an
extension of time and fee for an extension of time are due.
Section 1.703(f) does not compel applicants to hand-carry papers to the
Office or to use the Express Mail service of the United States Postal
Service to ensure that correspondence is received within three months of
an Office action and avoid a reduction in any patent term adjustment.
Most correspondence that can be submitted using the benefit of 1.8
can also be submitted to the Office by facsimile transmission (
1.6(d)) to avoid mail delays and ensure that correspondence is received
within three months of an Office action or notice. In addition,
applicants can also mail correspondence with sufficient time to ensure
that the correspondence is received in the Office (and stamped with a
date of receipt) before the expiration of the three-month period.
Applicants who chose to use first-class mail at the end of the period
for reply instead of a quicker means of submitting correspondence to the
Office have no complaint concerning consequences of their decision on
patent term adjustment.
The Office practice of using the date of receipt of papers rather than
the date of mailing of papers as the filing date of the papers is well
established and changing this practice would have undesirable results.
For example, when a notice of appeal is filed, the filing date accorded
the notice of appeal is the date of receipt of the notice of appeal in
the Office, not the certificate of mailing date under 1.8 indicated
on the notice of appeal. An appeal brief must then be filed within two
months of the date of receipt of the notice of appeal. See 1.191(a)
and MPEP 1206. If the suggested change to Office practice were adopted,
the date on the certificate of mailing under 1.8 would be used as the
"receipt date" of the notice of appeal to determine whether applicant
replied within three months of the Office action for patent term
adjustment purposes, and the appeal brief would be required to be filed
within two months of the date on the certificate of mailing under 1.8
(now the "receipt date'), unless the period for reply to the Office
action is later. For many applicants, this would lead to the appeal
brief being required to be filed several days earlier, which would be an
undesirable result.
The certificate of mailing date is not recorded in the Office's PALM
system. The Office's PALM system records contain a single date: the date
of receipt in the Office (as defined by 1.6). The certificate of
mailing date may be noted on the date received/mailed column of the
contents of the application's file wrapper with an entry such as
"1-31-00 (c.o.m. 1/26/00)." Thus, adopting the suggested change to
1.703(f) would require the Office to keep "separate books" of the date
of mailing and date of receipt of correspondence.
Finally, whether United States Postal Service delays are insignificant
compared to Office mailroom delays is immaterial. The purpose of the
patent term adjustment provisions of the American Inventors Protection
Act of 1999 is to compensate applicants for certain administrative
delays by the Office, and any delays (whether significant or
insignificant) by United States Postal Service in delivering
correspondence to the Office is not a delay by the Office.
Comment 11: One comment was received objecting to the provision in
1.703(f) as unfair because applicants were responsible for a reply
within a set time from the mailing date by the Office, whereas the
Office is held to a standard for reply from the filing date of papers
filed by the applicant.
Response: 35 U.S.C. 154(b)(2)(C)(ii) establishes the standard of reply
by applicants to within three months of the date a notice is given or
mailed to applicants. In addition, 35 U.S.C. 154(b)(1)(A)(i) and (ii)
measure the deadline for the Office's reply from the date an application
or a reply is filed. These different standards established by Congress
are considered important because they are both dates that are contained
in the Office's PALM system records.
Comment 12: One comment also stated that if the certificate of mailing
date was not used for establishing a date of receipt under 1.703(f),
the patent term adjustment procedure would be more difficult because
applicant would not know when the paper was received by the Office.
Response: Applicants may use a postcard receipt to establish when a
paper is received by the Office. Not only does a postcard receipt
provide evidence of a date of receipt, but it also provides prima facie
evidence of receipt in the Office of all items listed thereon on the
date stamped by the Office. See MPEP 503. In addition, applicants may
check the Office's PALM system records (which shows the date of receipt
of papers) through the Patent Application Information Retrieval (PAIR)
system at http://pair.uspto.gov.
If the date of mailing under 1.8 were to be used for determining if
applicant has replied within three months of the date of an Office
action, the Office's PALM system would have to record two different
dates for patent term adjustment calculation purposes. This is because
the measurements of whether the Office has taken action within a set
time would not run from the same date (e.g., fourteen months from the
filing date of the application or four months of the date on which a
reply was filed or an appeal is taken).Such a patent term adjustment
calculation would be unnecessarily complex.
Comment 13: One comment stated that the reduction in 1.703(f) for
failure to reply within three months even where the Office sets a longer
period is a subtle point which should be mentioned in the rules as well
as being stated in any communication setting a period for reply of
longer than three months.
Response: The suggestion to expressly mention in any communication
warning applicants that any reply not received within three months of an
Office action may result in a reduction to any patent term adjustment,
even where the Office action sets forth a longer period for reply, has
been adopted. The Office is planning to modify forms used by patent
examiners to include this warning.
Comment 14: One comment argued that the phrase "processing or
examination" in 35 U.S.C. 154(b)(2)(C)(ii) and (iii) means the same
thing as "prosecution" in 35 U.S.C. 154(b)(2)(C)(i).
Response: The Office agrees with this interpretation of 35 U.S.C.
154(b)(2)(C). Section 1.704(a) uses the term "prosecution (processing or
examination)" for this reason.
Comment 15: One comment objected to 1.704(b), arguing that foreign
applicants, especially those from non-English speaking countries, need
more time to reply to an Office action than United States applicants and
argued that one additional month should be considered as not being a
failure to engage in reasonable efforts to conclude prosecution.
Response: The language in 1.704(b) is taken directly from 35 U.S.C.
154(b)(2)(C)(ii), wherein Congress stated that a delay in a reply beyond
three months is per se a failure to engage in reasonable efforts.
Moreover, Congress provided that if applicant makes a showing that in
spite of all due care applicant was unable to reply within the
three-month period, the adjustment may be reinstated. Since Congress
provided that applicants must make a showing explaining that the delay
was in spite of all due care for a reply beyond three months not to be a
failure to engage in reasonable efforts, the Office cannot by rule
provide that a reply within a longer period is not failure to engage in
reasonable efforts to conclude prosecution (absent a showing explaining
that the delay was in spite of all due care).
Comment 16: Another comment objected to the use of "or given" in the
phrase "measuring such three-month period from the date the notice or
action was mailed or given to the applicant" in 1.704(b), and argued
that 1.2 requires all correspondence to be in writing, and allowing
an oral restriction requirement to start a period for the applicant to
reply would not be consistent with 1.2. In addition, the comment
argued that sometimes a message is left on an answering machine and such
a message should not be considered notice of an objection or other
requirement.
Response: The phrase "measuring such three-month period from the date
the notice [or action] was mailed or given to the applicant" (emphasis
added) is taken almost directly from 35 U.S.C. 154(b)(2)(C)(ii). The
Office is using the statutory language "mailed or given," rather than
"mailed," because the Office envisions that it may one day issue (or
"give") actions or notices by means other than mailing (e.g., by
facsimile transmission or e-mail message over the Internet). The Office,
however, does not envision that it would issue (or "give") actions or
notices by non-written means (e.g., a telephone conversation).Thus, a
telephone message left on an answering machine would not constitute the
giving notice of an objection or other requirement.
Comment 17: One comment suggested that setting forth "strict examples"
in 1.704(c) of circumstances of when applicant has failed to engage
in reasonable efforts to conclude prosecution (or processing or
examination) of an application is inconsistent with the legislative
intent of Congress in enacting the provisions of 35 U.S.C.
154(b)(2)(C)(iii).The comment suggested that a reduction of patent term
adjustment under 35 U.S.C. 154(b)(2)(C) should occur to prevent only
"the few applicants who engage in intentional or unjustifiable delay
tactics" from abusing the system, such that "only the most egregious and
obvious delay tactics will go unrewarded," citing to H.R. Rep. No.
105-39 at 66 (1997). The comment suggested that the regulations are so
strict as to require the applicant to be a "perfect" applicant rather
than a "diligent" or "reasonable" applicant.The comment suggested that
the Office should instead review each application on a case-by-case
basis to determine a reduction of patent term adjustment is warranted
due to the applicant's failure to engage in reasonable efforts to
conclude prosecution (or processing or examination) of an application.
Response: 35 U.S.C. 154(b)(2)(C) provides that: (1) The Office is to
prescribe regulations establishing the circumstances that constitute a
failure of an applicant to engage in reasonable efforts to conclude
processing or examination of an application (35 U.S.C.
154(b)(2)(C)(iii)); and (2) 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 of an application (35 U.S.C. 154(b)(2)(C)(i)).
Thus, promulgating regulations that set forth "strict examples" of
circumstances of when applicant has failed to engage in reasonable
efforts to conclude prosecution (or processing or examination) of an
application (rather than considering applications on an ad hoc or
case-by-case basis) is not only consistent with 35 U.S.C. 154(b)(2)(C),
it is what the Office is required to do under 35 U.S.C.
154(b)(2)(C)(iii).
The cited House Report (H.R. Rep. No. 105-39) is of questionable
reliability in interpreting the patent term adjustment provisions of the
American Inventors Protection Act of 1999 concerning the Office's
authority to prescribe regulations establishing the circumstances that
constitute a failure of an applicant to engage in reasonable efforts to
conclude processing or examination of an application (35 U.S.C.
154(b)(2)(C)(iii)). H.R. Rep. No. 105-39 is the Committee Report for the
21st Century Patent System Improvement Act, H.R. 400, 105th Cong.,
(1997), which was passed by the House of Representatives on April 23,
1997, but was not enacted into law.
The American Inventors Protection Act of 1999 is title IV of the
Intellectual Property and Communications Omnibus Reform Act of 1999 (S.
1948), and S. 1948 was incorporated and enacted into law as part of Pub.
L. 106-113. The Conference Report for H.R. 3194, 106th Cong., 1st. Sess.
(1999), which resulted in Pub. L. 106-113, does not contain any
discussion (other than the incorporated language) of S. 1948. See H.R.
Conf. Rep. No. 106-497, at 37 and 1089-174 (1999). A section-by-section
analysis of S. 1948, however, was printed in the Congressional Record at
the request of Senator Lott. See 145 Cong. Rec. S14,708-26 (1999) (daily
ed. Nov. 17, 1999). This section-by-section analysis of the patent term
adjustment provisions of the American Inventors Protection Act of 1999
provides, in relevant part, that:
Subtitle D amends the provisions in the Patent Act that compensate
patent applicants for certain reductions in patent term that are not the
fault of the applicant. The provisions that were initially included in
the term adjustment provisions of patent bills in the 105th Congress
only provided adjustments for up to 10 years for secrecy orders,
interferences, and successful appeals. Not only are these adjustments
too short in some cases, but no adjustments were provided for
administrative delays caused by the [Office] that were beyond the
control of the applicant. Accordingly, subtitle D removes the 10 year
caps from the existing provisions, adds a new provision to compensate
applicants fully for [Office]-caused administrative delays, and, for
good measure, includes a new provision guaranteeing diligent applicants
at least a 17-year term by extending the term of any patent not granted
within three years of filing. Thus, no patent applicant diligently
seeking to obtain a patent will receive a term of less than the 17 years
as provided under the pre-GATT standard; in fact, most will receive
considerably more. Only those who purposely manipulate the system to
delay the issuance of their patents will be penalized under subtitle D,
a result that the Conferees believe entirely appropriate.
* * * * *
Section 4402 amends [35 U.S.C.] 154(b) of the Patent Act covering term.
First, new [35 U.S.C.] 154(b)(1)(A)(i)-(iv) guarantees day-for-day
restoration of term lost as a result of delay created by the [Office]
when the [Office] fails to:
(1) Make a notification of the rejection of any claim for a patent or
any objection or argument under [35 U.S.C.] 132, or give or mail a
written notice of allowance under [35 U.S.C.] 151, within 14 months
after the date on which a non-provisional application was actually filed
in the [Office];
(2) Respond to a reply under [35 U.S.C.] 132, or to an appeal taken
under [35 U.S.C. ] 134, within four months after the date on which the
reply was filed or the appeal was taken;
(3) Act on an application within 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 in a case in which allowable claims remain in the
application; or
(4) Issue a patent within four months after the date on which the
issue fee was paid under [35 U.S.C.] 151 and all outstanding
requirements were satisfied.
Further, subject to certain limitations, infra, [35 U.S.C.] 154(b)(1)(B)
guarantees a total application pendency of no more than three years.
Specifically, day-for-day restoration of term is granted if the [Office]
has not issued a patent within three years after "the actual date of the
application in the United States." This language was intentionally
selected to exclude the filing date of an application under the Patent
Cooperation Treaty (PCT). Otherwise, an applicant could obtain up to a
30-month extension of a U.S. patent merely by filing under PCT, rather
than directly in the [Office], gaining an unfair advantage in contrast
to strictly domestic applicants. Any periods of time-
(1) consumed in the continued examination of the application under
[35 U.S.C.] 132(b);
(2) lost due to an interference under [35 U.S.C.] 135(a), a secrecy
order under [35 U.S.C.] 181, or appellate review by the Board of Patent
Appeals and Interferences or by a Federal court (irrespective of the
outcome); and
(3) incurred at the request of an applicant in excess of the three
months to respond to a notice from the Office permitted by [35 U.S.C.]
154(b)(2)(C)(ii) unless excused by a showing by the applicant under [35
U.S.C.] 154(b)(3)(C) that in spite of all due care the applicant could
not respond within three months shall not be considered a delay by the
[Office] and shall not be counted for purposes of determining whether
the patent issued within three years from the actual filing date.
Day-for-day restoration is also granted under new [35 U.S.C.]
154(b)(1)(C) for delays resulting from interferences, secrecy orders,
and appeals by the Board of Patent Appeals and Interferences or a
Federal court in which a patent was issued as a result of a decision
reversing an adverse determination of patentability.
Section 4402 imposes limitations on restoration of term. In general,
pursuant to [35 U.S.C.] 154(b)(2)(A)-(C), total adjustments granted for
restorations under [35 U.S.C. 154](b)(1) are reduced as follows:
(1) To the extent that there are multiple grounds for extending the
term of a patent that may exist simultaneously (e.g., delay due to a
secrecy order under [35 U.S.C.] 181 and administrative delay under [35
U.S.C.] 154(b)(1)(A)), the term should not be extended for each ground
of delay but only for the actual number of days that the issuance of a
patent was delayed;
(2) The term of any patent which has been disclaimed beyond a date
certain may not receive an adjustment beyond the expiration date
specified in the disclaimer; and
(3) Adjustments shall be reduced by a period equal to the time in
which the applicant failed to engage in reasonable efforts to conclude
prosecution of the application, based on regulations developed by the
Director, and an applicant shall be deemed to have failed to engage in
such reasonable efforts for any periods of time in excess of three
months that are taken to respond to a notice from the Office making any
rejection or other request;
New [35 U.S.C.] 154(b)(3) sets forth the procedures for the adjustment
of patent terms. [35 U.S.C. 154(b)](3)(A) empowers the Director to
establish regulations by which term extensions are determined and
contested. Paragraph (3)(B) requires the Director to send a notice of
any determination with the notice of allowance and to give the applicant
one opportunity to request reconsideration of the determination.
Paragraph (3)(C) requires the Director to reinstate any time the
applicant takes to respond to a notice from the Office in excess of
three months that was deducted from any patent term extension that would
otherwise have been granted if the applicant can show that he or she
was, in spite of all due care, unable to respond within three months. In
no case shall more than an additional three months be reinstated for
each response. Paragraph (3)(D) requires the Director to grant the
patent after completion of determining any patent term extension
irrespective of whether the applicant appeals.
New [35 U.S.C.] 154(b)(4) regulates appeals of term adjustment
determinations made by the Director. Paragraph (4)(A) requires a
dissatisfied applicant to seek remedy in the District Court for the
District of Columbia under the Administrative Procedures Act within 180
days after the grant of the patent. The Director shall alter the term of
the patent to reflect any final judgment. Paragraph (4)(B) precludes a
third party from challenging the determination of a patent term prior to
patent grant.
See 145 Cong. Rec. S14,718 (footnotes omitted).
In addition, since the patent term adjustment provisions of the American
Inventors Protection Act of 1999 contained in Pub. L. 106-113 are
identical to the patent term adjustment provisions in title IV of the
Intellectual Property and Communications Omnibus Reform Act of 1999
(H.R. 1554), the joint statement in the Conference Report for H.R. 1554
may also be useful in interpreting the patent term adjustment provisions
of the American Inventors Protection Act of 1999. The joint statement in
the Conference Report for H.R. 1554 contains an identical discussion of
its patent term adjustment provisions. See H.R. Conf. Rep. No. 106-464,
at 125-27 (1999).
The language relied upon for the position that the provisions of
1.704(c) (establishing the circumstances that constitute a failure of an
applicant to engage in reasonable efforts to conclude processing or
examination of an application) are inconsistent with the legislative
intent of Congress in enacting the provisions of 35 U.S.C.
154(b)(2)(C)(iii) is not included in either the section-by-section
analysis of S. 1948 by Senator Lott or the Conference Report for H.R.
1554 (H.R. Conf. Rep. No. 106-464). In addition, while H.R. 400 is one
of the forerunners of the patent term adjustment provisions enacted into
law in the American Inventors Protection Act of 1999, the provision
concerning the establishment of circumstances that constitute a failure
of an applicant to engage in reasonable efforts to conclude processing
or examination of an application contained in the American Inventors
Protection Act of 1999 is not the same as the corresponding provision in
H.R. 400.
In any event, the provisions of 1.704(c) do not require an applicant
to be "perfect" or even "diligent" when prosecuting an application to
avoid a reduction of patent term adjustment; 1.704(c) simply requires
that an applicant refrain from engaging in actions or inactions that
prevent or interfere with the Office's ability to process or examine an
application. An applicant who is engaging in actions or inactions that
prevent or interfere with the Office's ability to process or examine an
application cannot reasonably be characterized as "engag[ing] in
reasonable efforts to conclude processing or examination of an
application" (35 U.S.C. 154(b)(2)(C)(i)).
That conduct (an action or inaction) has been established in 1.704 as
circumstances constituting a failure of an applicant to engage in
reasonable efforts to conclude processing or examination of an
application should not be taken as an indication that such conduct is
unreasonable per se. If Congress considered taking longer than three
months to reply to an Office action or notice to be unreasonable per se,
Congress would simply have amended title 35, U.S.C., to provide a
statutory period of three months to reply to all Office actions or
notices. The patent statute (and specifically the fee extension
provisions of 35 U.S.C. 41(a)(8)), however, permits applicants to take
longer than three months to reply to an Office action or notice even in
the absence of showing that, in spite of all due care, the applicant was
unable to reply within a three-month period. Nevertheless, 35 U.S.C.
154(b)(2)(C)(ii) provides that 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. Thus, Congress
concluded that there is conduct during the prosecution of an application
that is not unreasonable per se, but which is a failure to engage in
reasonable efforts to conclude processing or examination of an
application. Conversely, that conduct is permitted by the patent statute
and rules of practice does not imply that such conduct is not a failure
to engage in reasonable efforts to conclude processing or examination of
an application.
Comment 18: One comment objected to 1.704(c) as being overly broad
and not being limited to the situations where applicant's actions or
inactions have hindered the Office's ability to process or examine the
application. Several other comments argued that 1.704(c) sets off an
applicant delay against unrelated Office delays (e.g., one comment noted
that if in an application the Office does not issue a first Office
action until fifteen months after the application's filing date and
later applicant files a notice of appeal followed by an appeal brief two
months later, and an examiner's answer is mailed two months after the
appeal brief is filed, the applicant would receive no term adjustment,
and argued that there was "no logical reason" for such a setoff).
Another comment argued that the result is that applicants are penalized
twice for actions which are characterized as a failure to engage in
reasonable efforts to conclude prosecution: once because their patent
issues later than it would have had the applicant not delayed and a
second time because they receive a lesser term adjustment than they
would have without their delay.
Response: Section 1.704 as adopted (i.e., not adopting proposed
1.704(c)(6), 1.704(c)(7), 1.704(c)(8), 1.704(c)(9), and 1.704(c)(13))
will result in fewer situations in which patent term adjustment is
reduced by an action or inaction that did not cause or contribute to the
patent term adjustment.
Nevertheless, 35 U.S.C. 154(b) provides that 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 of the application." See 35
U.S.C. 154(b)(2)(C)(i). 35 U.S.C. 154(b)(1)(C)(i) does not require the
applicant's action or inaction (that amounts to a failure to engage in
reasonable efforts to conclude prosecution of the application) to have
caused or contributed to patent term adjustment for the period of
adjustment to be reduced due to such action or inaction. The patent term
adjustment provisions of 35 U.S.C. 154(b) create a balanced system
allowing for patent term adjustment due to Office delays for a
reasonably diligent applicant. Since the public has an interest in the
technology disclosed and covered by a patent being available to the
public at the earliest possible date, it is appropriate to reduce patent
term adjustment by any period of time during which applicant failed to
engage in reasonable efforts to conclude prosecution of the application,
regardless of whether the applicant's actions or inactions caused or
contributed to patent term adjustment.
Comment 19: One comment objected to 1.704(c) not being limited to the
proposed sixteen enumerated events that would result in reduction in
term adjustment, but being also applicable to situations where an
applicant acts in a manner which would delay the conclusion of
prosecution (arguing, e.g., that an applicant should not have to accept
a "picture claim" or face a reduction to any term adjustment). In
addition, the comment stated that it is unclear what petitions the
Office considers meritless since the Office does not publish petition
decisions.
Response: The Office anticipates that some applicants will seek out ways
to manipulate the system to their advantage no matter how exhaustive a
listing of circumstances the Office were to set forth in 1.704(c).
Thus, the Office must provide that the enumerated circumstances in
1.704(c) are exemplary (and not exhaustive) to avoid always being one
step behind such applicants.
As discussed above, the Office plans to calculate patent term adjustment
with a computer program that uses the PALM system records of the dates
of receipt and nature of applicant correspondence and of the dates of
mailing and nature of Office actions or notices. This automated approach
will not lend itself to basing a reduction of patent term adjustment on
circumstances not enumerated in 1.704(c) except in the most peculiar
situations (e.g., unsuccessfully seeking reconsideration or judicial
review of a petition decision designated as final agency action).
Finally, while the Office does not submit petition decisions for
publication in the United States Patent Quarterly as a matter of course,
the Office does post a variety of petition decisions on its Internet Web
site (on the FOIA Web page, FOIA Reading Room
(http://www.uspto.gov/web/offices/com/sol/ foia/readroom.htm), Final
Decisions of the Office of the Commissioner).
Comment 20: One comment argued that the reduction in 1.704(c)(1)
being equal to the time between the date a request for suspension of
action under 1.103 was filed and ending on the date the suspension
was terminated should only be applied against any period where an
adjustment is caused (e.g., against the three-year period).
Response: As discussed above, 35 U.S.C. 154(b)(2)(C)(i) provides that
the Office shall reduce any term adjustment by the period of time in
which applicant has failed to engage in reasonable efforts to conclude
prosecution, regardless of whether the applicant's actions or inactions
caused or contributed to patent term adjustment.
Comment 21: One comment stated that making the period of reduction in
1.704(c)(2) equal to the time between the date a request for deferral
from issuance is filed to the date of issue of the patent was unfair
because it includes the time in which the patent is printed. Another
comment argued that the period should only be used to reduce a period of
adjustment under 1.703(a)(6) and (b) (failure to issue a patent
within four months of the issue fee and compliance with all formal
requirements, and failure to issue a patent within three years of the
filing date of the application).
Response: An applicant can avoid any reduction of patent term adjustment
under 1.703(c)(2) by refraining from requesting that the Office
suspend or defer action in the application. An applicant who
affirmatively seeks a deferral of action by the Office should not
complain that such a request has resulted in a reduction of any patent
term adjustment due to administrative delays by the Office.
Comment 22: One comment stated that the proposal to make the period of
reduction in 1.704(c)(3) run from the date of abandonment to the date
a favorable decision is mailed was unfair. The comment suggested that
the applicant should not be charged with periods beyond four months from
the date a petition is filed (as provided in proposed 1.704(c)(15)).
Response: The suggestion is adopted to the extent described below. In
many applications, the first-filed petitions to revive an application or
to accept late payment is not grantable and further evidence, a terminal
disclaimer or a fee is required before it can be granted. The Office of
Petitions may call the applicant and request the necessary item, have
the applicant send it by facsimile transmission, and then grant the
petition on the same day. Section 1.704(c)(3) has been revised to state
that the period of reduction will be the number of days, if any,
beginning on the date of abandonment or the date after the date the
issue fee was due and ending on the earlier of: (1) the date of mailing
of the decision reviving the application or accepting late payment of
the issue fee 1.703; or (2) the date that is four months after the
date the grantable petition to revive the application or accept late
payment of the issue fee was filed.
Comment 23: One comment argued that the periods of reduction in
1.704(c)(3) and (c)(4) should be combined and that the period should be
reinstated if the abandonment was not the fault of applicant. Another
comment argued that a reduction should apply only if the abandonment was
unintentional (not unavoidable).
Response: The suggestions are not adopted. The provisions of
1.704(c)(3) relate to situations in which the application was in fact
abandoned, but the abandonment was either unavoidable or unintentional
(permitting revival of the application). If an application is not
properly held abandoned (is not in fact abandoned), the applicant should
not petition to revive under 1.137, but should petition to have the
(improper) holding of abandonment withdrawn. The provisions of
1.704(c)(4) relate to where the holding of abandonment is withdrawn
because applicant has shown, for example, that the application became
abandoned because the Office mailed a communication to the incorrect
address, or applicant did not receive the communication. When a petition
to withdraw the holding of abandonment is granted, the application is
treated as never having been abandoned, but where an application is
revived the period in which the application was abandoned is a failure
to engage in reasonable efforts to conclude prosecution. Since the two
concepts are different, they have been separated into separate
paragraphs of 1.704.
Section 1.704(c)(3) applies regardless of whether the abandonment was
unavoidable or just unintentional (but not unavoidable). The abandonment
of an application as a result of actions or inactions within the control
of applicant (and outside the control of the Office) does not preclude a
finding of unavoidable delay. See, e.g., In re Lonardo, 17 USPQ2d 1455
(Comm'r Pat. 1990)(delay caused by deception of applicant by applicant's
representative); Ex parte Pratt, 1887 Dec. Comm'r Pat. 31 (1887)(delay
caused by error by representative's clerical staff); In re Katrapat,
A.G., 6 USPQ2d 1863 (Comm'r Pat. 1988)(same). Such action, however, is
still considered a failure to engage in reasonable efforts to conclude
prosecution of the application.
Comment 24: Another comment argued that the reduction in 1.704(c)(4)
was unfair because it will generate a need for applicant to file a
petition under 1.705.
Response: The Office is mindful that if a petition to withdraw the
holding of abandonment is granted, the Office's PALM system records
should be checked to ensure that the correct term adjustment
determination is made. As discussed above, applicants may check the
Office's PALM system records for their applications through PAIR at
http://pair.uspto.gov (and are encouraged to do so). For example, if
applicant shows that a reply was filed in the Office on March 2, but the
March 2 reply was never matched with the file, when the petition to
withdraw the holding of abandonment is granted, the receipt of a paper
on March 2 should be recorded on the Office's PALM system records. An
applicant who receives a Notice of Abandonment and does not request that
the holding be withdrawn within two months of the mailing date of the
notice, however, is considered to have failed to engage in reasonable
efforts to conclude prosecution and it is appropriate to use this period
under 1.704(c)(3) as a reduction.
Comment 25: One comment generally agreed with 1.704(c)(4), but
objected to a "blameless applicant" who never received a Notice of
Abandonment experiencing a reduction in term adjustment because they did
not reply to the Notice within two months.
Response: The Office currently issues over 160,000 patents each year.
The only practical way to perform the calculations required by the
patent term adjustment provisions of 35 U.S.C. 154 (and its
implementation regulations) is by a program using the information
contained in the PALM system. If the patent term adjustment were to be
manually calculated for each application, the time required for the term
adjustment calculation could exceed the time required to otherwise
process the application. In order to minimize the cost of the patent
term adjustment determination and conserve resources for examination of
the application (e.g., the prior art search and a decision of whether
the claims are patentable), it is imperative that as much of the
computation be done using the Office's automated information systems.
The computer program must rely upon the information in the Office's PALM
system records for the dates of receipt of applicant correspondence and
the dates of mailing of Office actions or notices and of the nature of
such applicant correspondence and Office actions or notices. As
discussed above, applicants may check the Office's PALM system records
for their applications through the PAIR system at http://pair.uspto.gov
(and are encouraged to do so).
Comment 26: Two comments argued that in 1.704(c)(5), the reduction
for conversion of a provisional application to a non-provisional
application should only offset periods of adjustment in 1.703(a)(1)
and (b) (the fourteen-month and three-year provisions).
Response: 35 U.S.C. 154(b)(2)(C)(i) provides 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 of the application." In any event, requesting
conversion of a provisional application into a nonprovisional
application is a poor choice for any applicant interested in maximizing
patent term. See Changes to Application Examination and Provisional
Application Practice, Interim Rule, 65 FR 14865, 14866 (Mar. 20, 2000),
1233 Off. Gaz. Pat. Office 47, 47 (Apr. 11, 2000). In addition,
converting a provisional application into a nonprovisional application
(rather than simply processing a nonprovisional application that claims
the benefit of the provisional application's filing date) requires
exception processing by the Office. As discussed above, applicants who
prosecute applications in a manner that requires exception handling by
the Office have no complaint concerning the negative patent term impacts
that result from their poor choices.
Comment 27: Several comments argued that the provisions of
1.704(c)(6) reducing patent term adjustment for all the time taken by an
applicant to complete the requirements of a patent application were an
unfair penalty. The comments argued that there should be a relationship
between the reduction and an adjustment, that the Office should be able
to demonstrate that the actions of the applicant resulted in delays in
examination of that application, and that it was not unreasonable to
file an application as soon as possible and to file an executed oath or
declaration, formal drawings or a translation of the application at a
later date. Another comment argued that the provisions of 1.704(c)(6)
penalized an applicant for the Office's delay in assigning an
application number. Another comment argued that it is better for the
Office for the applicant to wait until a Notice to File Missing Parts of
Application is received than for the applicant to file the missing parts
after filing the application and without a copy of a Notice to File
Missing Parts of Application, and that the reduction should be measured
from the mailing date of the notice.
Response: The Office has revised 1.704 to eliminate proposed
1.704(c)(6), such that missing parts (missing filing fee, oath or
declaration, and missing English language translation of a non-English
language application) and application formalities (specification on
papers in compliance with 1.52, title and abstract in compliance with
1.72, drawings in compliance with 1.84, and sequence listings in
compliance with 1.821 et seq.) are treated under 1.704(b). Thus,
any patent term adjustment will be reduced if an applicant does not
supply the missing part or correct the informality within three months
of the Office action or notice requiring the missing part or correction
of the informality.
Comment 28: One comment argued that 35 U.S.C. 154(b)(2)(C)(ii) provides
that a reply filed within three months of the date of an Office action
or notice setting forth a requirement should not result in any patent
term adjustment penalty. The comment also argued that since the
eighteen-month publication rules permit a redacted application to be
filed up to sixteen months from the priority date, the requirement for
papers to be filed for purposes any earlier than this date was not
justified. Another comment argued that the provisions of proposed
1.704(c)(6) were too strict and that applicants should be given three
months to complete formal requirements after receiving notice of the
necessary formal requirements. The comment argues that a period of three
months after the Office makes any rejection, objection or other request
should be considered prima facie reasonable. Another comment argued that
the period in which an applicant is considered to have "failed to engage
in reasonable efforts" should begin with the date on which applicant is
given notice of the defect.
Response: While the Office has revised 1.704 such that missing parts
and application formalities are treated under 1.704(b) (as discussed
above), this revision to 1.704 is not required by the provisions of
35 U.S.C. 154(b)(2)(C). Since 35 U.S.C. 154(b)(2)(C)(iii) provides for
the Office to prescribe regulations establishing the circumstances that
constitute a failure of an applicant to engage in reasonable efforts to
conclude processing or examination of an application, 35 U.S.C.
154(b)(2)(C)(ii) cannot be considered exhaustive of the circumstances
for which an applicant may be determined to have failed to engage in
reasonable efforts to conclude processing or examination of an
application. If the Office determines that treating missing parts and
application formalities under 1.704(b) is causing the Office to miss
the time periods set forth in 35 U.S.C. 154(b)(1), the Office will need
to reconsider its original proposal to treat missing parts and
application formalities as a failure to engage in reasonable efforts to
conclude processing or examination without regard to whether the
applicant has been given a prior reminder or notice to supply the
missing part or correct the informality.
As to the provisions for a redacted application to be filed up to
sixteen months from the earliest priority date or filing date of the
application, these provisions are not relevant to whether filing
components of an application after the filing date of the application is
a failure to engage in reasonable efforts to conclude processing or
examination of an application. The timing of when a redacted application
is filed is irrelevant to the prosecution of an application because the
filing of a redacted copy of an application is completely unrelated to
prosecution of the application.
Comment 29: One comment suggested that the missing parts practice in the
Office of Initial Patent Examination (OIPE) be expanded to include
examination of components required for eighteen-month publication so as
to minimize any term adjustment reductions.
Response: The Office plans to modify the review in OIPE to include items
necessary for publication of applications.
Comment 30: Another comment argued that proposed 1.704(c)(6) was in
conflict with the diligence requirements of 1.47 and frustrates a
fundamental objective of patent law (i.e., encouraging an applicant to
file a patent application as soon as possible). The comment argues that
because inventorship is not determined until the claims are finalized
and because of the requirement for diligence under 1.47, it is not
possible to file a petition under 1.47 for months after an
application is filed.
Response: As discussed above, the Office has revised 1.704 to
eliminate proposed 1.704(c)(6), such that missing parts (missing
filing fee, oath or declaration, and missing English language
translation) are treated under 1.704(b), in that any patent term
adjustment will be reduced if an applicant does not supply a missing
filing fee, oath or declaration, or English-language translation within
three months of the Office notice requiring the filing fee, oath or
declaration, or English-language translation.
In the event that one or all of the inventors refuse to execute the oath
or declaration, the Office cannot process the application for
publication or examine the application until the party filing the
application on behalf of the inventor(s) establishes that he or she is
the appropriate applicant and that the requirements of 35 U.S.C. 116 and
118 have been met.Thus, if one or all of the inventors refuse to execute
the oath or declaration, a grantable petition under 1.47 must be
filed within three months of the Office notice requiring an executed
oath or declaration (e.g., a Notice to File Missing Parts of Application
(PTO- 1533)) to avoid a reduction of any patent term adjustment under
1.704(b). While the patent law does encourage the filing of a patent
application as soon as possible (e.g., to avoid a bar under 35 U.S.C.
102(b)), 1.47 (35 U.S.C. 116 and 118) was not intended to give
applicants a longer time to prepare an application for filing. See Ex
parte Sassin, 1906 Dec. Comm'r Pat 205, 206 (1906).
Comment 31: Several comments argued that the provisions of proposed
1.704(c)(7) unfairly discriminated against PCT applicants and ignored
the legislative history of the Act. These comments suggested that the
Office should define, for purposes of patent term adjustment, the
"actual filing date" as the date that all requirements for entry into
the national stage are met. Another comment argued that the provisions
of proposed 1.704(c)(7) and (c)(8) undermine the benefits provided by
the international phase procedure under the PCT. This comment also: (1)
suggested that any period of patent term adjustment under the three-year
pendency provision of 35 U.S.C. 154(b)(1)(B) be reduced by the number of
days (if any) beginning on the date on which the national phase
commences under 35 U.S.C. 371(b) or (f) and ending on the day the
applicant completes the requirements for entry into the national phase;
(2) observed that events that occur in the international phase advance
prosecution because formalities are resolved, a search is conducted, and
preliminary examination is begun; (3) argued that proposed
1.704(c)(7) will force applicants to forgo their entitlements under the
treaty or risk a reduction in a term adjustment, and that applicants
under the PCT will be in a worse position than regular national
applicants; and (4) noted that someone who files a "bypass" application
(an application under 35 U.S.C. 111 claiming the benefit of the
international application under 35 U.S.C. 120) instead of entering the
national phase under 35 U.S.C. 371 will not have the international phase
used as a reduction to any term adjustment. The comments also argued
that the provisions of proposed 1.704(c)(8) were unfair for the same
reasons as stated for proposed 1.704(c)(7). Finally, several comments
requested clarification of, or made suggestions, for the language of
proposed 1.704(c)(7) and proposed 1.704(c)(8).
Response: The Office is interpreting the phrase "actual filing date of
the application in the United States" in 35 U.S.C. 154(b)(1)(B) to mean
the date the national stage commenced under 35 U.S.C. 371(b) or (f) in
the case of an international application. The Office originally
interpreted the phrase "actual filing date of the application in the
United States" in 35 U.S.C. 154(b)(1)(B) to mean the international
filing date of the application under PCT Article 11(3) and 35 U.S.C. 363
in the case of an international application.See Changes to Implement
Patent Term Adjustment Under Twenty-Year Patent Term, 65 FR at 17220,
1233 Off. Gaz. Pat. Office at 113. Further consideration of this
position, however, leads to the conclusion that: (1) the interpretation
of the phrase "actual filing date of the application in the United
States" in 35 U.S.C. 154(b)(1)(B) to be the filing date of the
international application under PCT Article 11(3) and 35 U.S.C. 363 in
the case of an international application is inconsistent with the
legislative history of 35 U.S.C. 154(b)(1)(B) and is incongruous with
the provisions of 35 U.S.C. 154(b)(1)(A)(i)(II) and (B)(iii); and (2)
the phrase "actual filing date of the application in the United States"
in 35 U.S.C. 154(b)(1)(B) must mean the date the national stage
commenced under 35 U.S.C. 371(b) or (f) in the case of an international
application.
Without resort to guides to interpretation (e.g., legislative history,
other provisions of title 35, U.S.C., or the PCT), the phrase "actual
filing date of the application in the United States" appears to mean
that the three-year period specified in 35 U.S.C. 154(b)(1)(B) is
measured from the date the application is actually filed (i.e.,
physically received) in the United States Patent and Trademark Office.
That is, the phrase "actual filing date of the application in the United
States" appears to mean the date that the application itself is
physically received in the United States Patent and Trademark Office,
regardless of whether it is an application filed under 35 U.S.C. 111(a)
or an international application filed under PCT Article 11.
As discussed above, the American Inventors Protection Act of 1999 was
enacted into law as part of Pub. L. 106-113. The Conference Report for
H.R. 3194 (which resulted in Pub. L. 106-113) does not contain any
discussion (other than the incorporated language) of the American
Inventors Protection Act of 1999 (title IV of S. 1948). See H.R. Conf.
Rep. No. 106-497, at 37 and 1089-174 (1999). A section-by-section
analysis of S. 1948, however, was printed in the Congressional Record at
the request of Senator Lott. See 145 Cong. Rec. S14,708-26 (1999)(daily
ed. Nov. 17, 1999). The section-by-section analysis explained that:
day-for-day restoration of term is granted if the [Office] has not
issued a patent within three years after "the actual date of the
application in the United States." This language was intentionally
selected to exclude the filing date of an app