2733 Patent Term Adjustment Determination [R-2]>
37 C.F.R. 1.705 Patent term adjustment determination.
- (a) The notice of allowance will include notification of any patent term adjustment under 35 U.S.C. 154(b).
37 CFR 1.705 implements the provisions of 35 U.S.C. 154(b)(3) and (b)(4)(B) and 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)). The patent term adjustment determinations required by 35 U.S.C. 154(b)(3)(B)(i) are made 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. The Office currently issues a notice of allowance using a form entitled, Notice of Allowance and Fee(s) Due (PTOL-85). Since November 13, 2001, the Notice of Allowance and Fee(s) Due (PTOL-85) includes the patent term adjustment information on the third page of the form.
37 CFR 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 37 CFR 1.705(d)) and any request for reinstatement of all or part of the term reduced pursuant to 37 CFR 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. See MPEP § 2734 for a discussion of the requirements of any such request.
If a registered practitioner receives a notice of allowance with a patent term adjustment that is longer than expected, the practitioner should disclose the error to the Office in compliance with the practitioner’s duty of candor and good faith in practice before the Office. Where the correct patent term adjustment is thought to be less than indicated by the Office, an application for term adjustment under 37 CFR 1.705(b) need not be filed. Instead, a letter could be filed with the issue fee payment, indicating that the term adjustment is thought to be longer than appropriate. The Office does not require the practitioner to determine whether the Office’s patent term adjustment determination is correct. Alternatively, if a notice of allowance indicates a patent term adjustment that is longer than expected, since the Office frequently corrects the error after mailing the notice of allowance, the practitioner (or applicant) may wait until the patent issues, and if the patent issues with a value that is incorrect, request a certificate of correction.
Information as to how the patent term adjustment calculation has been made will be available through Patent Application Information Retrieval (PAIR) at http://pair.uspto.gov. This system is available to all patent applicants who have a customer number as the correspondence address for the application. Applicants should routinely use PAIR to check the accuracy of the data entered in the PALM system for their applications (i.e., the type of the paper and date of receipt in the Office) throughout prosecution. If any errors are detected, they should be brought to the Office’s attention (e.g., the examiner or the Technology Center’s customer service representative) as soon as possible to ensure that they are corrected before allowance of the application and the initial determination of the patent term adjustment. In checking Office records, applicants should keep in mind that the date that should be recorded in the Office computer records is the date of receipt of the paper, not the date that it was mailed under 37 CFR 1.8. In addition, if an original paper is misplaced by the Office and a duplicate is filed with a post card receipt showing the date of receipt of the original paper, the date shown on the post-card receipt for the original paper is the date that should be shown in the Office computer records. If Express Mail service was used, then the date shown as the “date in” on the Express Mail label will be entered into the Office computer records. Otherwise, the date reflected in the Office computer records for a duplicate copy of correspondence will normally be the date that the duplicate was received in the USPTO. <