IP Law Daily, PATENT NEWS: USPTO proposes changes to patent term adjustment rules in light of Federal Circuit’s Novartis decision, (Jun 18, 2014)

By Cheryl Beise, J.D.

The USPTO has issued a notice seeking comments on proposed changes to the agency’s patent rules of practice pertaining to the patent term adjustment provisions (79 Fed. Reg. 34682, June 18, 2014) in light of the Federal Circuit’s January 15, 2014 decision in Novartis AG v. Lee, clarifying the effect of continued examination on the rules pertaining to patent term adjustments.

In Novartis, the Federal Circuit held that any time consumed by continued examination under 35 U.S.C. §132(b) is subtracted when determining the extent to which the period defined in 35 U.S.C. §154(b)(1)(B) exceeds three years, regardless when the continued examination under 35 U.S.C. §132(b) was initiated. The Federal Circuit also ruled that the time consumed by continued examination under 35 U.S.C. §132(b) does not include the time after a notice of allowance unless the Office actually resumes examination of the application after allowance.

The USPTO is proposing to amend 37 CFR §1.703 to provide that the time consumed by continued examination under 35 U.S.C. §132(b) does not include the time after a notice of allowance, unless the Office actually resumes examination of the application after allowance. This rule is intended to ensure that an applicant does not obtain multiple periods of patent term adjustment under 35 U.S.C. §154(b)(1)(B) as a consequence of delaying the issuance of the application by filing request(s) for continued examination under 35 U.S.C. §132(b) following the issuance of a notice of allowance under 35 U.S.C. §151.

The agency also is proposing to amend 37 CFR §1.704 to include a provision that establishes that the submission of a request for continued examination under 35 U.S.C. §132(b) after a notice of allowance under 35 U.S.C. §151 has been mailed will constitute a failure of an applicant to engage in reasonable efforts to conclude the processing or examination of an application and thus will result in a reduction of any period of patent term adjustment under 35 U.S.C. §154(b)(1).

Written comments on the proposed rule changes must be received on or before August 18, 2014. More information about the proposed rulemaking and instructions for submitting comments is available in the notice.

News: Patent USPTO