IP Law Daily, PATENT NEWS: USPTO proposes new Patent Term Adjustment form, (Jul 13, 2022)

By Cheryl Beise, J.D.

Use of the form will ensures an accurate PTA statement and eliminate manual review.

The USPTO is seeking comments on a proposal to revise the rules of practice to require that the patent term adjustment (PTA) statement regarding information disclosure statements be submitted on an Office form. The Office explains that use of Form PTO/SB/133 “will streamline certain aspects of prosecution by more accurately capturing and accounting for the patent term adjustment without unnecessary back-and-forth between the USPTO and applicant.” The PTO also expects use of the form to save resources by eliminating the need for a manual review of the patent term adjustment statement. Comments on the proposed rule and form are due by September 12, 2022 (87 Fed. Reg. 41267, July 12, 2022).

The Patent Act allows patent applicants to extend the expiration date of a patent from its original filing date when, through no fault of the applicant, the PTO fails to meet statutory deadlines for events that occur during prosecution or fails to issue a patent within three years after the application filing date. The patent term adjustment statute is codified in 35 U.S.C. § 154. The PTA regulations are set forth in 37 C.F.R. § 1.704.

Section 1.704(c) outlines certain circumstances—such as the failure of an applicant to engage in reasonable efforts to conclude processing or examination of an application—that will reduce a particular patent’s PTA. However, 37 CFR 1.704(d) provides a safe harbor by setting forth the circumstances that will not be considered a failure to engage in reasonable efforts to conclude processing or examination of the application. The current rulemaking proposes amending 37 CFR 1.704(d) to include new paragraph (d)(3) requiring that filers submit the patent term adjustment statement under 37 CFR 1.704(d)(1) on the Office Form PTO/SB/133 to derive benefit under 37 CFR 1.704(d).

Form PTO/SB/133 includes the patent term adjustment statement certifying that prior art or other information material to patentability was received within the 30-day window required for the safe harbor. Specifically, the form includes the statement that “[e]ach item of information contained in the information disclosure statement was first cited in any communication from a patent office in a counterpart foreign or international application or from the Office, and this communication was not received by any individual designated in 37 CFR 1.56(c) more than thirty days prior to the filing of the information disclosure statement.” The form also includes the alternative statement that “[e]ach item of information contained in the information disclosure statement is a communication that was issued by a patent office in a counterpart foreign or international application or by the Office, and this communication was not received by any individual designated in 37 CFR 1.56(c) more than thirty days prior to the filing of the information disclosure statement.” The filer of the form could select one or both of these statements.

The USPTO explains that use of form PTO/SB/133 is intended to: (1) ensure the accurate capture of the presence of a patent term adjustment statement under 37 CFR 1.704(d)(1) by the USPTO's IT system, and (2) eliminate the need to manually review an applicant's patent term adjustment statement to determine whether it is proper under 37 CFR 1.704(d)(1).

The Office notes that the USPTO's automatic system for calculating patent term adjustment will be more likely to account for the patent term adjustment statement if Form PTO/SB/133 is used, thereby eliminating the need to file a request for reconsideration of patent term adjustment under 37 CFR 1.705(b). On the other hand, filers who submit a patent term adjustment statement without using Office form PTO/SB/133 and filers who submit the new form with any modification to the form’s patent term adjustment statement will not receive the benefit of the safe harbor under 37 CFR 1.704(d).

News: Patent USPTO