calculating sec. 154 patent term adjustments

PATENT TERM ADJUSTMENT CALCULATIONS UNDER 35 U.S.C. § 154(b)

“Playing Sudoku With The USPTO”

Sudoku (sūdoku) is a logic-based, combinatorial number-placement puzzle.

TOPICS

• Application eligibility• Grounds for adjustment• Common adjustments and reductions

thereto• Recommended procedures and examples• Wyeth v Kappos and 371(b) USPTO errors• Pre- and post-grant correction application

and contents • Appeal of determinations• Practice tips and help

APPLICATION ELIGIBILITY

• Ineligible: Applications filed before June 8, 1995 and all design patents

• Applications filed between and including June 8, 1995 and May 28, 2000 under old 35 U.S.C. § 154(b) [37 CFR § 1.701]

• Applications filed on or after May 29, 2000 under 35 U.S.C. § 154(b) [37 CFR § 1.702-1.705]

Old 35 U.S.C. § 154(b) “Extensions” (not Adjustments)

• Original patents (i.e. no reissues)

• Maximum extension of 5 years

• Day for day extension only for delays attributable to interferences, secrecy orders, or successful appellate review (BPAI, CAFC, or DC)– Appellate extension only for 3 yrs after filing

• Request for correction via 37 CFR § 1.181 within 2 months of Notice of Allowance

NEW 35 U.S.C. § 154(b) “ADJUSTMENTS”

• Original patents (i.e. no reissues)• Day for day term adjustment due to:

– (A) USPTO delay: 14-4-4-4 Rule– (B) USPTO delay: 3 year Rule– (C) Interferences, secrecy orders and successful

appeals

• Adjustments reduced by– Calendar day overlaps of adjustments– Terminal disclaimers– Applicant delays in prosecution

NEW 35 U.S.C. § 154(b) “ADJUSTMCENTS” Cont’d

• Request for correction by application and fee– Before issue fee payment for most A and C

circumstances (max 3 months from notice of allowance)

– Non-extendable two months of the issue date for B circumstances and some A circumstances

• Appeal of USPTO patent term adjustment via DC Court within 180 days of issue

(A) GROUNDS: 37 CFR § 1.702(a) (14-4-4-4 RULE) USPTO FAILURE TO:

• Provide an exam action on an application within 14 months of the 111a filing date or 371(c) date.

• Respond to a reply to an office action response or to a compliant appeal brief within 4 months.

• Act on an application within 4 months after the date of a decision by the BPAI in an appeal or interference or a decision by a Federal court in which allowable claims remain in an application

• Issue a patent within 4 months after payment of the issue fee.

(B) GROUNDS: 37 CFR § 1.702(b) (3 YEAR RULE) USPTO FAILURE TO:

• Issue a patent within 3 years after the filing date of the application [111a or 371(b or f)] not including:– Time after the filing of an RCE– Time consumed in an interference,

appellate review by BPAI or Federal courts, or imposition of a secrecy order

– Time due to applicants request to delay processing

COMMON A AND B DELAYS ELIGIBLE FOR DAY FOR DAY ADJUSTMENT: 37

CFR 1.703

• USPTO delays first exam action to after 14 months• USPTO delays action to a response to after 4 months• USPTO delays issue to after 4 months from issue fee• USPTO delays issue of patent beyond 3 yearsImportantly!• Beyond 4 month periods are not additive to the

eligible periods under the 14 month or the 3 yr. rule• The eligible periods under the 14 month and 3 yr.

rule are additive if there is no calendar day overlap (Wyeth vs Kappos)

REDUCTIONS TO ADJUSTMENT 37 USC § 1.704

• Any period, on a day for day basis, wherein Applicant delays prosecution

• Many grounds for reductions but most commonly:– Not responding to an Office notice/action within 3

months (But you always get 3 months!)– Supplemental responses and submissions that

impede Office actions– Filing an RCE or Terminal disclaimer

• Note! Date calculated from day of USPTO receipt except for Express Mail procedure

STEPS IN PTA VERIFICATION

• Access a between-date duration calculator– http://www.timeanddate.com/date/duration.html

• Access Patent Term Adjustment file in PAIR• Verify the start dates for the 14 month and 3 yr rules• Calculate your 14 month and 3 yr dates• Verify calculations for USPTO and your delays • Sum eligible adjustment periods (14 mon, 3 yr, other)• Subtract your delay periods and compare answers

VOILA!

Example For 111a Application PAIR ADJUSTMENT FILE

Patent Term Adjustments

Patent Term Adjustment (PTA) for Application Number: 11/184,429

Filing or 371(c) Date: 07-18-2005 USPTO Delay (PTO) Delay (days): -

Issue Date of Patent: 01-05-2010 Three Years: -

Pre-Issue Petitions (days): - Applicant Delay (APPL) Delay (days): -

Post-Issue Petitions (days): - Total PTA (days): 192

USPTO Adjustment(days): - Explanation Of Calculations

14 month date is 9-18-2006

3 yr date is 7-18-2008 [Potentially eligible under 35 USC § 154(b)(1)(B)]

PAIR ADJUSTMENT FILE

09-27-2007 Mail Restriction Requirement 374

09-26-2007 Requirement for Restriction / Election

06-22-2007 Reference capture on IDS

06-22-2007 Information Disclosure Statement (IDS) Filed


03-24-2006 IFW TSS Processing by Tech Center Complete

03-24-2006 Case Docketed to Examiner in GAU

02-27-2006 Application Dispatched from OIPE

02-27-2006 Application Is Now Complete

9-27-2007 is beyond 14 month date of 9-18-2006 so eligible under 35 USC § 154(b)(1)(A)

Potential PTA35 USC § 154(b)(1)(A)

From and including: Tuesday, September 19, 2006To and including: Thursday, September 27, 2007It is 374 days from the start date to the end date, end date included

POTENTIAL PTA35 USC § 154(b)(1)(B)

From and including: Saturday, July 19, 2008To and including: Tuesday, January 5, 2010It is 536 days from the start date to the end date, end date includedNo additional USPTO delays were detected under 4 month rule

REDUCTION TO ADJUSTMENTS 1

02-15-2006 Additional Application Filing Fees 96

02-15-2006 A statement by one or more inventors satisfying the requirement under 35 USC 115, Oath of the Applic

08-11-2005 Notice Mailed--Application Incomplete--Filing Date Assigned

From and including: Saturday, November 12, 2005(3 months for reply)To and including: Wednesday, February 15, 2006It is 96 days from the start date to the end date(end date included)


From and including: Friday, August 8, 2008(3 months for reply)To and including: Tuesday, August 19, 2008It is 12 days from the start date to the end date(end date included)

08-19-2008 Response after Non-Final Action 12

08-19-2008 Request for Extension of Time - Granted

05-07-2008 Mail Non-Final Rejection


05-13-2009 Request for Continued Examination (RCE) 74

05-20-2009 Disposal for a RCE / CPA / R129


05-13-2009 Workflow - Request for RCE - Begin

11-28-2008 Mail Final Rejection (PTOL - 326)

From and including: Sunday, March 1, 2009(3 months for reply)To and including: Wednesday, May 13, 2009It is 74 days from the start date to the end date(end date included)

RCE REDUCTION

01-05-2010 Patent Issue Date Used in PTA Calculation

11-24-2009 Dispatch to FDC

11-17-2009 Application Is Considered Ready for Issue

05-20-2009 Date Forwarded to Examiner

05-13-2009 Request for Continued Examination (RCE) 74

From and including: Wednesday, May 13, 2009To and including: Tuesday, January 5, 2010It is 238 days from the start date to the end(end date included)

FINAL PTA CALCULATIONS

• 35 USC § 154(b)(1)(A) Adjustments = 374 days

• 35 USC § 154(b)(1)(B) Adjustments• [536- 238 (RCE days)] = 298 days

• 35 USC § 154(b)(2)(C) Reductions• [96 + 12 + 74] = 182 days

• Total Adjustment• [(374 + 298) – 182] = 490 days

• USPTO Adjusted only 192 days (Wyeth v Kappos effect)

Wyeth v Kappos Decided by CAFC 1-7-2010

• Prior USPTO interpretation of 35 USC 154(b)(2)(A) was that 154(b)(1)(A) and 154(b)(1)(B) delays overlapped so only the longer of the two was eligible for adjustment

• Interpretation overruled by both the DC Court and CAFC so (A) periods and (B) periods are now additive to the extent they do not overlap on calendar days

• Interim form PTO/SB/131 was available for corrections solely due to Wyeth v Kappos for patents issued within 180 days prior to March 2, 2010

371 Application Example PAIR ADJUSTMENT FILE

Patent Term Adjustments

Patent Term Adjustment (PTA) for Application Number: 10/583,814

Filing or 371(c) Date: 06-04-2007 USPTO Delay (PTO) Delay (days): -

Issue Date of Patent: 01-19-2010 Three Years: -

Pre-Issue Petitions (days): - Applicant Delay (APPL) Delay (days): -

Post-Issue Petitions (days): - Total PTA (days): 160

14 month date is 8-04-2008

3 yr date is 6-4-2010 Ineligible for PTA?

No! For 3 yr date, date is measured from 371 (b or f) date(371(b) date is 30 months after priority date for PCT filing)[This calculation error was just discovered in 2009]

10/583,814 IMAGE FILE

06-22-2006 TRNA Transmittal of

New Application

PROSECUTION 3

06-22-2006 SPEC Specification PROSECUTION 243

06-22-2006 CLM Claims PROSECUTION 21

06-22-2006 ABST Abstract PROSECUTION 1

3 yr date is actually 6-22-2009, Potentially eligible for PTA under 35 USC § 154(b)(1)(B) since issue date was 1-19-2010

PAIR PTA FILE: USPTO DELAY02-11-2009

Mail Non-Final Rejection 191

02-06-2009

Non-Final Rejection

12-26-2007

Preliminary Amendment

12-19-2007

Case Docketed to Examiner in GAU

12-12-2007

Email Notification

12-07-2007

IFW TSS Processing by Tech Center Complete

12-11-2007

Mail Non-Compliant Preliminary Amendment

12-07-2007

Non-Compliant Preliminary Amendment

10-21-2007

Email Notification

10-19-2007

PG-Pub Issue Notification

07-17-2007

Application Dispatched from OIPE

06-04-2007

371 Completion Date

Calculations verify that firstaction from 371(c) date was 191 days after 14 month date

A Notice of Allowance wasmailed within four months of applicants response sothere was no further USPTOdelay.

Patent issued on 1-19-2010211 days beyond the 3 yrdate

APPLICANT REDUCTIONS FOR DELAY

09-15-2009 Mail Notice of Allowance

09-11-2009 Document Verification

09-11-2009 Notice of Allowance Data Verification Completed

09-10-2009 Examiner's Amendment Communication

06-11-2009 Information Disclosure Statement considered

07-08-2009 Date Forwarded to Examiner

06-11-2009 Response after Non-Final Action 31


06-11-2009 Reference capture on IDS



02-11-2009 Electronic Review

02-11-2009 Email Notification

Calculations verify thatApplicant delayed 31 days beyond 3 month date in replying to first action.

FINAL PTA CALCULATIONS

• 35 USC § 154(b)(1)(A) Adjustments = 191 days

• 35 USC § 154(b)(1)(B) Adjustments = 211 days

• 35 USC § 154(b)(2)(C) Reductions = 31 days

• Total Adjustment

[(191 + 211) – 31] = 371 days

• USPTO Adjusted only 160 days (Wyeth v Kappos effect and 371(b) error)

PRE-GRANT CORRECTION OF PTA

• First opportunity is following Notice of Allowance but before issue fee payment (3 month non-extendable)– Only applicable for 35 USC § 154(b)(1)A and C, not B

• Requires request (application) and $200 fee• Do not delay requests for most A and C corrections until

after grant– after issue requests cannot raise new issues or

issues that could have been raised in the earlier application for correction (37 CFR 1.705(e))

• Corrections for reductions due to response delays are available under basically “unavoidable” standards

POST-GRANT CORRECTION OF PTA

• Only for causes that could not have earlier been raised, e.g., 35 USC 154(b)(1)(B) grounds, late issue

• Must file within a non-extendable two months of issue

• Requires request (application) and $200 fee

*Note that requests for corrections before notice of allowance or B corrections before grant are dismissed.

APPLICATION FOR CORRECTIONCONTENT

• The fee according to 37 CFR 1.18(e)• A statement of the facts involved, specifying:

– Correct patent term adjustment and the 37 CFR 1.702 grounds

– Relevant dates for which adjustment period is sought under 37 CFR 1.703(a)-(e) and the adjustment period to which the patent is entitled under 1.703(f)

– Whether the patent is subject to a terminal disclaimer and any expiration date specified in the terminal disclaimer

– Dates and circumstances for reduction to adjustments (37 CFR 1.704) or statement that there were no such circumstances

PTA CORRECTIONS IN THE USPTO’S FAVOR

• Duty of candor requires you to notify the USPTO of corrections in their favor

• An application under 37 CFR 1.705 is not required

• MPEP 2733– Letter citing error + issue fee payment is adequate– Alternatively, request certificate of correction after

issue• Applicable even after the two months from

issue when submitted with a letter of candor

APPEAL OF CORRECTIONS• Appeal to the DC District Court is available if made within

180 days after the patent grant

• The DC Court has just remanded timely filed Wyeth v Kappos corrections to the USPTO

• Unclear what fate awaits PTA due to Wyeth v Kappos in patents that are beyond 180 days of grant without pending suits

*Note, recently, some companies have had to file appeals before USPTO decisions to preserve their 180 day rights

PRACTICE TIPS

• File responses electronically or via Express Mail • Manage responses to all notices (PTA running?) • Make telephone invention restrictions if available • Avoid incomplete applications, submissions after

allowance and non-compliant amendments, etc.• Avoid delaying examiner near office actions, e.g.,

preliminary amendments and IDS submissions• Manage or avoid PTA truncating RCEs• Fulfill 371(c) requirements early and expressly

request examination in early PCT nationalizations

USPTO HELP

• OPLA PTA help line 571-272-7702

calculating sec. 154 patent term adjustments

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