Download - 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
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)
REDUCTION TO ADJUSTMENTS 2
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
REDUCTION TO ADJUSTMENTS 3
05-13-2009 Request for Continued Examination (RCE) 74
05-20-2009 Disposal for a RCE / CPA / R129
05-13-2009 Request for Extension of Time - Granted
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 Request for Extension of Time - Granted
06-11-2009 Reference capture on IDS
06-11-2009 Information Disclosure Statement (IDS) Filed
06-11-2009 Information Disclosure Statement (IDS) Filed
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