Patent Term Adjustment: 2015 Final Rules
The United States Patent and Trademark Office (PTO) issued a final rule regarding the effect of filing a Request for Continued Examination (RCE) on Patent Term Adjustment (PTA). In the case of Novartis v. Lee, the Federal Circuit generally agreed to limit the PTA after the filing of an RCE. The Federal Circuit also held that the time from patent application allowance to issuance is not equivalent to the time spent in examination since that period ends when a Notice of Allowance (NOA) is issued. The patent statute nominally guarantees that a patent will issue within three years of filing. If the USPTO delays in issuing the patent, the patentee will be awarded PTA of a day for each day of delay by the USPTO.
Filers should be aware that, under final rule 37 CFR 1.704(c)(12) effective on March 10, 2015, filing an RCE after NOA is considered a failure to reasonably conclude prosecution, and reduces a PTA by the number of days from mailing of NOA to RCE filing (Rule 703). Rule 704 contains an exception to the above when the RCE is filed only to submit an Information Disclosure Statement (IDS). If it is stated that all information in the IDS was previously cited or issued by a foreign patent office less than 30 days prior to filing of the IDS, the RCE will not reduce available PTA.
In this 2-hour, LIVE Webcast, a panel of key thought leaders organized by The Knowledge Group will review and discuss the nuances and changes in regulations regarding Patent Term Adjustment (PTA) and help attendees understand when to file a Request for Continued Examination (RCE) with the U.S. Patent and Trademark Office (USPTO). The speakers will discuss the consequences of the new ruling and provide best practices for optimal filing.
Key topics include:
- Patent Term Adjustment (PTA)
- Novartis AG v. Lee: Consequences
- Revisions in the Rule
- Request for Continued Examination (RCE)
- Statute 35 U.S.C. 154(b)(1)(B) – Provisions
- Potentiality to Create Precedent
- B-term Delay
- Recent Regulatory Updates
- Non-Compliance Risks
Robert Irani, Partner
- Change in patent term from 17 years from issuance to 20 years from filing or national stage entry date
- prompted creation of patent term adjustment to compensate for certain processing delays at the USPTO
- 35 U.S.C. 154(b)(1) United States Patent Act, the term of a patent may be extended in instances when the issuance of a patent was delayed due to:
- (B) GUARANTEE OF NO MORE THAN 3-YEAR APPLICATION PENDENCY
- Failure by the USPTO to issue a patent within 3 years of the actual filing date or national stage entry of an international application (B delay), not including "any time consumed by continued examination" requested by the applicant; or
- 35 U.S.C. 154(b)(2)(C) period of adjustment may be reduced:
- "by a period equal to the period of time during which the applicant failed to engage in reasonable efforts to conclude prosecution of the application"
- USPTO granted authority to "prescribe regulations establishing the circumstances that constitute a failure of an applicant to engage in reasonable efforts to conclude processing or examination of an application".
- Novartis - January 15, 2014 Federal Circuit issued its decision regarding effect of an RCE on patent term
- Issue - whether USPTO had incorrectly interpreted Section 154(b)(1)(B) of the Patent Act regarding B delay calculations where an RCE was submitted during prosecution.
- Novartis challenged USPTO interpretation on two grounds:
- RCE was only meant to limit the B delay when filed within the first 3 years of prosecution
- the time consumed by continued examination was limited to the time between the filing of the RCE and the allowance of the application.
- CFR 1.703 (b)(1) Period of adjustment of patent term due to examination delay
- As written, as of Novartis, no patent term adjustment award after filing date of RCE
- Federal Circuit partially upheld and partially reversed USPTO interpretations.
- Agreed with USPTO that no adjustment of time available during the time consumed by continued examination, even when initiated more than three years after the filing date of the application
- Agreed with Novartis that examination presumptively concluded at allowance
- At allowance, prosecution is closed and there is normally no further examination on the merits.
- Unless examination resumed, the period of time between allowance and issuance would be eligible for consideration under B term delay.
- Patents in which an RCE filed may be entitled to a longer term as the period of time between allowance and issuance may be considered in calculation of a PTA award.
- USPTO Final Patent Term Adjustment Rules
- January 9, 2015, USPTO published final rules implementing changes to patent term adjustment (PTA).
- Revised 37 CFR 1.703(b)(1), effective January 9, 2015:
- (b) The period of adjustment under § 1.702(b) is the number of days, if any, in the period beginning on the day after the date that is three years after the date on which the application was filed under 35 U.S.C. 111(a) or the national stage commenced under 35 U.S.C. 371(b) or (f) in an international application and ending on the date a patent was issued, but not including the sum of the following periods:
- (1) The number of days, if any, in the period beginning on the date on which a request for continued examination of the application under 35 U.S.C. 132(b) was filed and ending on the date of mailing of a notice of allowance under 35 U.S.C. 151
- 37 CFR § 1.704(c)(12), effective for RCE’s filed after March 10, 2015, reads as follows:
- (12) Submission of a request for continued examination under 35 U.S.C. 132(b) after any notice of allowance under 35 U.S.C. 151 has been mailed, in which case the period of adjustment set forth in § 1.703 shall be reduced by the number of days, if any, beginning on the day after the date of mailing of the notice of allowance under 35 U.S.C. 151 and ending on the date the request for continued examination under 35 U.S.C. 132(b) was filed.
- Consequently, the filing of an RCE after a notice of allowance can result in PTA loss between the date of the notice of allowance and the date of the RCE filing.
Mark Thronson, Partner
Dickstein Shapiro LLP
- Oftentimes the most valuable portion of a U.S. patent’s term is its last few months or years. I will review the empirical data and observations which show this to be the case.
- The PTO’s January 9, 2015 final rule did more than simply implement the Federal Circuit’s Novartis decision. I will explain the new rules and what can be done to avoid the loss of accrued patent term adjustment.
- I will also discuss the PTO’s Quick Path IDS pilot program, and how it may be used to avoid PTO filing fees and the loss of accrued patent term adjustment.
- It is important to take a close look before filing an RCE after allowance. An RCE can be time-consuming, the PTO filing fee is much greater than it used to be, and now, under the new rules, an RCE may result in the loss of patent term adjustment.
John C. Donch, Jr., Shareholder
Volpe and Koenig, PC
- In light of inspector general report…should applicants be entitled PTA
- Applications related to rapidly changing areas – should PTA rules we altered to adapt
- Telecomm & FCC, should patent terms be extended to other agencies
Who Should Attend:
- Intellectual Property
- IP Counsel
- Patent Attorneys
- Patent Licensing Attorneys
- Legal and Compliance Executives
- Corporate Counsel
- Other Related/Interested Professionals
Robert is both a United States and Canadian lawyer, earning both a U.S, and Canadian law degree. Robert is also a registered Canadian Patent Agent and a United States Patent Attorney, qualified to practice before the United States Patent and Trademark Office in patent and trademark matters.
Robert concentrates his practice in the area of intellectual property law, counseling clients on a variety of intellectual property related matters. With a particular emphasis on the practice of U.S. and Canadian patent law, Robert regularly conducts freedom-to-practice, invalidity, and infringement investigations, that cover a wide range of technologies, including those in the mechanical, pharmaceutical, chemical, energy and oil and gas industries.
Robert ranked first in his graduating class at the University of Detroit Mercy. Robert's other academic awards include the Bereskin & Parr Award in Industrial and Intellectual Property, the CALI Award in Copyright Law for attaining the highest grade, the CALI Award in Patent Law for attaining the highest grade, the University of Detroit Mercy Book Award in Copyright Law and the University of Detroit Mercy Book Award in Patent Law.
In addition to his memberships with the State Bar of Texas, the District of Columbia Bar and the Law Society of Alberta, Robert is admitted to the United States District Court for the Northern District of Texas and the United States Court of Appeals for the Federal Circuit.
Robert is both a United States and Canadian lawyer, earning both a U.S, and Canadian law degree. Robert is also …
Mark Thronson is a partner in Dickstein Shapiro's Intellectual Property Practice. Mark has thirty-two years of successful experience in virtually every aspect of patent law, including patent litigation, patent post-grant proceedings, patent prosecution, opinions/counseling, patent licensing, and alternative dispute resolution. Mark has represented many of the world’s largest and most important companies in a wide range of technologies.
From 1982 to 1988, Mark was an examiner at the U.S. Patent and Trademark Office. From 1994 to 2009, Mark was an adjunct professor at Johns Hopkins University, where he taught intellectual property law to graduate business students. In 2013, he received the prestigious Burton Award for distinguished legal writing. Mark has an undergraduate degree in civil engineering, and he received his law degree, with honors, from George Washington University.
Mark Thronson is a partner in Dickstein Shapiro's Intellectual Property Practice. Mark has thirty-two years of successful experience in virtually …
John focuses his practice on securing, licensing and optimizing the value of intellectual property rights. His practice includes portfolio strategy, SDO compliance, claim charts, domestic and foreign patent prosecution, patent validity and infringement analysis, state-of-the-art and patentability opinions, IP landscaping analysis, licensing, and due diligence. John is vice chair of the Firm’s electrical practice group.
John enjoys working closely with clients and counseling them on IP strategies for realizing their business objectives and maximizing the value of their IP assets. John regularly counsels clients on patent portfolio development and strategy, patent prosecution strategy, patent acquisitions, patent divestitures, and monetization of currently owned patent assets. He focuses on securing, managing and protecting intellectual property rights to optimize their value and developing/implementing results-oriented strategies on behalf of clients.
Though his technical experience is varied, John’s particular area of focus includes wireless communications, computer hardware, computer software, interactive entertainment systems and processes, semiconductors, and electronics.
John focuses his practice on securing, licensing and optimizing the value of intellectual property rights. His practice includes portfolio strategy, …
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About Bennett Jones
Bennett Jones is home to more than 380 lawyers and business advisors in ten offices – Calgary, Toronto, Edmonton, Ottawa, Vancouver, Doha, Dubai, Washington, DC, Bermuda, and Beijing. The firm’s professional practice encompasses virtually every sector of business, industry and government. Operating as an integrated unit across its geographic locations, the firm’s business practice is to assign lawyers to work on client files who have the skills and experience that best meet clients’ needs.
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Founded in 1953, Dickstein Shapiro is internationally recognized for its work with clients, from start-ups to Fortune 500 corporations. Dickstein Shapiro provides strategic counsel and develops multidisciplinary legal solutions by leveraging its core strengths—litigation, regulatory, transactions, and advocacy—to successfully advance clients’ business interests.
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About Volpe and Koenig, PC
Founded in 1987, Volpe and Koenig, P.C. is a full service boutique intellectual property law firm. With over 50 attorneys, patent agents and technical advisors, Volpe and Koenig, P.C. specializes in all areas of technology and serves a diverse roster of U.S. and global clients.
Our team of attorneys and professional staff have advanced technical degrees and experience working within a wide range of industries – including computer technology, electrical components and life sciences. This blend of expertise in technology and law allows us to take a proactive approach in our services and strategic advice.