On April 1, 2013, the U.S. Patent and Trademark Office (USPTO) published interim final rules that implemented changes to patent term adjustment (PTA) provisions mandated by the AIA Technical Corrections Act of January 14, 2013. In addition to streamlining USPTO administrative procedures and procedures by which patentees can challenge PTA calculations, the rules also level the PTA "playing field" for filers of U.S. national stage applications. The new rules apply retroactively to any patent granted on or after January 14, 2013. While the rules became effective as of their publication, the USPTO will accept public comments until May 31, 2013, after which a final rule will be published.
Under the old rules, the USPTO provided an initial determination of PTA in the Notice of Allowance and an actual determination in the Issue Notification. The actual determination accounted for any delay that accrued after the Notice of Allowance. The interim rules eliminate this inefficiency by providing a single determination of the actual PTA when the patent issues.
A patentee can challenge the PTA calculation administratively with the USPTO, and, if that fails, can pursue the challenge in district court. However, under the new rules, an unsuccessful USPTO challenge is now a prerequisite (i.e., not an alternative) to a judicial challenge. An administrative challenge can be made by filing a Request for Reconsideration of PTA within two months of the patent’s issue date, and this deadline is now extendable for an additional five months with payment of appropriate extension fees. Patentees whose patents were granted during the transition period from the old rules can also take advantage of this rule change. A civil action must be brought in the District Court for the Eastern District of Virginia within 180 days of the USPTO's decision on the Request for Reconsideration.
The new rules also allow an applicant to request reinstatement of all or part of a reduction in PTA for taking more than three months to reply to a notice or action. The applicant must file the request prior to issuance and must show that, in spite of all due care, the applicant was unable to respond within three months.
Under the old rules, national stage applications were prejudiced with respect to compensation for PTA type "A" delay. "A" delay refers to the internal USPTO delay caused by issuance of a first action on the merits more than 14 months after the application filing date. Under the old rules, the 14 month clock for national stage applications didn’t start ticking until after fulfillment of all formal requirements, whereas the clock started on the actual filing date for domestic utility applications. Under the new rules, the clock for national stage applications starts on the date of commencement of the national phase, allowing applicants a similar ability to delay submission of formal documents without being subject to a loss of PTA.
Applicants who received Issue Notifications on or after January 14, 2013 should carefully review the USPTO's PTA calculations provided with the Issue Notification, and, if necessary, file a Request for Reconsideration as soon as possible to avoid incurring additional fees. Further, applicants currently in prosecution should consider filing requests for reinstatement of PTA when applicable.
This advisory was prepared by Nutter's Intellectual Property practice. For more information, please contact your Nutter attorney at 617.439.2000.
This update is for information purposes only and should not be construed as legal advice on any specific facts or circumstances. Under the rules of the Supreme Judicial Court of Massachusetts, this material may be considered as advertising.
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