The United States Patent and Trademark Office (USPTO) released final rules on January 9, 2015 implementing changes to the way in which Patent Term Adjustment (PTA) is calculated in view of the recent Novartis v. Lee case.
The typical 20 year term of a U.S. patent can be extended via PTA to compensate the applicant for delays caused by the USPTO during examination. On the other hand, delays caused by the applicant can reduce the PTA that would otherwise be granted.
One type of USPTO delay that can trigger a term adjustment is when a patent fails to issue within three years of its filing date (so-called “B delay”). Prior to Novartis, if an applicant filed a Request for Continued Examination (RCE) during prosecution, the time period for calculating PTA based on B delay ended when the RCE was filed. As a result, no PTA would be awarded for post-allowance delays.
In Novartis, the court held this practice to be flawed, finding that PTA should be granted for post-allowance delays caused by the USPTO even after an RCE is filed. The new rules implement the Novartis decision, providing that the time consumed by continued examination does not include the time after a notice of allowance, unless the applicant files another RCE after such allowance. The new rules also provide an exception to the PTA reduction rule for the situation where an RCE is filed solely to submit information cited in a patent office communication in a counterpart application that is submitted to the Office within thirty days of receipt of the patent office communication.
While patents issued on or after October 7, 2014 should have PTA calculated correctly in accordance with the new rules, applicants should remain vigilant in reviewing the accuracy of PTA determinations. In addition, when filing an RCE to cite references, applicants should consider whether a PTA reduction exception applies and, if so, make the appropriate statement under 37 C.F.R. 1.704(d).
This update was prepared by the Intellectual Property Department at Nutter McClennen & Fish LLP. For more information, please contact your Nutter attorney at 617.439.2000.
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