USPTO Revises Patent Term Extension Calculation

by McDermott Will & Emery
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On May 15, 2014, the U.S. Patent and Trademark Office (USPTO) issued final rules revising the way patent term extensions are calculated for patents granted on or after January 14, 2013.  In accordance with § 1(h) of the AIA Technical Corrections Act, the USPTO revised the date from which the 14th-month patent term adjustment period is measured, and clarified the date from which the three-year patent term adjustment period with respect to international applications filed under the Patent Cooperation Treaty should be calculated.  The date from which the 14th-month patent term adjustment period and the date from which the three-year patent term adjustment period are measured is the same date; i.e., the application filing date under 35 U.S.C. § 111(a) or the date of the commencement of the national stage under 35 U.S.C. § 371.

The 14th-month period refers to the time from when an application is filed under § 111(a) or when the national stage is commenced under § 371 until an action on the merits or notice of allowance is mailed by the USPTO.  Prior to the Technical Corrections Act, the 14th-month period for national stage applications was measured from the date on which the international application fulfilled the requirements of § 371.  The three-year patent term adjustment refers to the period of time from when an application is filed or the national stage is commenced until a patent is issued.  The rule change was necessary because the date of the commencement of the national stage and the date of fulfillment of all the requirements of § 371 are not necessarily the same.

The final rules permit extensions of up to five additional months from the two-month period from the date of patent grant to request reconsideration of the patent term adjustment indicated on the patent.

The final rules further specify that the exclusive remedy for an applicant that is dissatisfied with the director’s decision on the applicant’s request for reconsideration of the patent term adjustment is a civil action against the director filed in the U.S. District Court for the Eastern District of Virginia.

Because the USPTO experienced a significant delay in modifying the computer program used to calculate patent term adjustment, the USPTO is providing an optional procedure for requesting recalculation of patent term adjustments for patents resulting directly from international applications that issued between January 14, 2013 (the date of enactment of the AIA Technical Corrections Act), and May 20, 2014.  No fee is required for a request for recalculation under the optional procedure, but the request must be filed no later than July 31, 2014.

In addition, in view of the AIA Technical Corrections Act, the USPTO no longer provides an initial patent term adjustment determination with the notice of allowance.

 

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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