USPTO Issues Final Rule to Implement PTA Provisions of AIA Technical Corrections Act and Provide Optional Procedure for Requesting PTA Recalculation

by McDonnell Boehnen Hulbert & Berghoff LLP

USPTO SealOn May 15, the U.S. Patent and Trademark Office published a Federal Register notice (79 Fed. Reg. 27755) to adopt as final changes to the rules of practice implementing the patent term adjustment (PTA) provisions of section 1(h) of the Leahy-Smith America Invents Act (AIA) Technical Corrections Act.  The changes were originally set forth in an interim final rule issued by the Office in April 2013 (see "USPTO Issues Rules to Implement AIA Technical Corrections").

Section 1(h) of the AIA Technical Corrections Act specifies that the fourteen-month period within which the Office must issue a notice of rejection under 35 U.S.C. § 132 or notice of allowance under 35 U.S.C. § 151 (see 35 U.S.C. § 154(b)(1)(A)(i)(II)) and the three-year application pendency period provided by 35 U.S.C. § 154(b)(1)(B) are to be measured from the same date, i.e., the date of commencement of national stage under 35 U.S.C. § 371.  The final rule adopts as final changes to the rules specifying that the fourteen-month period of 35 U.S.C. § 154(b)(1)(A)(i) is to be measured from the date of commencement of the national stage under 35 U.S.C. 371 in an international application.

Section 1(h) also revises the provisions for notifying applicants of PTA determinations and for requesting reconsideration and judicial review of the Office's PTA determinations.  With regard to notifying applicants of PTA determinations, § 1(h) eliminates the need for the Office to provide an initial PTA determination with the notice of allowance, before the PTA under 35 U.S.C. §§ 154(b)(1)(A)(iv) (for not issuing a patent within four months following payment of the issue fee) and 154(b)(1)(B) (for not issuing a patent within three years after the actual filing date) can be determined.  With regard to requesting reconsideration of the Office's PTA determinations, the final rule adopts changes to the rules that allow applicants to extend the two-month period for filing a request for reconsideration of the PTA indicated on a patent by an additional five months after the date that the patent was granted under the provisions of 37 C.F.R. § 1.136(a).

The final rule also lays out the Office's procedures for handling requests for reconsideration of PTA.  The notice explains that the PTA determination indicated on a patent is calculated using a computer program, and that the Office performs a manual redetermination of PTA in response to a request for reconsideration.  If the manual redetermination results in no change in PTA, the Office issues a decision denying the request for reconsideration, which is the Director's decision on the applicant's request for reconsideration within the meaning of 35 U.S.C. § 154(b)(4) (starting the 180-day clock for the patentee to file a civil action against the Director in the U.S. District Court for the Eastern District of Virginia).  If the manual redetermination results in a different amount of PTA than that indicated on the patent (and in the applicant's request for reconsideration), the applicant will have two-months (extendable by an additional five months) to file a renewed request for reconsideration (but cannot yet file a civil action against the Director).

The final rule also provides an optional procedure for requesting PTA recalculation without filing a petition and paying the fee that would be otherwise required under the rules.  The optional procedure, however, only applies to patents that issued between January 14, 2013 (when the AIA Technical Corrections Act was enacted) and May 20, 2014, and that resulted directly from international applications.  The final rule notes that the optional procedure is being provided because the Office experienced a significant delay in modifying its PTA software to implement the rules changes resulting from the AIA Technical Corrections Act.  According to the final rule, the software modifications were completed last month, and therefore PTA determinations for patents issued on or after May 20, 2014 are expected to be consistent with changes to the PTA provisions in the AIA Technical Corrections Act.

Under the optional procedure, requests for recalculation of PTA for the particular patents described above can be made by submitting a Request for Recalculation of Patent Term Adjustment form (PTO/SB/132).  The final rule notes that all requests made under the optional procedure must be filed no later than July 31, 2014.  The final rule also notes that if a petition fee and an extension fee (if required) were already paid for a patent qualifying for the optional procedure, neither fee would be refundable (because neither fee was "a fee paid by mistake or in excess of that required, and the Office may only refund fees paid by mistake or in excess of that required").  In addition, an applicant dissatisfied with a PTA recalculation made under the optional procedure must file a request for reconsideration no later than two months (extendable by an additional five months) from the date of the recalculation (and cannot yet file a civil action against the Director).



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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