United States: Patent Term Adjustment Papers Filed After Allowance

I. INTRODUCTION

A. Grounds For Adjustment Of Patent Term

Grounds for adjustment of patent term due to examination delay include, for example:

1. Failure, on the part of the PTO to take certain action within specified time frames, such as failing to mail one of an office action, or restriction requirement, or notice of allowance not later than 14 months after the date on which the application was filed or fulfilled the requirements for national stage entry.
2. Failure, on the part of the PTO, to issue a patent within 3 years of the actual filing date of the application (not including time consumed by continued examination).
3. Failure, on the part of the PTO, to issue a patent within 4 months of the issue fee payment date.
4. Delays caused by interference proceedings, imposition of a secrecy order or delays caused by successful appellate review.

B. Reduction Of Patent Term Adjustment Period

The period of adjustment of patent term is reduced by a period equal to the period of time during which the applicant failed to engage in reasonable efforts to conclude examination. This includes, for example:

1. Time in excess of three months taken to reply to an office action.
2. Submission of a preliminary amendment or other preliminary paper less than one month before the mailing of an office action that requires mailing of a supplemental paper
3. Submission of an Amendment under 37 C.F.R. §1.312 or other paper after a notice of allowance has been mailed.

It is the Rule 312 Amendment or other paper that is the focus for discussion.

II. CALCULATION OF PATENT TERM ADJUSTMENT

Upon allowance, the PTO calculates the number of days of patent term adjustment, if any, and indicates the same on the Notice of Allowance. However, depending on whether any papers are filed after allowance, the number of days of patent term adjustment may be reduced as indicated on the issue notification and as printed on the issued patent.

III. EFFECT OF FILING A PAPER AFTER ALLOWANCE ON PATENT TERM ADJUSTMENT

If applicant was due a patent term adjustment, that adjustment is reduced upon the filing of any paper after allowance. The operative rule is reproduced below.

1. A Notice of Allowance issued on August 9, 2002, indicating a patent term adjustment period of 141 days due to PTO delay.
2. Shortly after allowance, a search report issued in a corresponding foreign application. The references were submitted to the PTO file on October 2, 2002 with no request to have these references considered and made of record.
3. The issue fee was paid on November 5, 2002.
4. The patent issued on April 8, 2003, with a patent term adjustment period of 55 days.

1. ANY paper filed after allowance triggers §1.704(c)(10). This includes a paper submitting references to be placed in the file.
2. In this instance, the "Office Action" ending the submission is the issued patent.
3. The patent term adjustment period is reduced by the lesser of (i) the number of days beginning on the date of submission and ending with the mailing date of the issued patent (almost 6 months or about 200 days), or (ii) four months – 120 days.
4. Here, the "lesser" of the two was 120 days.
5. But, there this also a credit for time in excess of from months from the date that the issue fee is paid until the date the patent issues, namely a credit of 34 days calculated as the time period between April 8, 2003 and November 5, 2002 or 34 days.
6. The patent issues with a patent term adjustment of 141 – 120 + 34 = 55 days.

1. Filing any paper after allowance in a case entitled to patent term adjustment will result in a reduction of the patent term adjustment period.
2. The reduction can well amount to 120 days as in the above example. To maximize the "credit", the issue fee payment may be accelerated.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.