USPTO Adopts Final Rules of Practice for Recalculation of PTA

On May 15, 2014, The United States Patent and Trademark Office (USPTO) published a Federal Register notice regarding the final changes to the rules of practice that relate to the patent term adjustment (PTA) provisions of section 1(h) of the Leahy-Smith America Invents Act (AIA) Technical Corrections Act. The previously published information was in guideline form only and did not encompass issues addressed by the presently provided rules.

Among other changes, the final rules set forth updated procedures for how the USPTO will handle requests for reconsideration or recalculation of PTA.

Most important is a time sensitive opportunity for applicants to recalculate PTA under section 154(b)(1)(A)(ii), for patents issued between January 14, 2013 and May 20, 2014, without the need to file a petition for recalculating PTA. The patentee must satisfy the following three requirements in order to take advantage of this opportunity: 1) the patent must have directly resulted from an international application filed under 35 U.S.C. § 371; 2) the recalculation request must only be based on errors “identified in this final rule”; 3) and the request must be filed no later than July 31, 2014. As this option is not a request for reconsideration, the applicant need not comply with its timing and fee requirements. Further, if the limited option is pursued and the result is unsatisfactory, the applicant must file a request for reconsideration within two months (or up to an additional five months upon filing and fee payment for extensions) from the date of the recalculation and cannot file a civil suit against the Director. The USPTO has provided a form for applicants seeking to request Recalculation of Patent Term Adjustment form (PTO/SB/132), which is available on the USPTO’s website.

Additionally, the USPTO will calculate the fourteen (14) month clock for issuing a notice of rejection under 35 U.S.C. § 132 or notice of allowance under 35 U.S.C. § 151 and the three year patent application pendency period provided by 35 USC 154 (b)(1)(B) all from the same date, i.e., the date of commencement of the national stage application under 35 U.S.C. § 371.

The new rules of practice also change the provisions for notifying applicants of PTA calculations and for requesting reconsideration and judicial review of the USPTO’s PTA determination. With regard to notification, the USPTO no longer is compelled to provide an initial PTA determination with the notice of allowance. As far as the request for reconsideration of the USPTO’s determinations of PTA, the rules adopt the guidelines wherein the two month period for requesting reconsideration can be extended by an additional five months.

The applicant may file a civil action in the United States District Court for the Eastern District of Virginia of the USPTO’s calculations within 180 days after the denial of a reconsideration of PTA review.

Gibbons will continue to monitor developments in the ways to initiate these procedures of PTA review.

Estelle J. Tsevdos, Ph.D. is a Director in the Gibbons Intellectual Property Department.
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