Clarification of 37 CFR 1.704(c)(10) -
Reduction of Patent Term Adjustment for
Certain Types of Papers Filed
After a Notice of Allowance has been Mailed
Patent term adjustment under 35 U.S.C. 154(b)(1) is reduced by
the period of time during which the applicant "failed to engage in
reasonable efforts" to conclude prosecution (i.e.,
processing or examination of an application). See 35 U.S.C.
154(b)(2)(C)(i). Pursuant to 35 U.S.C. 154(b)(2)(C)(iii), the United
States Patent and Trademark Office (Office) has prescribed regulations
setting forth the circumstances constituting a failure to engage in
reasonable efforts to conclude prosecution (i.e., processing
or examination of an application). See 37 CFR 1.704. After
a "Notice of Allowance" has been mailed, submissions by an
applicant that cause a delay in processing or examination of an
application will be considered a "failure to engage in reasonable
efforts" to conclude prosecution. See 37 CFR 1.704(c)(10) ("failure
to engage in reasonable efforts" to conclude prosecution includes
submission of an amendment under 37 CFR 1.312 or other paper after a
"Notice of Allowance" has been mailed). The reason such a
submission is considered a "failure to engage in reasonable
efforts" to conclude processing or examination of an application is
that delaying the submission of such papers until after an application
is allowed causes substantial interference and delay in the patent
issue process. See Changes to Implement Patent Term Adjustment
under Twenty-Year Patent Term, 65 Fed. Reg. 56365,
56373 (Sept. 18, 2000); 1239 Off. Gaz. Pat. Office 14,
19-20 (Oct. 3, 2000) (final rule).
It should be noted, however, that only certain papers (not all
papers), filed after a "Notice of Allowance" is mailed, cause
substantial interference and delay in the patent issue process.
Therefore, it is the filing of these papers that will be considered a
"failure to engage in reasonable efforts" to conclude processing
and examination of an application under 37 CFR 1.704. The Office has
reviewed many allowed applications (mostly continued prosecution
applications (CPAs)) that were filed on or after May 29, 2000, in which
the issue fee was paid. The review consistently showed that only
certain papers submitted after a "Notice of Allowance" is mailed,
interfered with and delayed the patent issue process to such a degree
as to constitute a "failure to engage in reasonable efforts" to
conclude processing or examination of an application.
Accordingly, the Office is publishing this notice to provide
guidance in interpreting the provisions of 37 CFR 1.704(c)(10) to
clarify that submission of certain papers after a "Notice of
Allowance," which do not cause substantial interference
and delay in the patent issue process, are not considered a
"failure to engage in reasonable efforts" to conclude processing or
examination of an application. The following are examples of such
papers: (1) Issue Fee Transmittal (PTOL-85B), (2) Power of Attorney,
(3) Power to Inspect, (4) Change of Address, (5) Change of Status
(small/not small entity status), (6) a response to the examiner's
reasons for allowance, and (7) letters related to government interests
(e.g., those between NASA and the Office). Therefore, the submission of
these papers after a Notice of Allowance will not be
considered a "failure to engage in reasonable efforts" to conclude
processing or examination of an application and would not result in
reduction of a patent term adjustment pursuant to 37 CFR 1.704(c)(10).
In contrast, the submission of other papers after a "Notice
of Allowance" is mailed that do cause substantial interference and
delay in the patent issue process are considered a "failure to engage
in reasonable efforts" to conclude processing or examination of an
application pursuant to 37 CFR 1.704(c)(10). The following are examples
of such papers: (1) a request for a refund, (2) a status letter, (3)
amendments under 37 CFR 1.312, (4) late priority claims, (5) a
certified copy of a priority document, (6) drawings, (7) letters
related to biological deposits, and (8) oaths or declarations.
As guidance for minimizing reductions to any patent term
adjustment, applicants should adopt practices that do not delay
processing of the applications after the "Notice of Allowance" has
been mailed. For instance, instead of filing corrected drawings or
editorial amendments after the application has been allowed, applicant
should submit such corrected drawings or editorial amendments prior to
allowance of the application. In addition, instead of filing a status
letter, applicant should use the private Patent Application Information
Retrieval (PAIR) system to determine the status of the application
(http://pair-direct.uspto.gov) or call the Office.
The Patent Application Locating and Monitoring (PALM) system
maintains computerized contents records of all patent applications and
reexaminations. PAIR is a system that provides public access to PALM
for patents and applications that have been published (i.e.,
information for applications maintained in confidence cannot be
obtained), which can be accessed over the Internet at
http://pair.uspto.gov. The private side of PAIR at
http://pair-direct.uspto.gov can be used by an applicant to
access confidential information about his or her pending application.
To access the private side of PAIR, a customer number must be
associated with the correspondence address for the application, and the
user of the system must have a digital certificate. For further
information, contact the Customer Support Center of the Electronic
Business Center at (703) 305-3028.
In addition, if PAIR is used to see the PALM records that are
relied upon for patent term adjustment purposes, a contents entry with
the contents code "DRWS" and the contents description "DRAWING
REQUIREMENTS SATISFIED" does not indicate when the drawings were
filed and is not a PALM entry that is used in the patent term
adjustment calculation.
Any questions or comments about this change should be directed
to Karin Tyson, Senior Legal Advisor, Office of Patent Legal
Administration, Office of the Deputy Commissioner for Patent
Examination Policy. Ms. Tyson can be reached by telephone at (703)
306-3159, or by e-mail at Karin.Tyson@uspto.gov.
May 29, 2001 NICHOLAS P. GODICI
Acting Under Secretary of
Commerce for Intellectual Property and
Acting Director of the United States
Patent and Trademark Office