United States Patent and Trademark Office OG Notices: 30 December 2003
DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Part 1
Docket No.: 2003-P-029
RIN 0651-AB71
Revision of Patent Term Extension and
Patent Term Adjustment Provisions Related to
Decisions by the Board of Patent Appeals and Interferences
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Notice of proposed rule making.
SUMMARY: The patent term extension provisions of the Uruguay Round
Agreements Act (URAA) and the patent term adjustment provisions of the
American Inventors Protection Act of 1999 (AIPA) each provide for the
possibility of patent term extension or adjustment if the issuance of
the patent was delayed due to review by the Board of Patent Appeals and
Interferences (BPAI) or by a Federal court and the patent was issued
pursuant to or under a decision in the review reversing an adverse
determination of patentability. The United States Patent and Trademark
Office (Office) is proposing to revise the rules of practice in patent
cases to indicate that under certain circumstances a remand by the
Board of Patent Appeals and Interferences shall be considered a
decision in the review reversing an adverse determination of
patentability for purposes of patent term extension or patent term
adjustment.
DATES: Comment deadline date: To be ensured of consideration, written
comments must be received on or before January 5, 2004. No public
hearing will be held.
ADDRESSES: Comments should be sent by electronic mail message over the
Internet addressed to AB71.Comments@uspto.gov <mailto:AB71.Comments@
uspto.gov>, submitted by mail addressed to: Box Comments - Patents,
Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450, or
by facsimile to (703) 746-3261, marked to the attention of Kery A. Fries.
Although comments may be submitted by mail or facsimile, the Office
prefers to receive comments via the Internet. If comments are submitted
by mail, the Office prefers that the comments be submitted on a DOS
formatted 3 1/2 inch disk accompanied by a paper copy.
The comments will be available for public inspection at the Office
of the Commissioner for Patents, located in Crystal Park 2, Suite 910,
2121 Crystal Drive, Arlington, Virginia, and will be available through
anonymous file transfer protocol (ftp) via the Internet address:
<http://frwebgate.access.gpo.gov/cgi-bin/leaving.cgi?from=leavingFR.html&
log=linklog&to=http://www.uspto.gov>. Since comments will be made
available for public inspection, information that is not desired to be
made public, such as an address or phone number, should not be included
in the comments.
FOR FURTHER INFORMATION CONTACT: Kery A. Fries, Legal Advisor, Office
of Patent Legal Administration, by telephone at (703) 305-1383, by mail
addressed to: Box Comments - Patents, Commissioner for Patents, P.O. Box
1450, Alexandria, VA 22313-1450, or by facsimile to (703) 746-3240,
marked to the attention of Kery A. Fries.
SUPPLEMENTARY INFORMATION: Section 532(a) of the URAA (Pub. L. 103-465,
108 Stat. 4809 (1994)) amended 35 U.S.C. 154 to provide that the term
of a patent ends on the date that is twenty years from the filing date
of the application, or the earliest filing date for which a benefit is
claimed under 35 U.S.C. 120, 121, or 365(c). Public Law 103-465 also
contained provisions, codified at 35 U.S.C. 154(b), for patent term
extension due to certain examination delays. The Office implemented the
patent term extension provisions of the URAA in a final rule published
in April of 1995. See Changes to Implement 20-Year Patent Term and
Provisional Applications, 60 FR 20195 (Apr. 25, 1995), 1174 Off. Gaz.
Pat. Office 15 (May 2, 1995) (final rule).
The AIPA further amended 35 U.S.C. 154(b) to include additional
bases for patent term extension (termed ``patent term adjustment'' in
the AIPA). Original utility and plant patents issuing from applications
filed on or after May 29, 2000, may be eligible for patent term
adjustment if issuance of the patent is delayed due to one or more of
the enumerated administrative delays listed in 35 U.S.C. 154(b)(1). The
Office implemented the patent term adjustment provisions of the AIPA in
a final rule published in September of 2000. See Changes to Implement
Patent Term Adjustment Under Twenty-Year Patent Term, 65 FR 56365
(Sept. 18, 2000), 1239 Off. Gaz. Pat. Office 14 (Oct. 3, 2000) (final
rule). The patent term adjustment provisions of the AIPA apply to
original (i.e., non-reissue) utility and plant applications filed on or
after May 29, 2000. See Changes to Implement Patent Term Adjustment
Under Twenty-Year Patent Term, 65 FR at 56367, 1239 Off. Gaz. Pat.
Office at 14-15. The patent term extension provisions of the URAA (for
delays due to secrecy order, interference or successful appellate
review) continued to apply to utility and plant applications
filed on or after June 7, 1995, and before May 29, 2000. See id.
The Office is proposing to amend the rules of practice in patent
cases to indicate that certain remands by the BPAI shall be considered
``a decision in the review reversing an adverse determination of
patentability'' for patent term adjustment and patent term extension
purposes. Specifically, if an application is remanded by a panel of the
BPAI, and a notice of allowance under Sec. 1.311 is mailed without
further review by the BPAI, without further amendment of the
application, and without other action by the applicant, the remand
shall (if the proposed change is adopted) be considered a decision
reversing an adverse determination of patentability for patent term
adjustment and patent term extension purposes. The phrase ``remanded by
a panel'' of the BPAI means that the application was remanded by a
panel comprised of members of the BPAI as defined in 35 U.S.C. 6. The
phrase ``remanded by a panel'' of the BPAI does not pertain to
applications containing a remand or order returning an appeal to the
examiner issued by a BPAI administrator. See Revised Docketing
Procedures for Appeals Arriving at the Board of Patent Appeals and
Interferences, 1260 Off. Gaz. Pat. Office 18 (July 2, 2002).
The Office initially took the position that a remand by a BPAI
panel was not a ``decision'' within the meaning of 35 U.S.C.
154(b)(1)(A)(iii), much less ``a decision reversing an adverse
determination of patentability'' as that phrase is used in 35 U.S.C.
154(b)(1)(C)(iii). See Changes to Implement Patent Term Adjustment
Under Twenty-Year Patent Term, 65 FR at 56369, 1239 Off. Gaz. Pat.
Office at 16. The Office has subsequently determined that there are a
number of BPAI panel remands that convey the weakness in the examiner's
adverse patentability determination in a manner tantamount to a
decision reversing the adverse patentability determination. Such a BPAI
panel remand generally results in the examiner sua sponte deciding to
withdraw the rejections and allow the application without any
intervening action by the applicant, rather than responding to the
issues raised in the remand and returning the application to the BPAI
for decisions reversing the adverse patentability determinations. The
change being proposed in this notice addresses the situation in which
an examiner responds to a remand by a BPAI panel by sua sponte
withdrawing all the rejections and allowing the application, rather
than responding to the issues raised in the remand and returning the
application to the BPAI for a decision on the appeal. In this
situation, the BPAI panel remand shall (if the proposed change is
adopted) be considered ``a decision in the review reversing an adverse
determination of patentability'' for patent term extension and patent
term adjustment purposes. If, however, the application is allowed as a
result of a further amendment, or after any other action by the
applicant (e.g., the filing of a paper containing argument, an
affidavit or declaration, or an information disclosure statement),
without being returned to the BPAI for further review, then such remand
shall not be considered ``a decision in the review reversing an adverse
determination of patentability'' for patent term extension and patent
term adjustment purposes.
If the patent issues after a remand that is considered ``a decision
in the review reversing an adverse determination of patentability,''
the BPAI panel remand is the ``final decision in favor of the
applicant'' for purposes of a patent term extension or adjustment
calculation under Sec. 1.701(c)(3) or Sec. 1.703(e) (as applicable).
The period of extension or adjustment calculated under Sec.
1.701(c)(3) or Sec. 1.703(e) (as applicable) would equal the number of
days in the period beginning on the date on which a notice of appeal to
the BPAI was filed under 35 U.S.C. 134 and Sec. 1.191 and ending on
the mailing date of the BPAI panel remand.
Discussion of Specific Rules
Section 1.701: Section 1.701(a)(3) is proposed to be amended by
adding the following sentence: If an application is remanded by a panel
of the Board of Patent Appeals and Interferences, and a notice of
allowance under Sec. 1.311 is mailed without further review by the
Board of Patent Appeals and Interferences, without further amendment of
the application, and without other action by the applicant, the remand
shall be considered a decision reversing an adverse determination of
patentability as that phrase is used in 35 U.S.C. 154(b)(2) as amended
by section 532(a) of the Uruguay Round Agreements Act, Public Law 103-
465, 108 Stat. 4809, 4983-85 (1994). Section 1.701(a)(3) is also
proposed to be amended to change ``decision reversing an adverse
determination of patentability'' to ``decision in the review reversing
an adverse determination of patentability'' for consistency with 35
U.S.C. 154(b)(2) as amended by section 532(a) of the URAA.
Section 1.702: Section 1.702(e) is proposed to be amended by adding
the following sentence: If an application is remanded by a panel of the
Board of Patent Appeals and Interferences, and a notice of allowance
under Sec. 1.311 is mailed without further review by the Board of
Patent Appeals and Interferences, without further amendment of the
application, and without other action by the applicant, the remand
shall be considered a decision by the Board of Patent Appeals and
Interferences as that phrase is used in 35 U.S.C. 154(b)(1)(A)(iii) and
a decision in the review reversing an adverse determination of
patentability as that phrase is used in 35 U.S.C. 154(b)(1)(C)(iii).
Section 1.702(e) is also proposed to be amended to change ``decision
reversing an adverse determination of patentability'' to ``decision in
the review reversing an adverse determination of patentability'' for
consistency with 35 U.S.C. 154(b)(1)(C)(iii).
Rule Making Considerations
Regulatory Flexibility Act: The Deputy General Counsel for General
Law, United States Patent and Trademark Office, has certified to the
Chief Counsel for Advocacy, Small Business Administration, that the
changes proposed in this notice (if adopted) would not have a
significant impact on a substantial number of small entities
(Regulatory Flexibility Act, 5 U.S.C. 605(b)). The provisions of the
Regulatory Flexibility Act relating to the preparation of a flexibility
analysis are not applicable to this rule making because the changes
proposed in this notice will not have a significant economic impact on
a substantial number of small entities. The changes proposed in this
notice would (if adopted) only change the manner in which the Office
makes its patent term adjustment determination in applications that
have been allowed under certain circumstances following a remand by the
BPAI. The changes proposed in this notice would impose no additional
fees or requirements on patent applicants.
Executive Order 13132: This rule making does not contain policies
with federalism implications sufficient to warrant preparation of a
Federalism Assessment under Executive Order 13132 (Aug. 4, 1999).
Executive Order 12866: This rule making has been determined to be
not significant for purposes of Executive Order 12866 (Sept. 30, 1993).
Paperwork Reduction Act: This notice involves information
collection requirements which are subject to
review by the Office of Management and Budget (OMB) under the Paperwork
Reduction Act of 1995 (44 U.S.C. 3501 et seq.). The collection of
information involved in this notice has been reviewed and previously
approved by OMB under OMB control number 0651-0020. The United States
Patent and Trademark Office is not resubmitting an information
collection package to OMB for its review and approval because the
changes in this notice do not affect the information collection
requirements associated with the information collection under OMB
control number 0651-0020.
The title, description and respondent description of this
information collection is shown below with an estimate of the annual
reporting burdens. Included in the estimate is the time for reviewing
instructions, gathering and maintaining the data needed, and completing
and reviewing the collection of information. The changes in this notice
merely set forth the circumstances under which the Office will consider
a remand by the Board of Patent Appeals and Interferences to be a
decision in the review reversing an adverse determination of
patentability for purposes of patent term extension and patent term
adjustment.
OMB Number: 0651-0020.
Title: Patent Term Extension.
Form Numbers: None.
Type of Review: Approved through October of 2004.
Affected Public: Individuals or Households, Business or Other For-
Profit Institutions, Not-for-Profit Institutions, Farms, Federal
Government and State, Local and Tribal Governments.
Estimated Number of Respondents: 26,858.
Estimated Time Per Response: Between 1 and 25 hours.
Estimated Total Annual Burden Hours: 30,903 hours.
Needs and Uses: The information supplied to the United States
Patent and Trademark Office by an applicant requesting reconsideration
of a patent term adjustment determination under 35 U.S.C. 154(b) (Sec.
1.702 et seq.) is used by the United States Patent and Trademark Office
to determine whether its determination of patent term adjustment under
35 U.S.C. 154(b) is correct, and whether the applicant is entitled to
reinstatement of reduced patent term adjustment. The information
supplied to the United States Patent and Trademark Office by an
applicant seeking a patent term extension under 35 U.S.C. 156 (Sec.
1.710 et seq.) is used by the United States Patent and Trademark
Office, the Department of Health and Human Services, and the Department
of Agriculture to determine the eligibility of a patent for extension
and to determine the period of any such extension. The applicant can
apply for patent term and interim extensions, petition the Office to
review final eligibility decisions, withdraw patent term applications,
and declare his or her eligibility to apply for a patent term
extension.
Comments are invited on: (1) Whether the collection of information
is necessary for proper performance of the functions of the agency; (2)
the accuracy of the agency's estimate of the burden; (3) ways to
enhance the quality, utility, and clarity of the information to be
collected; and (4) ways to minimize the burden of the collection of
information to respondents.
Interested persons are requested to send comments regarding these
information collections, including suggestions for reducing this
burden, to Robert J. Spar, Director, Office of Patent Legal
Administration, Commissioner for Patents, PO Box 1450, Alexandria, VA
22313-1450, or to the Office of Information and Regulatory Affairs,
Office of Management and Budget, New Executive Office Building, Room
10235, 725 17th Street, NW., Washington, DC 20503, Attention: Desk
Officer for the United States Patent and Trademark Office.
Notwithstanding any other provision of law, no person is required
to respond to nor shall a person be subject to a penalty for failure to
comply with a collection of information subject to the requirements of
the Paperwork Reduction Act unless that collection of information
displays a currently valid OMB control number.
List of Subjects in 37 CFR Part 1
Administrative practice and procedure, Courts, Freedom of
Information, Inventions and patents, Reporting and record keeping
requirements, Small Businesses.
For the reasons set forth in the preamble, 37 CFR Part 1 is
proposed to be amended as follows:
PART 1 - RULES OF PRACTICE IN PATENT CASES
1. The authority citation for 37 CFR Part 1 continues to read as
follows:
Authority: 35 U.S.C. 2(b)(2).
2. Section 1.701 is amended by revising paragraph (a)(3) to read as
follows:
Sec. 1.701 Extension of patent term due to examination delay under
the Uruguay Round Agreements Act (original applications, other than
designs, filed on or after June 8, 1995, and before May 29, 2000).
(a) * * *
(3) Appellate review by the Board of Patent Appeals and
Interferences or by a Federal court under 35 U.S.C. 141 or 145, if the
patent was issued pursuant to a decision in the review reversing an
adverse determination of patentability and if the patent is not subject
to a terminal disclaimer due to the issuance of another patent claiming
subject matter that is not patentably distinct from that under
appellate review. If an application is remanded by a panel of the Board
of Patent Appeals and Interferences, and a notice of allowance under
Sec. 1.311 is mailed without further review by the Board of Patent
Appeals and Interferences, without further amendment of the
application, and without other action by the applicant, the remand
shall be considered a decision in the review reversing an adverse
determination of patentability as that phrase is used in 35 U.S.C.
154(b)(2) as amended by section 532(a) of the Uruguay Round Agreements
Act, Public Law 103-465, 108 Stat. 4809, 4983-85 (1994).
* * * * *
3. Section 1.702 is amended by revising paragraph (e) to read as
follows:
Sec. 1.702 Grounds for adjustment of patent term due to examination
delay under the Patent Term Guarantee Act of 1999 (original
applications, other than designs, filed on or after May 29, 2000).
* * * * *
(e) Delays caused by successful appellate review. Subject to the
provisions of 35 U.S.C. 154(b) and this subpart, the term of an
original patent shall be adjusted if the issuance of the patent was
delayed due to review by the Board of Patent Appeals and Interferences
under 35 U.S.C. 134 or by a Federal court under 35 U.S.C. 141 or 145,
if the patent was issued under a decision in the review reversing an
adverse determination of patentability. If an application is remanded
by a panel of the Board of Patent Appeals and Interferences, and a
notice of allowance under Sec. 1.311 is mailed without further review
by the Board of Patent Appeals and Interferences, without further
amendment of the application, and without other action by the
applicant, the remand shall be considered a decision by the Board of
Patent Appeals and Interferences as that phrase is used in 35 U.S.C.
154(b)(1)(A)(iii) and a decision in the review reversing an
adverse determination of patentability as that phrase is used in 35
U.S.C. 154(b)(1)(C)(iii).
* * * * *
November 24, 2003 JON W. DUDAS
Deputy Under Secretary of Commerce for
Intellectual Property and Deputy Director of the
United States Patent and Trademark Office