United States Patent and Trademark Office OG Notices: 13 July 2004
DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Part 1
[Docket No. 2004-P-036]
Explanation of 37 CFR 1.703(f) and of the
United States Patent and Trademark Office
Interpretation of 35 U.S.C. 154(b)(2)(A)
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Interpretation.
SUMMARY: The United States Patent and Trademark Office
(Office) recently published a final rule revising the patent term
extension and patent term adjustment provisions of the rules of
practice. This document further explains the Office's policy since 2000
concerning one of the patent term adjustment provisions of the rules of
practice.
DATES: Applicability: The patent term adjustment
provisions of the rules of practice apply to all original (non-reissue)
applications, other than for a design patent, filed on or after May 29,
2000, and to patents issued on such applications.
FOR FURTHER INFORMATION CONTACT: Kery A. Fries, Legal
Advisor, Office of Patent Legal Administration, by telephone at (703)
305-1383, by mail addressed to: Mail Stop 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: The Office recently
published a final rule revising the patent term extension and patent
term adjustment provisions of the rules of practice in title 37 of the
Code of Federal Regulations (CFR). See Revision of Patent Term
Extension and Patent Term Adjustment Provisions, 69 FR 21704 (Apr.
22, 2004), 1282 Off. Gaz. Pat. Office 100 (May 18, 2004)
(final rule). The primary purpose of this final rule was to revise the
rules of practice in patent cases to indicate that under certain
circumstances a panel 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. See 69 FR at
21704, 1282 Off. Gaz. Pat. Office at 100.
This final rule, however, also adopted other miscellaneous changes to
the patent term adjustment regulations. See 69 FR at 21704,
1282 Off. Gaz. Pat. Office at 100. One such miscellaneous
change was a slight revision to 37 CFR 1.703(f) so that its language
would more closely track the corresponding language of 35 U.S.C.
154(b)(2)(A). The explanatory text concerning 37 CFR 1.703(f) indicated
that:
The language of former Sec. 1.703(f) misled applicants into believing
that delays under 35 U.S.C. 154(b)(1)(A) (1.702(a) and 1.703(a))
and delays under 35 U.S.C. 154(b)(1)(B) (1.702(b) and 1.703(b))
were overlapping only if the period of delay under 35 U.S.C.
154(b)(1)(A) occurred more than three years after the actual filing
date of the application. .1 If an application is entitled to an
adjustment under 35 U.S.C. 154(b)(1)(B), the entire period during which
the application was pending before the Office (except for periods
excluded under 35 U.S.C. 154(b)(1)(B)(i)-(iii)), and not just the
period beginning three years after the actual filing date of the
application, is the period of delay under 35 U.S.C. 154(b)(1)(B) in
determining whether periods of delay overlap under 35 U.S.C. 154(b)(2)(A).
.1 Another way of explaining this is: Based upon the
contentions presented in a number of patent term adjustment petitions
under 37 CFR 1.705, it has become apparent to the Office that some
applicants did not fully appreciate that delays under 35 U.S.C.
154(b)(1)(A) (1.702(a) and 1.703(a)) and delays under 35 U.S.C.
154(b)(1)(B) (1.702(b) and 1.703(b)) may still be overlapping
delays under 35 U.S.C. 154(b)(2)(A), even if the period of delay under
35 U.S.C. 154(b)(1)(A) did not occur more than three years after the
actual filing date of the application.
See 69 FR at 21706, 1282 Off. Gaz. Pat. Office at
101. The Office has subsequently determined that there is a need
for further explanation of the meaning of this statement.
35 U.S.C. 154(b)(2)(A) provides that: "[t]o the extent that periods
of delay attributable to grounds specified in paragraph (1)
i.e., 35 U.S.C. 154(b)(1) overlap, the period of any
adjustment granted under this subsection shall not exceed the actual
number of days the issuance of the patent was delayed."
See 35 U.S.C. 154(b)(2)(A). The Office revised 37 CFR 1.703(f) in this
final rule to read "to the extent that periods of delay attributable to
the grounds specified in 1.702 overlap, the period of adjustment granted
under this section shall not exceed the actual number of days the issuance
of the patent was delayed." See 69 FR at 21711, 1282 Off. Gaz. Pat. Office
at 106. Therefore, the change to 37 CFR 1.703(f) in this final rule makes
its language track the language of 35 U.S.C. 154(b)(2)(A).
The change to 37 CFR 1.703(f) in this final rule and the accompanying
explanatory text in the supplementary information section of this final
rule was not a substantive change to 37 CFR 1.703(f) or a change to the
Office's interpretation of 35 U.S.C. 154(b)(2)(A). This change was
simply a restatement of the position taken by the Office when
implementing the patent term adjustment provisions of the American
Inventors Protection Act of 1999 (AIPA) .2 in 2000. Specifically, the
Office has consistently taken the position that if an application is
entitled to an adjustment under the three-year pendency provision of 35
U.S.C. 154(b)(1)(B), the entire period during which the application was
pending before the Office (except for periods excluded under 35 U.S.C.
154(b)(1)(B)(i)-(iii)), and not just the period beginning three years
after the actual filing date of the application, is the relevant period
under 35 U.S.C. 154(b)(1)(B) in determining whether periods of delay
"overlap" under 35 U.S.C. 154(b)(2)(A).
.2 Pub. L. 106-113, 113 Stat. 1501, 1501A-552 through
1501A-591 (1999).
The position set forth in the supplementary information section
of this final rule is also consistent with the section-by-section
analysis .3 of 35 U.S.C. 154(b)(2)(A)). The section-by-section
analysis of 35 U.S.C. 154(b)(2)(A) indicates that periods of delay
overlap where there are multiple grounds for extending the term of a
patent that exist simultaneously. .4
.3 The AIPA is title IV of the Intellectual Property and
Communications Omnibus Reform Act of 1999 (S. 1948), which was
incorporated and enacted into law as part of Pub. L. 106-113. The
Conference Report for H.R. 3194, 106th Cong., 1st. Sess. (1999), which
resulted in Pub. L. 106-113, does not contain any discussion (other
than the incorporated language) of S. 1948. A section-by-section
analysis of S. 1948, however, was printed in the Congressional Record
at the request of Senator Lott. See 145 Cong. Rec. S14,708-26 (1999)
(daily ed. Nov. 17, 1999).
.4 The section-by-section analysis of 35 U.S.C. 154(b)(2)(A)
specifically provides that:
Section 4402 imposes limitations on restoration of term. In general,
pursuant to [35 U.S.C. 154(b)(2)(A)-(C), total adjustments granted for
restorations under 35 U.S.C. 154(b)(1) are reduced as follows: (1) To
the extent that there are multiple grounds for extending the term of a
patent that may exist simultaneously (e.g., delay due to a secrecy
order under 35 U.S.C.] 181 and administrative delay under [35 U.S.C.
154(b)(1)(A)), the term should not be extended for each ground of delay
but only for the actual number of days that the issuance of a patent
was delayed; See 145 Cong. Rec. S14,718.
The position set forth in the supplementary information section
of this final rule has been the Office's position since the
implementation of the AIPA, as shown (for example) by the numerous
Office presentations on the AIPA in 2001 which included an example .5
illustrating this position. Specifically, this example demonstrates
that a two-month delay in issuing a first Office action (35 U.S.C.
154(b)(1)(A)(i)) and a two-month delay in issuing the patent (35 U.S.C.
154(b)(1)(B)) were considered overlapping delays, even though the
two-month delay in issuing the first Office action occurred prior to
three years (thirty-six months) after the application's filing date.
This is because if the Office does not issue a patent until three years
and two months (thirty-eight months) after its filing date, the
relevant period in determining the Office delay in issuing the patent
is not just the period between three years (thirty-six months) after
the application's filing date and the date the patent issues (at
thirty-eight months after the application's filing date), but is the
entire period between the application's filing date and the date the
patent issues.
.5 The PBG (Patent Business Goals) and AIPA Rulemaking and
Patent Examination Guidelines Training and Implementation Guide (August
2001 Supplement) contains a slide presentation (this slide presentation
can be found on the Office's Internet Web site at:
<http://frwebgate.access.gpo.gov/cgi-bin/leaving.cgi?from=leavingFR.html&
log=linklog&to=http://www.uspto.gov/web/patents/pbgaipaguide/aipa.htm>
in which slide 19 provides an example that indicates this
interpretation of the provisions of 35 U.S.C. 154(b)(2)(A). In the
example shown in slide 19, the Office did not issue a first action
until sixteen months after the application's filing date, thus missing
the fourteen-month time frame in 35 U.S.C. 154(b)(1)(A)(i) by two
months (shown in red), and the Office did not issue the patent until
thirty-eight months after the application's filing date, thus missing
the three-year (thirty-six-month) time frame in 35 U.S.C. 154(b)(1)(B)
by two months. The slide is used to demonstrate that for an application
entitled to an adjustment under the three-year pendency provision of 35
U.S.C. 154(b)(1)(B), the Office considers the entire period during
which the application was pending before the Office (shown in green),
and not just the period beginning three years after the actual filing
date of the application, to be the relevant period under 35 U.S.C.
154(b)(1)(B) in determining whether periods of delay "overlap"
under 35 U.S.C. 154(b)(2)(A)). In this situation, the relevant periods
under 35 U.S.C. 154(b)(1)(A)(i) and 35 U.S.C. 154(b)(1)(B)
"overlap" under 35 U.S.C. 154(b)(2)(A), resulting in the applicant
being entitled to a patent term adjustment of only two months.
Furthermore, delays resulting in the Office's failure to meet
the time frames specified in 35 U.S.C. 154(b)(1)(A) (the
"fourteen-four-four-four-" provisions) are not always overlapping
with a delay resulting in the Office's failure to issue a patent within
the three-year time frame specified in 35 U.S.C. 154(b)(1)(B) because
not all application pendency time is counted toward this three-year
period. See 35 U.S.C. 154(b)(1)(B)(i)-(iii). This situation
is illustrated by an example in which: (1) The Office meets the
"fourteen-four-four-four" time frames specified in 35 U.S.C.
154(b)(1)(A) but does not mail a final rejection until thirty-seven
months after the application's filing date .6 (2) a RCE .7 (with a
reply to the final rejection) is filed at forty months after the
application's filing date; (3) the Office issues a notice of allowance
under 35 U.S.C. 151 at forty-four months after the application's filing
date; (4) the issue fee is paid at forty-seven months after the
application's filing date; and (5) the Office issues the patent at
fifty-three months after the application's filing date. .8 In this
example, the applicant would be entitled to a patent term adjustment of
four months due to the Office's failure to issue a patent within three
years, .9 plus a patent term adjustment of two months due to the
Office's failure to issue a patent within four months after the issue
fee has been paid and all outstanding requirements have been met, for a
total patent term adjustment of six months. The delay due to the
Office's failure to issue a patent after the issue fee has been paid
and all outstanding requirements have been met within the four-month
time frame specified in 35 U.S.C. 154(b)(1)(A)(iv) does not
"overlap" with the three-year time frame specified in 35 U.S.C.
154(b)(1)(B) because the period subsequent to the filing of the RCE is
not included in the three-year time frame specified in 35 U.S.C.
154(b)(1)(B). See 35 U.S.C. 154(b)(1)(B)(i). Thus, the
Office does not interpret 35 U.S.C. 154(b)(2)(A) as permitting either
patent term adjustment under 35 U.S.C. 154(b)(1)(A)(i)-(iv), or patent
term adjustment under 35 U.S.C. 154(b)(1)(B), but not as permitting
patent term adjustment under both 35 U.S.C. 154(b)(1)(A)(i)-(iv) and
154(b)(1)(B).
.6 Meeting the "fourteen-four-four-four" time frames
specified in 35 U.S.C. 154(b)(1)(A) but not meeting the three-year time
frame in 35 U.S.C. 154(b)(1)(B) may occur if there are numerous
non-final Office actions.
.7 A request for continued examination under 35 U.S.C. 132(b)
and 37 CFR 1.114.
.8 Thereby missing one of the "fourteen-four-four-four-"
month time frames specified in 35 U.S.C. 154(b)(1)(A) by two months:
specifically, the four-month time frame in 35 U.S.C. 154(b)(1)(A)(iv)
for issuing a patent after the issue fee has been paid and all
outstanding requirements have been met.
.9 For purposes of determining patent term adjustment under
35 U.S.C. 154(b)(1)(B), the application will be treated as having been
issued at forty months after its filing date because the period
subsequent to the filing of the RCE is not included in the three-year
time frame specified in 35 U.S.C. 154(b)(1)(B).
This document 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 this document does not affect the
information collection requirements associated with the information
collection under OMB control number 0651-0020.
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.
Authority: 35 U.S.C. 154(b).
June 14, 2004 JON W. DUDAS
Acting Under Secretary of
Commerce for Intellectual Property and
Acting Director of the
United States Patent and Trademark Office