(207) Notice Concerning Calculation of the
Patent Term Adjustment under
35 U.S.C. § 154(b)(1)(B) involving
International Applications Entering the
National Stage Pursuant to 35 U.S.C § 371
Summary: The computer program that the United States Patent and Trademark
Office (USPTO) uses to calculate patent term adjustment incorrectly
calculates the three-year pendency provision of 35 U.S.C. § 154(b)(1)(B) in
international applications if the requirements of 35 U.S.C. § 371 are not
fulfilled on the date that the national stage commenced under 35 U.S.C.
§ 371(b) or (f). The USPTO is in the process of correcting this computer
program. Applicants seeking a revised patent term adjustment determination
based on this calculation must submit a timely request for reconsideration
of the patent term adjustment indicated in the patent under 37 CFR
1.705(d).
Background: Under 35 U.S.C. § 154(b)(1)(B), an applicant is entitled to
additional patent term adjustment if the issue of an original patent is
delayed due to the failure of the USPTO to issue a patent within three
years after the actual filing date of the application. The USPTO
implemented the three-year pendency provision in 35 U.S.C. § 154(b)(1)(B)
in 37 CFR 1.702(b) and 37 CFR 1.703(b). See Changes to Implement Patent
Term Adjustment Under Twenty-Year Patent Term, 65 Fed. Reg. 56365, 56391-92
(Sept. 18, 2000) (final rule). The USPTO indicated the three-year pendency
provision in 35 U.S.C. § 154(b)(1)(B) is measured from the date that the
national stage commences under 35 U.S C. § 371(b) or (f) in an
international application. See Changes to Implement Patent Term Adjustment
Under Twenty-Year Patent Term, 65 Fed. Reg. at 56382-84. The USPTO makes
patent term adjustment determinations by a computer program that uses the
information recorded in the USPTO's automated patent application
information system (the Patent Application Locating and Monitoring system
or PALM system), except when an applicant requests reconsideration pursuant
to 37 CFR 1.705. See Changes to Implement Patent Term Adjustment Under
Twenty-Year Patent Term, 65 Fed. Reg. at 56370, 56380-81.
Discussion: The USPTO is in the process of correcting an error in the
computer program that it uses to calculate the patent term adjustment that
affects patents issuing from international applications entering the
national stage as to the United States pursuant to 35 U.S.C. § 371. The
USPTO's computer program incorrectly calculates the three-year pendency
provision of 35 U.S.C. § 154(b)(1)(B) in international applications as
being measured from the date that the requirements of 35 U.S.C. § 371 were
fulfilled rather than the date the national stage commenced under 35 U.S.C.
§ 371(b) or (f) in the international application. The USPTO is correcting
the computer program to reflect that the three-year pendency provision of
35 U.S.C. § 154(b)(1)(B) in international applications is measured from the
date the national stage commenced under 35 U.S.C. § 371(b) or (f) in the
international application.
An applicant seeking a revised patent term adjustment determination based
upon the three-year pendency provision must submit a timely request for
reconsideration of the patent term adjustment indicated in the patent. The
USPTO does not calculate and inform the applicant of the patent term
adjustment based upon the three-year pendency provision of 35 U.S.C. §
154(b)(1)(B) in the notice of allowance because the USPTO must know the
date the patent will issue to be able to calculate the patent term
adjustment based upon this provision. Thus, reconsideration of the patent
term adjustment indicated in the patent as it relates to the three-year
pendency provision of 35 U.S.C. § 154(b)(1)(B) is not considered a matter
that could have been raised in an application for patent term adjustment
under 37 CFR 1.705(b) (provides for reconsideration of the patent term
adjustment indicated in the notice of allowance). Therefore, a request for
reconsideration of the patent term adjustment calculation based on the
three-year pendency provision of 35 U.S.C. § 154(b)(1)(B) will be
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US PATENT AND TRADEMARK OFFICE |
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considered timely under 37 CFR 1.705(d) if filed within two months of the
date the patent issued.
For Further Information Contact: The Office of Patent Legal
Administration by telephone at (571) 272-7702, or by mail addressed to:
Mail Stop Comments-Patents, Commissioner for Patents, P.O. Box 1450,
Alexandria, VA 22313-1450.
September 10, 2009 DAVID J. KAPPOS
Under Secretary of Commerce for Intellectual Property and
Director of the United States Patent and Trademark Office
[1347 OG 49]