(275) DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
[Docket No.: PTO-P-2010-0052]
Treatment of Letters Stating that the
USPTO's Patent Term Adjustment
Determination is Greater than what
the Applicant or Patentee Believes is
Appropriate
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Notice.
SUMMARY: The United States Patent and Trademark Office (USPTO) is
clarifying its treatment of letters submitted by applicants and patentees
stating that the USPTO's patent term adjustment determination indicated on
a notice of allowance, issue notification, or patent, is greater than what
the applicant or patentee believes is appropriate. The USPTO will place
these letters in the file of the application or patent without further
review. The USPTO will no longer review these letters or issue certificates
of correction on the basis of a review of these letters. If the applicant
or patentee wants the USPTO to reconsider its patent term adjustment
determination, the applicant or patentee must use the procedures set forth
in 37 CFR 1.705 for requesting reconsideration of a patent term adjustment
determination. A patentee may also file a terminal disclaimer disclaiming
any period considered in excess of the appropriate patent term adjustment.
However, the USPTO does not require an applicant or patentee to file either
a request for reconsideration under 37 CFR 1.705 or a terminal disclaimer
when the patent term adjustment indicated on a notice of allowance, issue
notification, or patent is greater than what the applicant or patentee
believes is appropriate.
DATE: The clarification set forth in this notice applies to all patent
term adjustment letters and requests for a certificate of correction filed
at any time that are pending before the USPTO on or after July 20, 2010.
FOR FURTHER INFORMATION CONTACT: Nancy E. Johnson, Office of Petitions:
by telephone at 571-272-3219; or by mail addressed to: Mail Stop
Comments-Patents, Commissioner for Patents, P.O. Box 1450, Alexandria, VA
22313-1450.
SUPPLEMENTARY INFORMATION: The Manual of Patent Examining Procedure (MPEP)
was revised in 2004 to indicate that if a notice of allowance indicates a
patent term adjustment that is longer than expected, the applicant may wait
until the patent issues, and if the patent issues with a value that is
incorrect, request a certificate of correction. See MPEP § 2733. The MPEP
does not specify what action the USPTO will take in response to such a
request for a certificate of correction. The USPTO is, in this notice,
clarifying when the USPTO will change the patent term adjustment
determination indicated on a patent via a certificate of correction under
either 35 U.S.C. 254 or 255.
The USPTO, however, has determined that it is not appropriate to provide
a patent term adjustment recalculation via a certificate of correction
under 35 U.S.C. 254 or 255. A certificate of correction is permissible
under 35 U.S.C. 254 only for a mistake in a patent that "is clearly
disclosed by the records of the Office." See 35 U.S.C. 254. While the
applicable patent term adjustment is ascertainable from the records of the
USPTO, a revised patent term adjustment determination requires a complex
calculation and is not "clearly disclosed" by the records of the USPTO. In
addition, a certificate of correction is permissible under 35 U.S.C. 255
only for "a mistake of a clerical or typographical nature, or of minor
character." See 35 U.S.C. 255.
Thus, the USPTO has long maintained that a request for a certificate of
correction under either 35 U.S.C. 254 or 255 is not an appropriate venue
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US PATENT AND TRADEMARK OFFICE |
1373 CNOG 1370 |
for seeking a change to the patent term adjustment indicated on a patent.
See Revision of Patent Term Extension and Patent Term Adjustment
Provisions, 69 FR 21704, 21707 (Apr. 22, 2004) (final rule) ("Petitions
under [37 CFR] 1.182 or 1.183, or requests for a certificate of correct
under either 35 U.S.C. 254 and [37 CFR] 1.323 or 35 U.S.C. 255 and [37
CFR] 1.324, are not substitute fora to obtain reconsideration of a patent
term adjustment determination indicated in a notice of allowance if an
applicant fails to submit a request for reconsideration within the time
period specified in [37 CFR] 1.705(b), or to obtain reconsideration of a
patent term adjustment determination indicated in a patent if a patentee
fails to submit a request for reconsideration within the time period
specified in [37 CFR] 1.705(d)"). The patent term adjustment provisions
of 35 U.S.C. 154(b) provide for the establishment of procedures for
patent term adjustment determinations, including providing the applicant
one opportunity to request reconsideration of any patent term adjustment
determination. See 35 U.S.C. 154(b)(3). It would render the provisions
of 35 U.S.C. 154(b)(3) superfluous if patent term adjustment
determinations could be revised at any time during the life of the patent
via a certificate of correction under 35 U.S.C. 254 or 255. In addition,
the patent term adjustment provisions of 35 U.S.C. 154(b) are designed to
have patent term adjustment issues to be resolved shortly after a patent
issues by providing a period of one hundred and eighty days from the grant
of the patent for seeking court review of the USPTO's patent term
adjustment determination (rather than the six-year statute of limitations
otherwise applicable for actions under the Administrative Procedures Act).
See 35 U.S.C. 154(b)(4). It would negate the purpose of the one hundred
and eighty day period in 35 U.S.C. 154(b)(4) to allow patent term
adjustment determinations to be revised at any time during the life of the
patent via a certificate of correction under 35 U.S.C. 254 or 255.
Therefore, it is not appropriate to issue a certificate of correction under
35 U.S.C. 254 or 255 to revise the patent term adjustment indicated in a
patent unless it is being revised for consistency with: (1) the patent
term adjustment determined via a decision on a request for reconsideration
under 37 CFR 1.705; or (2) the total patent term adjustment indicated on
the Patent Application Information Retrieval (PAIR) screen that displays
the patent term adjustment calculation for the patent.
Accordingly, the USPTO is clarifying that it will treat letters submitted
by applicants and patentees stating that the USPTO's patent term adjustment
determination indicated on a notice of allowance, issue notification, or
patent is greater than what the applicant or patentee believes is
appropriate by placing these letters in the file of the application or
patent without comment. The USPTO will no longer review these letters or
issue certificates of correction under either 35 U.S.C. 254 or 255 on the
basis of a review of these letters. In addition, the USPTO will not grant
a request for a certificate of correction under either 35 U.S.C. 254 or
255 to revise the patent term adjustment indicated in a patent, except in
the two situations discussed previously. If a patentee submits a request
for a certificate of correction under either 35 U.S.C. 254 or 255 to
revise the patent term adjustment indicated in a patent that includes
changes in the patent for which a certificates of correction would be
appropriate, the request for a certificate of correction will not be
granted unless the patentee submits a new request for a certificate of
correction that does not also attempt to revise the patent term adjustment
indicated in the patent.
If the applicant or patentee wants the USPTO to reconsider its patent
term adjustment determination, the applicant or patentee must use the
procedures set forth in 37 CFR 1.705 for requesting reconsideration of a
patent term adjustment determination, whether the USPTO's patent term
adjustment determination is greater than or less than the adjustment that
the applicant or patentee believes to be appropriate. A patentee may also
file a terminal disclaimer at any time disclaiming any period considered in
excess of the appropriate patent term adjustment. See 35 U.S.C. 253 and
37 CFR 1.321. However, the USPTO does not require an applicant or patentee
to file either a request for reconsideration under 37 CFR 1.705 or a
terminal disclaimer when the patent term adjustment indicated on a notice
of allowance, issue notification, or patent is greater than what the
applicant or patentee believes is appropriate.
The appropriate sections of the MPEP will be revised in accordance with
this notice in due course.
July 14, 2010 DAVID J. KAPPOS
Under Secretary of Commerce for
Intellectual Property and Director of the
United States Patent and Trademark Office
[1357 OG 262]