| Allowance, Patent Term Adjustment or Extension |
Referenced Items (277, 278, 279, 280, 281, 282, 283, 284, 285, 286, 287, 288, 289, 290, 291) |
(281) DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Part 1
[Docket No. PTO-P-2011-0058]
RIN 0651-AC63
Revision of Patent Term Adjustment Provisions
Relating to Appellate Review
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Final rule.
SUMMARY: The United States Patent and Trademark Office (Office) is
revising the patent term adjustment provisions of the rules of practice
in patent cases to better reflect the period of appellate review. The
patent term adjustment provisions of the American Inventors Protection
Act of 1999 (AIPA) provide for patent term adjustment if, inter alia,
the issuance of the patent was delayed due to appellate review by the
Board of Patent Appeals and Interferences (Board) or by a Federal
court, and the patent was issued under a decision in the review
reversing an adverse determination of patentability. The Office is
specifically revising the rules of practice to indicate that the period
of appellate review under the patent term adjustment provisions of the
AIPA begins when jurisdiction over the application passes to the Board
rather than the date on which a notice of appeal to the Board is filed.
DATES: Effective date: This final rule is effective September 17, 2012.
Applicability date: The amendments to 37 CFR 1.703 in this final
rule are applicable to any application in which a notice of allowance
is issued on or after September 17, 2012, and any patent issuing
thereon. The amendment to 37 CFR 1.704 is applicable with respect to
the filing of an appeal brief in any application in which a notice of
appeal under 37 CFR 41.31 is filed on or after September 17, 2012.
FOR FURTHER INFORMATION CONTACT: Kery A. Fries, Senior Legal Advisor,
Office of Patent Legal Administration, by telephone at 571-272-7757, by
mail addressed to: Box Comments--Patents, Commissioner for Patents,
P.O. Box 1450, Alexandria, VA 22313-1450, marked to the attention of
Kery A. Fries.
SUPPLEMENTARY INFORMATION:
Executive Summary
Purpose: The Office is revising the patent term adjustment
provisions of the rules of practice in patent cases to better reflect
the period of appellate review.
Summary of Major Provisions: The final rule will result in patent
term adjustment determinations that better reflect any delays an
application experiences during the appellate review process. The final
rule defines the day that an appellate review period begins for patent
term adjustment purposes as the day that jurisdiction over the patent
application passes to the Board. Also, the final rule provides
applicants with a three-month time period for filing a compliant appeal
brief before the Office will consider applicant as having failed to
engage in reasonable efforts to conclude processing or examination of
the application.
Costs and Benefits: This rulemaking is not significant or
economically significant under Executive Order 12866 (Sept. 30, 1993),
as amended by Executive Order 13258 (Feb. 26, 2002) and Executive Order
13422 (Jan. 18, 2007).
Background
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The Uruguay Round Agreements Act (URAA) 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). See
Public Law 103-465, § 532(a)(1), 108 Stat. 4809, 4983-85 (1994).
The URAA also contained provisions, codified at 35 U.S.C. 154(b), for
patent term extension due to certain examination delays. Under the
patent term extension provisions of 35 U.S.C. 154(b) as amended by the
URAA, an applicant is entitled to patent term extension for delays due
to interference, secrecy order, or successful appellate review. See 35
U.S.C. 154(b) (1995). 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) (twenty-year patent term final rule).
The American Inventors Protection Act of 1999 (AIPA) further
amended 35 U.S.C. 154(b) to expand the list of administrative delays
which may give rise to patent term adjustment (characterized as
"patent term adjustment" in the AIPA). See Public Law 106-113, 113
Stat. 1501, 1501A-552 through 1501A-591 (1999). Specifically, under the
patent term adjustment provisions of 35 U.S.C. 154(b) as amended by the
AIPA, an applicant is entitled to patent term adjustment for the
following reasons: (1) If the Office fails to take certain actions
during the examination and issue process within specified time frames
(known as the "A" provision, being in 35 U.S.C. 154(b)(1)(A)); (2)
subject to certain enumerated examples, if the Office fails to issue a
patent within three years of the actual filing date of the application
in the United States (known as the "B" provision, being in 35 U.S.C.
154(b)(1)(B)); and (3) for delays due to interference, secrecy order,
or successful appellate review (known as the "C" provision, being in
35 U.S.C. 154(b)(1)(C)). See 35 U.S.C. 154(b)(1). The Office
implemented the patent term adjustment provisions of 35 U.S.C. 154(b)
as amended by 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) (patent term adjustment 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. The patent term extension
provisions of the URAA (for delays due to secrecy order, interference
or successful appellate review) continue to apply to original utility
and plant applications filed on or after June 8, 1995, and before May
29, 2000. See id.
In April 2011, the Office proposed to revise the patent term
extension and adjustment provisions of the URAA and AIPA to provide,
with certain exceptions, that the reopening of prosecution by an
examiner would be considered a "decision in the review reversing an
adverse determination of patentability," since in many such
situations, the Office decision in the pre-Board review reveals some
weakness in the adverse patentability determination from which the
appeal was taken, making it appropriate to treat such situations as a
"decision in the review reversing an adverse determination of
patentability" under the patent term adjustment and extension
provisions. See Revision of Patent Term Extension and Adjustment
Provisions Relating to Appellate Review and Information Disclosure
Statements, 76 FR 18990 (Apr. 6, 2011). The Office received several
comments suggesting that a better approach would be to treat the
appellate review period as beginning when jurisdiction passes to the
Board, rather than on the date a notice of appeal to the Board was
filed. This approach would give applicants the possibility of obtaining
patent term adjustment under the "B" provision for Office delays
during the pre-Board process (including when prosecution is reopened).
Specifically, the Office would not subtract from the "B" period the period
of time from the filing of the notice of appeal to the earlier of the
filing of a reply brief or the expiration of the period to file the reply
brief.
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In November 2011, the Office published a final rule concerning
practice before the Board in ex parte appeals, and defined that
jurisdiction of an appeal passes to the Board at the earlier of the
filing of the reply brief or upon the expiration of the time period for
filing a reply brief. See Rules Of Practice Before the Board of Patent
Appeals and Interferences in Ex Parte Appeals 76 FR 72270, 72273 (Nov.
2011).
In December 2011, the Office published a notice seeking public
comment on a proposal to change its interpretation of the appellate
review language of the "B" provision (35 U.S.C. 154(b)(1)(B)(ii)) to
provide that appellate review begins on the date on which jurisdiction
over the application passes to the Board under 37 CFR 41.35 (rather
than the date on which a notice of appeal under 35 U.S.C. 134 was filed
as in the current rule). See Revision of Patent Term Extension and
Adjustment Provisions Relating to Appellate Review, 76 FR 81432 (Dec.
28, 2011). The December 2011 notice of proposed rulemaking indicated
that to change the interpretation of the appellate review language of
the "B" provision without also changing the appellate review language
of the "C" provision (35 U.S.C. 154(b)(1)(C)(iii)) would require the
Office to interpret the same statutory term, "appellate review by the
Board," appearing in two closely related provisions, in two different
ways, violating well-recognized canon of statutory interpretation that
the same terms appearing in related statutory provisions are to be
given the same meaning. See Revision of Patent Term Extension and
Adjustment Provisions Relating to Appellate Review, 76 FR at 81434
(citing Yi v. Fed. Bureau of Prisons, 412 F.3d 526, 531 (4th Cir.
2005)). The December 2011 notice of proposed rulemaking further
indicated a later beginning of the appellate review by the Board, as
was being proposed, would result in the possibility of a greater period
of patent term adjustment under the "B" provision vis-[agrave]-vis
the Office's interpretation of this provision in 2000, but would result
in the possibility of a lesser period of patent term adjustment under
the "C" provision vis-à-vis the Office's interpretation of
this provision in 2000. See id. Accordingly, for purposes of
calculating patent term adjustment based upon appellate review, the
impact of the rule change would be to reduce the amount of patent term
adjustment awarded for a successful appeal under 35 U.S.C.
154(b)(1)(C)(iii) by beginning the appellate review period at the time
the Board assumes jurisdiction of the appeal. Any negative impact to
applicant, however, may be offset by potentially increasing the amount
of patent term adjustment awarded for the Office failing to issue the
patent within three years of the actual filing date in the United
States under 35 U.S.C. 154(b)(1)(B) ("`B' delay"). For example, the
patent term adjustment awarded pursuant to the "B" delay may increase
when the examiner reopens prosecution after a notice of appeal is filed
(e.g., following a pre-appeal conference or an appeal conference) and
the patent issues thereafter, because the period of time between the
filing of the notice of appeal and the examiner's reopening of
prosecution would no longer be deducted under 35 U.S.C. 154(b)(1)(B)(ii).
The December 2011 notice of proposed rulemaking also indicated that
the AIPA sets forth a number of conditions and limitations on any
patent term adjustment accrued under 35 U.S.C. 154(b)(1). See Revision
of Patent Term Extension and Adjustment Provisions Relating to
Appellate Review, 76 FR at 81434-35. Specifically, 35 U.S.C.
154(b)(2)(C) provides, in part, that "[t]he period of adjustment of
the term of a patent under [35 U.S.C.154(b)(1)] shall be reduced by a
period equal to the period of time during which the applicant failed to
engage in reasonable efforts to conclude prosecution of the
application" and that "[t]he Director shall prescribe regulations
establishing the circumstances that constitute a failure of an
applicant to engage in reasonable efforts to conclude processing or
examination of an application." 35 U.S.C. 154(b)(2)(C)(i) and (iii).
The rules of practice (37 CFR 41.37) require that an appeal brief be
filed within two months from the date of filing of the notice of appeal
under 35 U.S.C. 134 and 37 CFR 41.31, with extensions available
pursuant to 37 CFR 1.136 and 1.550(c). An applicant, however, may delay
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or prevent the passing of jurisdiction of the application to the Board
by: (1) Obtaining an extension of time to file the appeal brief, (2)
filing an appeal brief that does not comply with the requirements of 37
CFR 41.37, or (3) seeking further prosecution before the examiner by
filing a request for continued examination under 37 CFR 1.114.
Therefore, the Office is providing, under its authority in this final
rule under 35 U.S.C. 154(b)(2)(C), that the failure to file an appeal
brief in compliance with 37 CFR 41.37 within three months from the date
on which a notice of appeal to the Board was filed under 35 U.S.C. 134
and 37 CFR 41.31 constitutes a failure of an applicant to engage in
reasonable efforts to conclude processing or examination of an
application.
Discussion of Specific Rules
Title 37 of the Code of Federal Regulations, Part 1, is amended as
follows:
Section 1.703: Section 1.703(b)(4), which defines the period of
appellate review in 35 U.S.C. 154(b)(1)(B)(ii), is amended to define
this period as the sum of the number of days, if any, in the period
beginning on the date on which jurisdiction over the application passes
to the Board under § 41.35(a) of this title and ending on the date
that jurisdiction ends under § 41.35(b) of this title or the date
of the last decision by a Federal court in an appeal under 35 U.S.C.
141 or a civil action under 35 U.S.C. 145, whichever is later. Section
1.703(b)(4) formerly defined this period as beginning on the date on
which a notice of appeal to the Board was filed under 35 U.S.C. 134 and
§ 41.31.
Section 1.703(e), which defines the period of appellate review in
35 U.S.C. 154(b)(1)(C)(iii), is amended to define this period as the
sum of the number of days, if any, in the period beginning on the date
on which jurisdiction over the application passes to the Board under
§ 41.35(a) of this title and ending on the date of a final decision
in favor of the applicant by the Board or by a Federal court in an
appeal under 35 U.S.C. 141 or a civil action under 35 U.S.C. 145.
Section 1.703(e) formerly defined this period as beginning on the date
on which a notice of appeal to the Board was filed under 35 U.S.C. 134
and § 41.31.
Section 1.704: Section 1.704(c) is amended to provide that the
failure to file an appeal brief in compliance with § 41.37 within
three months from the date on which a notice of appeal to the Board was
filed under 35 U.S.C. 134 and § 41.31 constitutes a failure of an
applicant to engage in reasonable efforts to conclude processing or
examination of an application. Section 1.704(c) would also provide that
in such a case the period of adjustment set forth in § 1.703 shall
be reduced by the number of days, if any, beginning on the day after
the date that is three months from the day on which a notice of appeal
to the Board was filed under 35 U.S.C. 134 and § 41.31 of this
title and ending on the date an appeal brief was filed in compliance with
§ 41.37 or a request for continued examination was filed in compliance
with § 1.114. Section 1.704(c) also renumbers current § 1.704(c)(11) as
new § 1.704(c)(12).
As discussed previously, the changes to § 1.703 in this final
rule are applicable to any application in which a notice of allowance
is issued on or after September 17, 2012, and any patent issuing
thereon, and the change to § 1.704 is applicable with respect to
the filing of an appeal brief in any application in which a notice of
appeal under § 41.31 is filed on or after September 17, 2012.
The Office will also apply the changes to § 1.703 in this final
rule in any timely patent term adjustment reconsideration proceeding
that is initiated on or after September 17, 2012. To allow patentees to
take advantage of this final rule, and for purposes limited to this
final rule, such patent term adjustment reconsideration proceedings
shall be the following timely filed proceedings initiated on or after
September 17, 2012: (1) Reconsideration proceedings initiated pursuant
to a remand from a timely filed civil action in Federal court; (2)
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reconsideration proceedings initiated pursuant to a timely request for
reconsideration of the patent term adjustment indicated in the patent
under § 1.705(d) in which the patentee argues that the change to
§ 1.703 in this final rule is applicable to his or her patent; and
(3) reconsideration proceedings initiated pursuant to a request for
reconsideration that seeks reconsideration of the Office's decision
under § 1.705(d) regarding patent term adjustment under the
Office's former interpretation of the appellate review language of 35
U.S.C. 154(b)(1)(B)(ii) and (C)(iii), if such request is filed within
two months of the date of the decision for which reconsideration is
requested (§ 1.181(f)). Section 1.705(d) provides, in part, that
any request for reconsideration of the patent term adjustment indicated
in the patent must be filed within two months of the date the patent
issued and must comply with the requirements of §§ 1.705(b)(1)
and (b)(2).
Comments and Response to Comments
As discussed previously, the Office published a notice on December
28, 2011, proposing to change the rules of practice pertaining to
patent term adjustment to: (1) Indicate that the period of appellate
review under the patent term provisions of the AIPA begins when
jurisdiction over the application passes to the Board rather than when
the notice of appeal is filed;
(2) Indicate that the provisions relating to the "B" delay under
35 U.S.C 154(b)(1)(B) will reduce the amount of "B" delay for the
period beginning from the date of the notice of appeal until the
earlier of the filing of a reply brief or the expiration of the period
to file the reply brief; and (3) introduce a new type of applicant
delay for the applicant's failure to file a compliant appeal brief
within two months of the filing of a notice of appeal. See Revision of
Patent Term Adjustment Provisions Relating to Appellee Review, 76 FR
81432-37. The Office received comments from four commenters.
Comment 1: One comment suggested that the Office not consider it a
failure of an applicant to engage in reasonable efforts to conclude
processing or examination of an application under proposed §
1.704(c)(9) (§ 1.704(c)(11) as adopted) unless more than three
months has passed from the filing of the notice of appeal until a
compliant appeal brief is filed. The comment urges that preparing an
appeal brief requires considerable effort and the standard should be
the same as for responses to an Office action.
Response: As suggested in the comment, the Office is revising the
provision to provide that it will be considered a failure of an
applicant to engage in reasonable efforts to conclude processing or
examination of an application under § 1.704(c)(11) if the applicant
takes more than three months from the date of the filing of the notice
of appeal to file a compliant appeal brief. The Office finds that the
three-month period would be equivalent to the statutory time provided
an applicant to respond to a notice from the Office making any
rejection, objection, argument, or other request before applicant is
deemed to have failed to engage in reasonable efforts to conclude
processing or examination of the application under 35 U.S.C.
154(b)(2)(C)(ii).
Comment 2: Two comments suggested that the Office should not
retroactively apply the provisions of proposed § 1.704(c)(9)
(§ 1.704(c)(11) as adopted) to any notice of appeal that is filed prior
to the final enactment of the provision.
Response: As suggested in the comments, the Office will apply the
provision of 1.704(c)(11) only with respect to an appeal brief in which
the notice of appeal was filed on or after September 17, 2012.
Comment 3: One comment requested clarification of the patent term
adjustment effect under proposed § 1.704(c)(9) (§ 1.704(c)(11)
as adopted) if the examiner reopens prosecution before a compliant
appeal brief is filed, but more than two months after a notice of
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appeal was filed.
Response: The Office proposed that if more than two months passed
from the date a notice of appeal is filed until the date a compliant
appeal brief is filed, the Office would assess an applicant delay. The
Office has decided not to assess applicant delay under 1.704(c)(11)
unless three months has passed from the date a notice of appeal is
filed until the date a compliant brief is filed. If the Office reopens
prosecution after three months from the applicant's filing of the
notice of appeal but prior to applicant's submission of a compliant
appeal brief under § 41.37, the Office would not find any applicant
delay under § 1.704(c)(11). Moreover, the Office would not deem the
reopening of the prosecution as vacating any previous filed response
that potentially increases patent term adjustment under 35 U.S.C.
154(b)(1)(A)(i) through (iv). Reopening prosecution after the notice of
appeal may increase pendency of the application and under certain
circumstances result in patent term adjustment under 35 U.S.C.
154(b)(1)(B).
Comment 4: One comment requested clarification of whether the two-
month period under proposed § 1.704(c)(9) (three-month period of
§ 1.704(c)(11) as adopted) would be extendable for weekends and
holidays under ArQule v. Kappos, 793 F.Supp.2d 214 (D.D.C. 2011).
Response: Deadlines for patent term adjustment will be calculated
pursuant to 35 U.S.C. 21(b) since the Office is establishing a time
frame for taking action. If the last day of the three-month period set
forth in 1.704(c)(11) as adopted falls on a Saturday, Sunday, or a
Federal holiday within the District of Columbia, an applicant would be
able to file the appeal brief on the next succeeding secular or
business day without reduction of patent term adjustment under
§ 1.704(c)(11). For example, if a notice of appeal were filed on Friday,
May 18, 2012, such that the three-month deadline fell on Saturday,
August 18, 2012, and the appeal brief were filed on Monday, August 20,
2012, applicant would not receive any reduction of patent term
adjustment under § 1.704(c)(11) because the three-month date fell
on a Saturday. If applicant filed the compliant appeal brief on
Tuesday, August 21, 2012, applicant would be assessed a one-day patent
term adjustment reduction under § 1.704(c)(11).
Comment 5: One comment requested clarification of whether a
response to a non-compliant appeal brief will be considered a supplemental
response under § 1.704(c)(8).
Response: The filing of a compliant appeal brief under 41.37 after
a non-compliant appeal brief has been filed is not considered a
supplemental reply under § 1.704(c)(8). Moreover, the Office will
not consider it to be an omission under § 1.704(c)(7). However, it
will be considered a failure of an applicant to engage in reasonable
efforts to conclude processing or examination of an application under
§ 1.704(c)(11) if the compliant appeal brief is not filed within
three months of the date of the notice of appeal, regardless of the
filing of a non-compliant appeal brief.
Comment 6: Two comments requested clarification as to the patent
term adjustment consequences of filing an information disclosure
statement or an amendment after the notice of appeal has been filed.
Response: There will be a reduction of patent term adjustment if
the applicant submits an information disclosure statement pursuant to
§ 1.97(c) or an amendment under § 41.33 after a notice of
appeal has been filed but prior to jurisdiction passing to the Board
under § 1.704(c)(8). Under § 1.97(c), an applicant who submits
an information disclosure statement meeting the requirements of
§§ 1.97 and 1.98 will have such submission considered by the
examiner if it is accompanied by a statement under § 1.97(e) and
the fee under § 1.17(p). Moreover, the Office may consider an
amendment under § 41.33(a) and (b) if it meets the requirements for
consideration. As § 1.703(b)(4) would no longer treat the period of
time between the notice of appeal and the date that jurisdiction passes
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to the Board as being excluded from the "B" period, an applicant may
increase "B" delay by taking actions that extend the period between
the notice of appeal and the date that jurisdiction passes to the
Board. Accordingly, treating the IDS and amendments filed after a
notice of appeal as an applicant delay under (c)(8) will discourage
attempts to increase "B" delay, and accordingly, the Office will so
treat them.
Comment 7: One comment suggested that an applicant should be
entitled to patent term adjustment if the Office does not respond to a
request for a pre-appeal review within 45 days.
Response: The suggestion was not adopted. 35 U.S.C. 154(b)(1)(A)
provides conditions under which an applicant is entitled to patent term
adjustment due to delayed responses by the Office, but does not provide
patent term adjustment for the situation suggested in the comment. 35
U.S.C. 154(b)(1)(A)(ii) requires that the Office respond to an appeal
within four months after the date on which the appeal was taken. The
Office implemented this patent term adjustment provision in September
2000, and indicated that the phrase "appeal taken" means the date of
the filing of an appeal brief in compliance with § 41.37. See
Changes to Implement Patent Term Adjustment Under the Twenty-Year
Patent Term, 65 FR 56366, 56368 (Sept. 18, 2000).
Comment 8: One comment suggested that the applicant should be
entitled to patent term adjustment if the Office does not mail either
an examiner's answer or a notice of non-compliant appeal brief within
two months of the filing of the appeal brief.
Response: The suggestion was not adopted. 35 U.S.C. 154(b)(1)(A)
provides conditions upon which an application is entitled additional
patent term adjustment due to delayed responses by the Office, and does
not provide patent term adjustment on this basis. As discussed
previously, 35 U.S.C. 154(b)(1)(A)(ii) requires that the Office respond
to an appeal within four months after the date on which the appeal was
taken. Accordingly, the Office could not provide patent term adjustment
on the basis suggested in the comment.
Comment 9: One comment requested clarification as to whether the
applicant is entitled to patent term adjustment if a supplemental
examiner's answer or acknowledgment of the reply brief by the examiner
is delayed.
Response: The Office recently revised the appeal rules to reduce
the period of time before the application is transferred to the Board.
See Rules of Practice Before the Board of Patent Appeals and
Interferences in Ex Parte Appeals, 76 FR 72270, 72271 (Nov. 22, 2011).
Under the revised rules, the examiner will no longer acknowledge the
reply brief or mail a supplemental examiner's answer in response to the
reply brief. As a result, the Board takes jurisdiction over the
proceeding upon the earlier of the filing of the reply brief under
§ 41.41 or the expiration of the period of time in which applicant
may file a reply brief. See § 41.35(a). Accordingly, the issue is
moot in light of the changes to the appeal rules.
Comment 10: One comment sought clarification as to the date that
the file is transferred to the Board under § 41.35 in order to
calculate patent term adjustment under 35 U.S.C. 154(b)(1)(C)(iii).
Response: The Office recently revised the ex parte appeal rules,
which no longer define the date that the Board assumes jurisdiction of
the appeal as the date that the file is transferred to the Board. See
Rules of Practice Before the Board of Patent Appeals and Interferences
in Ex Parte Appeals, 76 FR at 72271. Jurisdiction now passes to the
Board upon the earlier of the date of filing of the reply brief under
§ 41.41 or when the period for filing of the reply brief has
expired. See § 41.35(a). The change to the ex parte appeal rules
provides clarity as to when jurisdiction is passed and when the
application is deemed to be under appellate review by the Board for
purposes of 35 U.S.C. 154(b)(1)(C)(iii).
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Comment 11: One comment sought clarification as to whether the
applicant is entitled to patent term adjustment if an examiner reopens
prosecution of the application.
Response: The applicant is not entitled to patent term adjustment
for the reopening of prosecution of the application per se. However,
under certain circumstances, the reopening of prosecution by the
examiner may lead to additional patent term adjustment under 35 U.S.C.
154(b)(1)(B) because the period of time from the filing of the notice
of appeal to the reopening of prosecution will not be excluded from the
three-year provision of 35 U.S.C. 154(b)(1)(B)(ii) as such time would
occur prior to the date that jurisdiction is passed to the Board. See
§ 1.703(b)(4).
Comment 12: One comment sought clarification as to what would
happen if jurisdiction ends without a decision by the Board or a
Federal court; e.g., appellant files a request for continued
examination under 37 CFR 1.114 after jurisdiction passes to the Board.
Response: Section 1.703(b)(4) has been amended to address
situations where the jurisdiction ends without a decision by the Board
or a Federal court. Under the revised rule, the appeal review period
will end on the date that jurisdiction ends under § 41.35(b) or the
date of the last decision by a Federal court in an appeal under 35
U.S.C. 141 or a civil action under 35 U.S.C. 145, whichever is later.
Accordingly, if appellant files a request for continued examination
under 37 CFR 1.114 after jurisdiction passes to the Board, the period
of "B" delay under 35 U.S.C. 154(b)(1)(B) would not include the
period beginning on the date jurisdiction passed to the Board under
§ 41.35(a) and ending on the filing date of the request for
continued examination under 37 CFR 1.114; that is, the date
jurisdiction of the Board ends.
Comment 13: One comment sought clarification as to the point at
which jurisdiction is remanded by the Board back to the examiner when
the examiner is affirmed, affirmed-in-part, or reversed.
Response: Pursuant to §§ 41.35(b)(2) and 41.54, jurisdiction of
the Board ends when the Board enters a final decision
(see § 41.2) and judicial review is sought or the time for seeking
judicial review has expired. Under 37 CFR 41.54, jurisdiction passes to
the examiner, for further action by appellant or examiner, as the
condition of the application or patent under ex parte reexamination may
require additional action pursuant to the decision. Accordingly, the
amount of patent term adjustment that may accrue under § 1.703(e)
and the period of time not considered "B" time will be fixed to the
date that jurisdiction of the Board ends under § 41.35(b) unless an
appeal under 35 U.S.C. 141 or a civil action under 35. U.S.C. 145 is
filed.
Comment 14: One comment sought clarification as to the point at
which an applicant may file an information disclosure statement after
the Board reverses or remands the application to the examiner without
an applicant delay resulting.
Response: Current § 1.704(c)(9) identifies when applicant delay
occurs after a decision by the Board and is applicable to an
information disclosure statement that is filed after a Board or Federal
court decision. However, an applicant will not be deemed to have failed
to engage in reasonable efforts under § 1.704(c)(9) if the
applicant can file an accompanying statement under § 1.704(d).
Comment 15: One comment suggested that the Office should adopt its
original proposal as set forth in the notice of proposed rulemaking,
Revision of Patent Term Extension and Adjustment Provisions Relating to
Appellate Rule and Information Disclosure Statements, 76 FR 18990
(April 6, 2011), that an applicant should receive additional patent
term adjustment if the Office reopens prosecution and issues an Office
action under 35 U.S.C. 132 or a notice of allowance under 35 U.S.C. 151
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after a notice of appeal has been filed but before any decision by the
Board. This comment suggested that the proposal set forth in the April
2011 notice of proposed rulemaking is fairer in that only meritorious
appeals will be rewarded, and that under the latest proposal,
meritorious appeals will not be rewarded if prosecution is reopened
after the filing of a request for continued examination. The comment
further suggested that applicant can increase the patent term
adjustment of the "B" delay by distorting the time between the notice
of appeal and the date that jurisdiction passes to the Board by filing
extensions of time under § 1.136(a). In addition, the comment
suggested that the Board conducts "appellate review prior to the
jurisdiction change under § 41.35."
Response: The suggestions were not adopted. The Office has
acknowledged that the impact of the rule would reduce the amount of
patent term adjustment awarded for a successful appeal under 35 U.S.C.
154(b)(1)(C)(iii). The Office, however, believes that any such impact
may be offset by potentially increased patent term adjustment awarded
for the Office failing to issue the patent within three years of the
actual filing date under 35 U.S.C. 154(b)(1)(B). See Revision of Patent
Term Adjustment Provisions relating to Appellate Review, 76 FR 81432
(Dec. 28, 2011). The Office is aware that under certain scenarios an
applicant may have received more overall patent term adjustment under
one approach than the other. However, to change the interpretation of
the appellate review language of the "B" provision without also
changing the appellate review language of the "C" provision would
require the Office to interpret the same statutory term, "appellate
review by the Board," appearing in two closely related provisions, in
two different ways. The Office is aware that prior to the passage of
jurisdiction from the examiner to the Board, the Board reviews briefs
for compliance with § 41.37, but the Office notes that Revised
Procedures for Appellate Review memorandum expressly states that the
responsibility of the Board for determining whether appeal briefs
comply with § 41.37 is not considered a transfer of jurisdiction
when an appeal brief is filed. See Revised Procedures for Appellate
Brief Review (March 29, 2010)
http://www.uspto.gov/patents/law/exam/bpai_revised_procedure_20100329.pdf.
Instead, this review is only a transfer of the specific responsibility of
notifying appellants under § 41.37(d) of the reasons for non-compliance.
id. As for an applicant's ability to distort the time from the notice of
appeal to the date jurisdiction passes under § 41.35, the Office has
prevented applicant from increasing the "B" period by adding an
additional applicant delay if applicant takes more than three months
from the notice of appeal to the date of the submission of a compliant
appeal brief under § 1.704(c)(11). An applicant, for example, who
obtains a five-month extension of time to file the appeal brief would
have an applicant delay beginning on the day after the three-month date
of the filing of the notice of appeal and ending on the date of the
filing of the compliant appeal brief.
Rulemaking Considerations
A. Regulatory Flexibility Act
The Deputy General Counsel for General Law of the United States
Patent and Trademark Office certified to the Chief Counsel for Advocacy
of the Small Business Administration at the proposed rule stage that
changes in the proposed rule will not have a significant economic
impact on a substantial number of small entities. See 5 U.S.C. 605(b).
The Office received no comments on that certification. For the reasons
set forth herein, the Deputy General Counsel for General Law of the
United States Patent and Trademark Office has certified to the Chief
Counsel for Advocacy of the Small Business Administration that changes
in this final rule will not have significant economic impact on a
substantial number of small entities. See 5 U.S.C. 605(b).
The changes to the rules of practice in this final rule: (1) Revise
the provisions that define the beginning and ending dates of the period
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of appellate review under 35 U.S.C. 154(b)(1)(B)(ii) and
154(b)(1)(C)(iii) to provide that this period begins on the date on
which jurisdiction over the application passes to the Board under 37
CFR 41.35; and (2) provide that the failure to file a proper appeal
brief within three months from the date on which a notice of appeal to
the Board was filed, as required by 35 U.S.C. 134, constitutes a
failure of an applicant to engage in reasonable efforts to conclude
processing or examination of an application. This final rule does not
add any additional requirements (including information collection
requirements) or fees for patent applicants or patentees.
The changes to 37 CFR 1.703(b)(4) and (e) merely reinterpret the
beginning and ending dates of the period of appellate review under 35
U.S.C. 154(b)(1)(B)(ii) and 154(b)(1)(C)(iii) for purposes of patent
term adjustment calculations. They do not impose any additional burden
on applicants. The change to 37 CFR 1.704(c) specifies that the failure
to file a proper appeal brief within three months from the date on
which a notice of appeal to the Board was filed, as required by 35
U.S.C. 134, constitutes failure of an applicant to engage in reasonable
efforts to conclude processing or examination of an application for
purposes of patent term adjustment calculations. This revision will not
have a significant economic impact on a substantial number of small
entities because: (1) Applicants are not entitled to patent term
adjustment for examination delays that result from their delay in
prosecuting the application (35 U.S.C. 154(b)(2)(C)(i) and 37 CFR
1.704(a)); and (2) applicants may avoid any consequences from this
provision simply by filing an appeal brief in compliance with 37
CFR 41.37 (or filing a request for continued examination under 37
CFR 1.114) within three months from the date on which a notice of appeal
to Board was filed.
For the foregoing reasons, neither of the changes in this notice
will have a significant economic impact on a substantial number of
small entities.
B. Executive Order 12866 (Regulatory Planning and Review)
This rulemaking has been determined to be not significant for
purposes of Executive Order 12866 (Sept. 30, 1993).
C. Executive Order 13563 (Improving Regulation and Regulatory Review)
The Office has complied with Executive Order 13563. Specifically,
the Office has, to the extent feasible and applicable: (1) Made a
reasoned determination that the benefits justify the costs of the rule;
(2) tailored the rule to impose the least burden on society consistent
with obtaining the regulatory objectives; (3) selected a regulatory
approach that maximizes net benefits; (4) specified performance
objectives; (5) identified and assessed available alternatives; (6)
involved the public in an open exchange of information and perspectives
among experts in relevant disciplines, affected stakeholders in the
private sector and the public as a whole, and provided on-line access
to the rulemaking docket; (7) attempted to promote coordination,
simplification and harmonization across government agencies and
identified goals designed to promote innovation; (8) considered
approaches that reduce burdens and maintain flexibility and freedom of
choice for the public; and (9) ensured the objectivity of scientific
and technological information and processes.
D. Executive Order 13132 (Federalism)
This rulemaking does not contain policies with federalism
implications sufficient to warrant preparation of a Federalism
Assessment under Executive Order 13132 (Aug. 4, 1999).
E. Executive Order 13175 (Tribal Consultation)
This rulemaking will not: (1) Have substantial direct effects on
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one or more Indian tribes; (2) impose substantial direct compliance
costs on Indian tribal governments; or (3) preempt tribal law.
Therefore, a tribal summary impact statement is not required under
Executive Order 13175 (Nov. 6, 2000).
F. Executive Order 13211 (Energy Effects)
This rulemaking is not a significant energy action under Executive
Order 13211 because this rulemaking is not likely to have a significant
adverse effect on the supply, distribution, or use of energy.
Therefore, a Statement of Energy Effects is not required under
Executive Order 13211 (May 18, 2001).
G. Executive Order 12988 (Civil Justice Reform)
This rulemaking meets applicable standards to minimize litigation,
eliminate ambiguity, and reduce burden as set forth in sections 3(a)
and 3(b)(2) of Executive Order 12988 (Feb. 5, 1996).
H. Executive Order 13045 (Protection of Children)
This rulemaking does not concern an environmental risk to health or
safety that may disproportionately affect children under Executive
Order 13045 (Apr. 21, 1997).
I. Executive Order 12630 (Taking of Private Property)
This rulemaking will not effect a taking of private property or
otherwise have taking implications under Executive Order 12630 (Mar.
15, 1988).
J. Congressional Review Act
Under the Congressional Review Act provisions of the Small Business
Regulatory Enforcement Fairness Act of 1996 (5 U.S.C. 801 et seq.),
prior to issuing any final rule, the United States Patent and Trademark
Office will submit a report containing the final rule and other
required information to the U.S. Senate, the U.S. House of
Representatives and the Comptroller General of the Government
Accountability Office. The changes in this notice are not expected to
result in an annual effect on the economy of 100 million dollars or
more, a major increase in costs or prices, or significant adverse
effects on competition, employment, investment, productivity,
innovation, or the ability of United States-based enterprises to
compete with foreign-based enterprises in domestic and export markets.
Therefore, this notice is not expected to result in a "major rule" as
defined in 5 U.S.C. 804(2).
K. Unfunded Mandates Reform Act of 1995
The changes in this notice do not involve a Federal
intergovernmental mandate that will result in the expenditure by State,
local, and tribal governments, in the aggregate, of 100 million dollars
(as adjusted) or more in any one year, or a Federal private sector
mandate that will result in the expenditure by the private sector of
100 million dollars (as adjusted) or more in any one year, and will not
significantly or uniquely affect small governments. Therefore, no
actions are necessary under the provisions of the Unfunded Mandates
Reform Act of 1995. See 2 U.S.C. 1501 et seq.
L. National Environmental Policy Act
This rulemaking will not have any effect on the quality of
environment and is thus categorically excluded from review under the
National Environmental Policy Act of 1969. See 42 U.S.C. 4321 et seq.
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M. National Technology Transfer and Advancement Act
The requirements of section 12(d) of the National Technology
Transfer and Advancement Act of 1995 (15 U.S.C. 272 note) are not
applicable because this rulemaking does not contain provisions which
involve the use of technical standards.
N. Paperwork Reduction Act
The rules of practice pertaining to patent term adjustment and
extension have been reviewed and approved by the Office of Management
and Budget (OMB) under the Paperwork Reduction Act of 1995 (44 U.S.C.
3501 et seq.) under OMB control number 0651-0020. The changes to the
rules of practice in this final rule: (1) Revise the provisions that
define the beginning and ending dates of the period of appellate review
under 35 U.S.C. 154(b)(1)(B)(ii) and 154(b)(1)(C)(iii) to provide that
this period begins on the date on which jurisdiction over the
application passes to the Board under 37 CFR 41.35; and
(2) provide that the failure to file a proper appeal brief within
three months from the date on which a notice of appeal to the Board was
filed, as required by 35 U.S.C. 134, constitutes a failure of an
applicant to engage in reasonable efforts to conclude processing or
examination of an application. This final rule does not propose to add
any additional requirements (including information collection
requirements) or fees for patent applicants or patentees. Therefore,
the Office is not resubmitting the pertinent 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 collections approved under OMB control number
0651-0020 or any other information collections.
Notwithstanding any other provision of law, no person is required
to respond to, nor shall any 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 recordkeeping
requirements, Small businesses.
For the reasons set forth in the preamble, 37 CFR part 1 is 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 1.703 is amended by revising paragraph (b)(4) and (e) to
read as follows:
§ 1.703 Period of adjustment of patent term due to examination delay.
* * * * *
(b) * * *
(4) The number of days, if any, in the period beginning on the date
on which jurisdiction over the application passes to the Patent Trial
and Appeal Board under § 41.35(a) of this chapter and ending on the
date that jurisdiction by the Patent Trial and Appeal Board ends under
§ 41.35(b) of this chapter or the date of the last decision by a
Federal court in an appeal under 35 U.S.C. 141 or a civil action under
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35 U.S.C. 145, whichever is later.
* * * * *
(e) The period of adjustment under § 1.702(e) is the sum of the
number of days, if any, in the period beginning on the date on which
jurisdiction over the application passes to the Patent Trial and Appeal
Board under § 41.35(a) of this chapter and ending on the date of a
final decision in favor of the applicant by the Patent Trial and Appeal
Board or by a Federal court in an appeal under 35 U.S.C. 141 or a civil
action under 35 U.S.C. 145.
* * * * *
. 3. Section 1.704 is amended by revising paragraphs (c)(10)(ii) and
(c)(11) and adding paragraph (c)(12) to read as follows:
§ 1.704 Reduction of period of adjustment of patent term.
* * * * *
(c) * * *
(10) * * *
(ii) Four months;
(11) Failure to file an appeal brief in compliance with § 41.37
of this chapter within three months from the date on which a notice of
appeal to the Patent Trial and Appeal Board was filed under 35 U.S.C.
134 and § 41.31 of this chapter, in which case the period of
adjustment set forth in § 1.703 shall be reduced by the number of
days, if any, beginning on the day after the date three months from the
date on which a notice of appeal to the Patent Trial and Appeal Board
was filed under 35 U.S.C. 134 and § 41.31 of this chapter, and
ending on the date an appeal brief in compliance with § 41.37 of
this chapter or a request for continued examination in compliance with
§ 1.114 was filed; and
(12) Further prosecution via a continuing application, in which
case the period of adjustment set forth in § 1.703 shall not
include any period that is prior to the actual filing date of the
application that resulted in the patent.
* * * * *
August 13, 2012 DAVID J. KAPPOS
Under Secretary of Commerce for Intellectual Property and
Director of the United States Patent and Trademark Office
[1382 OG 264]