USPTO Issues Procedure to Request PTA Recalculation for Erroneous IDS Deduction

Andrew Freistein

December 7, 2018

I. Summary

For years, the USPTO’s patent term adjustment (“PTA”) computer program has been unable to properly calculate PTA when an information disclosure statement (“IDS”) had been filed with a 30-day safe harbor statement under 37 C.F.R. § 1.704(d), requiring patentees to request a PTA recalculation. As part of their effort to modernize their information technology systems, on November 2, 2018, the USPTO issued an interim procedure for patentees to request recalculation of the PTA based solely on their failure to recognize the safe harbor statement filed with an IDS. The USPTO also introduced a new form for applicants to use in making a safe harbor statement when filing a new IDS. The interim procedure went into effect on November 2, 2018.

II. Patent Term Adjustment (PTA)

Under 35 U.S.C. § 154(b), a patentee is entitled to PTA in the event the issuance of a patent is delayed due to administrative delays during prosecution. In general, a patentee is entitled to PTA for the following reasons: (A) when the USPTO fails to take certain actions during the examination and issue process within specific time frames; (B) when the USPTO fails to issue a patent within three years of the filing date; and (C) when there are delays from interference or derivation proceedings, secrecy orders, or successful appellate review.

However, there are many conditions and limitations on accruing PTA. In particular, 35 U.S.C. § 154(b)(2)(C) states that the period of adjustment “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 [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.”

The Director’s regulations are set forth in 37 C.F.R. § 1.704. Under § 1.704(c), there is a PTA reduction if an IDS is filed (1) after a notice of allowance or after an initial reply by the applicant, or (2) as a preliminary paper or as a paper after a decision by the Board or a Federal court that requires the USPTO to issue a supplemental Office Action. There is also a reduction when a request for continued examination (“RCE”) is filed after a notice of allowance.

III. The 30-Day Safe Harbor Statement

However, there are some limited exceptions to these IDS reductions. § 1.704(d) provides that a paper containing only an IDS in compliance with §§ 1.97 and 1.98 will not be considered a failure to engage in reasonable efforts to conclude prosecution, if the IDS is accompanied by one of the statements set forth in § 1.704 (d)(1)(i) or (d)(1)(ii) (i.e., the “safe harbor statement”). Similarly, § 1.704(d) also provides that an RCE containing only a compliant IDS will not be considered a failure to engage in reasonable efforts to conclude prosecution, if the IDS includes the safe harbor statement.

A compliant safe harbor statement must state that “each item of information contained in the IDS:

(1) Was first cited in any communication from a patent office in a counterpart foreign or international application or from the Office, and this communication was not received by any individual designated in § 1.56(c) more than thirty days prior to the filing of the IDS; or
(2) Is a communication that was issued by a patent office in a counterpart foreign or international application or by the Office, and this communication was not received by any individual designated in § 1.56(c) more than thirty days prior to the filing of the IDS.”

IV. The Interim Procedure

The USPTO currently uses a computer program based upon the information recorded in their PALM system to calculate PTA. Unfortunately, the program cannot determine whether an IDS includes a compliant safe harbor statement. It simply treats the IDS as if the safe harbor statement is not included, and often treats the IDS as a failure to engage in reasonable efforts to conclude prosecution under § 1.704(c). To correct the PTA, Patentees must file a request for reconsideration in compliance with §1.705, explaining why the PTA calculation is wrong, and pay the $200 processing fee.

The USPTO is developing new software, which recognizes the safe harbor statement. In the meantime, the new interim procedure permits a patentee to request recalculation of the PTA where the only reason for recalculation is the USPTO’s failure to recognize a timely filed safe harbor statement accompanying an IDS. Under the interim procedure, the $200 processing fee is waived, and patentee must submit form PTO/SB/134, “Request for Reconsideration of Patent Term Adjustment in View of Safe Harbor Statement Under 37 CFR 1.704(d)”. This procedure is effective as of November 2, 2018 and will remain in effect until the USPTO updates the PTA calculation computer program.

Notably, if the request for recalculation is not based solely on the USPTO’s failure to recognize a timely filed compliant safe harbor statement, then the patentee must file a request for reconsideration under § 1.705 and pay the processing fee. Although the processing fee is waived under the interim procedure, any necessary extension of time fees are not waived. Additionally, the interim procedure cannot be used as a basis to recover a previously paid processing fee filed with a request for reconsideration under §1.705.

The Office of Petitions will manually review each request filed under the interim procedure and provide a recalculation. A patentee dissatisfied with the Office’s recalculation is permitted to file one response within two months of the mail date of the Office’s recalculation. The two-month deadline is not extendable. If no response to the Office’s recalculation is filed, then the USPTO will sua sponte issue a certificate of correction that reflects the Office’s recalculation.

If a dissatisfied patentee responds to the Office’s recalculation and the USPTO maintains the recalculation, then a Director’s decision will be issued confirming the recalculation. The Director’s decision is appealable to district court.

V. New Form PTO/SB/133

In order to assist the USPTO in recognizing when a compliant safe harbor statement accompanies an IDS, the USPTO has also created new form PTO/SB/133 (“Patent Term Adjustment Statement Under 37 CFR 1.704(d)”). The USPTO will update the PTA computer program to recognize submission of the new form. Filing the new form is not mandatory, but it is “very strongly recommended”, because the failure to use the form can result in the USPTO not recognizing a safe harbor statement accompanying an IDS. Applicant may not alter form PTO/SB/133 for submission.

The USPTO’s interim procedure can be found here:

https://www.govinfo.gov/content/pkg/FR-2018-11-02/pdf/2018-24004.pdf