Correct Method for Measuring "B Delay" for 371 National Stage Applications

The time at which the three year “B Delay” clock starts for a 371 national stage filing depends upon whether the national stage commences under 35 U.S.C. 371(b) or 35 U.S.C. 371(f).

35 U.S.C. 371(b)

The U.S. national stage commences under 35 U.S.C. 371(b) on the date that is 30 months from the priority date of a PCT application unless the applicant files an express request for early processing and completes the requirements of 371(c) prior to the 30 month date.

(a) Example of PTO practice awarding too little PTA

A U.S. national stage application is filed with the PTO on or before January 1, 2004, the date that is 30 months from the priority date of a PCT application.  The application is filed at the PTO without one or more of the items required by 371(c) (e.g., an inventor’s oath or declaration).  The PTO issues a Notification of Missing Requirements and the applicant submits all missing parts on September 1, 2004.  The PTO practice has been to start the B Delay clock three years after completion of the 371(c) requirements, on September 2, 2007.  However, the B Delay clock should have started on January 2, 2007 (i.e., three years after commencement).  In this example, eight months of potential PTA is lost by misapplication of the rule.  This scenario is most common for U.S. national stage filings that are made without inclusion of an inventor’s oath or declaration at the time of filing.

(b) Example of PTO practice awarding too much PTA

In some instances, correct application of the rule can result in less PTA than is provided by current PTO practice.  Consider again a PCT application that has a 30 month date of January 1, 2004.  In this example, a complete U.S. national stage application is filed with the PTO on October 1, 2003, such that 371(c) is complied with on the day of filing.  However, the applicant does not file an express request for early processing in compliance with 35 U.S.C. 371(f).  In this instance, current PTO practice would be to start the B Delay clock three years after completion of the 371(c) requirements, on October 2, 2006.  However, the B Delay clock should have started on January 2, 2007 (i.e., three years after commencement).  In this example, three months of PTA is incorrectly awarded by misapplication of the rule.

35 U.S.C. 371(f)

The B Delay clock can be started three years after a date that is before the 30 month date if the national stage is commenced under 371(f).  This requires that that the applicant file an express request for early processing and complete the requirements of 371(c) prior to the 30 month date.  If either one of these requirements is not met, then the national stage (and the reference date the B Delay clock) will commence on the date that is 30 months from the priority date of the PCT application.

Application for PTA for U.S. Patent No. 7,465,444

Relevant text from Application for PTA:

The present application is a national stage filing under 35 U.S.C. § 371 of international application number PCT/JP02/01361, filed February 18, 2002, which claims the benefit of priority of Japanese application number 2001-89158, filed March 27, 2001, and Japanese application number 2002‑19291, filed January 29, 2002.

The national stage for the present application “commenced” under the provisions of 35 U.S.C. § 371(b), i.e., upon expiration of 30 months from the priority date of the international application.  As a result, the date that the national stage commenced was September 27, 2003 (i.e., 30 months from the priority date of March 27, 2001).

The period beginning on September 28, 2006 (the day after the date that is three years after September 27, 2003, the date that the national stage commenced), and ending December 16, 2008 (the date the patent was issued), is 811 days in length.

In view of the period of “B Delay” detailed above, the total “B Delay” for this patent should be calculated as 811 days.  The PTO calculated 115 days of delay for issuance of a patent more than three years after filing.  Patentee respectfully submits that the PTO’s calculation of this “B Delay” is incorrect and that the correct PTO Delay for issuance beyond three years from filing is 811 days.  See 37 C.F.R. §§ 1.702(b) and 1.703(b).

The Application for PTA for U.S. Patent No. 7,465,444 contains a detailed legal explanation of why the B Delay clock should start three years after “commencement” of the national stage.

Decision on Petition for U.S. Patent No. 7,465,444

Relevant text from PTO Decision on Application for PTA:

The Office agrees that as of the issuance of the patent on December 16, 2008, the application was pending three years and 811 days after the commencement date (September 27, 2003) …

Note: As detailed in the Decision, the PTO continues to deny requests for term adjustment under the rule in Wyeth v. Dudas.

Back to Top