Patent Alert – Revisions to Patent Term Adjustment: Interim Final Rule
On April 1, 2013, the U.S. Patent and Trademark Office (USPTO) published an Interim Final Rule implementing several changes made to the patent term adjustment statute by the AIA Technical Corrections Act of January 14, 2013. These changes are primarily procedural and significantly lighten the burden on patentees, affecting when the USPTO provides a PTA calculation and when a patentee can challenge that calculation. The changes also provide an important substantive benefit for filers of U.S. national stage applications.
(1) Administrative Challenge
With the authority provided by the AIA Technical Corrections Act, the USPTO’s Interim Final Rule changed the time at which PTA will be determined by the USPTO (and challenged by applicants/patentees). Under the previous rules, the USPTO determined PTA twice – at allowance and again at patent grant. Applicants were required to challenge any errors in the PTA determination provided with the notice of allowance on or before payment of the issue fee. Under the new rules, the USPTO will determine PTA only once — at the time of patent grant. A patentee dissatisfied with that determination must file an Application for PTA within two months after patent grant, a period that is extendable for up to five months. Thus, reconsideration of PTA can be requested up to seven months after issuance, but extension fees will accrue after the first two months.
The USPTO’s Interim Final Rule is effective as of April 1, 2013, and applies to any patent granted on or after January 14, 2013. Any pending application will therefore be subject to the new rules. Effective immediately, PTA no longer needs to be reviewed and challenged at allowance. For any patent granted on or after January 14, 2013, a patentee should file a post-issuance Application for PTA to request correction of any PTA errors that occurred at any time during application pendency. There will be a transition period for the new rules, in which the patentee of a patent granted on or after January 14, 2013, who previously filed (or could have filed) an Application for PTA under the old rules to challenge PTA at allowance may file again under the new rules to request correction of any PTA error that occurred at any time during application pendency. Such a further post-issuance Application for PTA is a prerequisite for later filing a civil action (see section (2) below), since without it there would be no USPTO decision under the new rules to set the 180-day period for filing a civil action. Also, the post-issuance Application for PTA can be used to seek application of the new “A Delay” provision for any patent issuing on or after January 14, 2013, from a U.S. national stage application (see “substantive change” below).
(2) Civil Action
The AIA Technical Corrections Act also revised the PTA statute insofar as it relates to the period in which a civil action may be filed to challenge the USPTO’s PTA determination. Revised 35 USC §154(b)(4)(A) explicitly requires that a civil action be preceded by an unsuccessful administrative challenge within the USPTO. The period for filing a civil action (which must be filed in the United States District Court for the Eastern District of Virginia) is within 180 days after the date of the USPTO’s decision in response to a post-issuance Application for PTA. This statutory change eliminates the unfortunate scenario that often arose under the old law, which set the civil action filing deadline at 180 days after patent grant, where a patentee was forced to file a civil action before (or within a very short time after) receiving a decision from the USPTO.
The new civil action provisions apply to any patent granted on or after January 14, 2013. A patentee seeking to file a civil action for a patent issued on or after January 14, 2013, must not overlook that a post-issuance Application for PTA according to the Interim Final Rule must first be filed in order to elicit a USPTO decision that will open the 180-day window for filing the civil action.
Substantive Change: “A Delay” for National Stage Applications
PTA accrues under the A Delay clock when the USPTO takes more than 14 months to mail a first office action. The original PTA statute discriminated against national stage applications with respect to the start time for this clock. According to the original statute, the 14 month clock started upon the completion of all requirements of 35 USC 371 for national stage applications, whereas the clock started on the actual filing date for applications filed under 35 USC 111(a). This meant that national stage applications that received a notification of missing requirements and completed 371 requirements in a response to the notification (e.g., late filing of inventor declaration) had a delayed start of the A Delay clock.
The AIA Technical Corrections Act and the USPTO’s Interim Final Rule eliminated the above discrimination, changing the start time of the 14-month clock for national stage applications to the date of commencement of the national stage. For any patent granted on or after January 14, 2013, a post-issuance Application for PTA may be filed within two months after patent grant (extendable by five months) to request application of this new A Delay provision. Furthermore, when considering filing strategy for new national stage applications, there is no longer a PTA-based reason to expedite completion of the requirements of 35 USC 371 upon entering the U.S. national stage.
The Interim Final Rule has immediate effect as of April 1, 2013. However, the USPTO will accept public comments up to May 31, 2013, after which a final rule is expected to be published.