USPTO Proposes Rule Change Related to Patent Term Adjustment Form

The United States Patent & Trademark Office (USPTO) is proposing to amend 37 C.F.R. § 1.704(d) to require that the patent term adjustment statement regarding the timing of filing the Information Disclosure Statements (IDS) be submitted on existing Office Form PTO/SB/133.

Under certain situations, the filing of an IDS can result in a reduction of any patent term adjustment to which an applicant may otherwise be entitled. However, this reduction can be avoided if the IDS is timely filed.

For example, filing an IDS after receipt of a Notice of Allowance, or with a Request for Continued Examination (RCE) to enter the IDS, can result in reduction of period of patent term adjustment. However, under 37 C.F.R. § 1.704(d), if the IDS is filed within 30 days of certain events, the reduction can be avoided. The rule requires that, in order to avoid the reduction, the IDS be accompanied by the statement provided in § 1.704(d)(1)(i) and/or (ii).

1.704(d) is provided below:

(d)

(1) A paper containing only an information disclosure statement in compliance with §§ 1.97 and 1.98 will not be considered a failure to engage in reasonable efforts to conclude prosecution (processing or examination) of the application under paragraphs (c)(6), (c)(8), (c)(9), or (c)(10) of this section, and a request for continued examination in compliance with § 1.114 with no submission other than an information disclosure statement in compliance with §§ 1.97 and 1.98 will not be considered a failure to engage in reasonable efforts to conclude prosecution (processing or examination) of the application under paragraph (c)(12) of this section, if the paper or request for continued examination is accompanied by a statement that each item of information contained in the information disclosure statement:

(i) 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 [30] days prior to the filing of the information disclosure statement; or

(ii) 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 [30] days prior to the filing of the information disclosure statement.

Under the new proposed rule, filers who submit the 37 C.F.R. § 1.704(d)(1) statement without using the office form or who modify the office form will not receive the benefits under 37 C.F.R. § 1.704(d).

The USPTO proposes the rule change to ensure the accurate capture of the presence of the statement under 37 C.F.R. § 1.704(d)(1) and to eliminate the need to manually review an applicant’s patent term adjustment statement. The USPTO noted that they reviewed a sampling of patent term adjustment statements that were submitted without the use of the form and found that a portion of the statements were deficient by failing to meet the required language of 37 C.F.R. § 1.704(d).

There is no fee for filing the 37 C.F.R. § 1.704(d)(1) patent term adjustment statement.

Applicants should be careful to check both boxes when there are references as well as “communications” such as Office Actions.