USPTO Revises Patent Term Adjustment (PTA) Practice

On April 1, 2013, the U.S. Patent and Trademark Office (USPTO) issued interim final rules amending several rules relating to patent term adjustment (PTA). The rule changes were necessitated by the amendments to the governing statute in the recently enacted America Invents Act (AIA) Technical Corrections Act. Three of the main changes are summarized below.

First, the calculation of patent term adjustment for PCT applications that enter the U.S. national stage is revised. Under the amended law and the interim final rule, the date from which both the initial 14-month period relevant to A-delay and the three-year pendency relevant to B-delay is measured is the date of commencement of the national stage under 35 U.S.C. § 371. This change in the rule does not affect the calculation of B-delay because the new rule is consistent with the current USPTO practice, but it can affect the calculation of A-delay. Previously, the 14-month period was measured from the date on which an international application fulfilled the requirements of § 371, which was often after the commencement of the national stage. The interim rule applies to any patent granted on or after January 14, 2013. Thus, patentees may be entitled to a longer patent term adjustment under the new law in recently issued patents.

Second, the USPTO is changing the procedure by which applicants are notified about the patent term adjustment determination. Previously, applicants were advised of the PTA calculation twice: (i) when a Notice of Allowance was issued, and (ii) in the Issue Notification. Under the new procedures, applicants will only be advised once. The official notification of the PTA determination will be on the face of the patent, although the USPTO will continue to provide the calculated PTA in the Issue Notification.

Third, the USPTO is also revising the procedures for challenging a patent term adjustment determination. Any request for reconsideration of the patent term adjustment indicated on the patent must be by way of an application to the USPTO. The application must be made within two months of the issue date of the patent, although this deadline can be extended by up to five additional months. Only after a decision on the request for reconsideration, can an applicant file a civil action against the Director of the USPTO. Such a suit must be filed in the Eastern District of Virginia within 180 days of the decision on the request for reconsideration.

The USPTO is inviting comments on the interim rules by May 31, 2013. The Federal Register notice with the interim final rules is available at http://www.gpo.gov/fdsys/pkg/FR-2013-04-01/pdf/2013-07429.pdf.