On July 11, the U.S. Patent and Trademark Office (USPTO) proposed the use of a standard form for submitting statements regarding patent term adjustment. Law360 interviewed Finnegan partner Jeffrey Jacobstein to discuss the proposed standardized process.
Jeff suggested that the proposed standardized form would be a welcomed change for patent applicants. He stated, “This is going in the right direction and being helpful for applicants.”
Jeff explained that applicants often file information disclosure statements through a letter, which is not always picked up by the USPTO software, thus resulting in a delay. The delay can result in reducing patent term adjustment for actions the safe harbor provision states should not count against the applicant, which leads to the applicant needing to file a provision for the time adjustment.
He added that the USPTO’s current system will correct the patent term adjustment when a letter is not recognized by the system. Nevertheless, the USPTO must have individuals review the petitions and applicants must spend time and money requesting the adjustment. He stated, “The PTO’s view is that this will be more efficient for both the applicant and the patent office if there’s a standardized form so the software will pick it up from the beginning and not require this petition to correct it down the road.”
Jeff suggested that the USPTO should encourage applicants to use the form, but not require it, and allow applicants to file petitions if they use the required language. The USPTO’s current rule requires applicants to use the form in order to “receive the benefit of the safe harbor” but Jeff questioned whether penalizing applicants who do not use the form is the best approach moving forward.
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