USPTO’s Updates on PTA Practice and “Safe Harbor” of § 1.704(d)

On June 15, 2023, the USPTO issued a Final Rule on the Standardization of the Patent Term Adjustment Statement Regarding Information Disclosure Statements.[1] The new rule went into effect July 17, 2023 and requires that a patent term adjustment statement regarding information disclosure statements must be submitted on Office Form PTO/SB/133 using the appropriate document code (PTA.IDS).

The USPTO revised 37 CFR 1.704(d) to add new paragraph (3):

[For statements filed on or after July 17, 2023] The statement under paragraph (d)(1) of this section must be submitted on the Office form (PTO/SB/133) provided for such a patent term adjustment statement using the appropriate document code (PTA.IDS). Otherwise, the paper or request for continued examination will be treated as not accompanied by a statement under paragraph (d)(1) of this section unless an application for patent term adjustment, in compliance with § 1.705(b), is filed, establishing that the paper or request for continued examination was accompanied by a statement in compliance with paragraph (d)(1) of this section. No changes to statements on this Office form may be made. The presentation to the Office (whether by signing, filing, submitting, or later advocating) of this form, whether by a practitioner or non-practitioner, constitutes a certification under § 11.18(b) of this chapter that the existing text and any certification statements on this form have not been altered.

According to the USPTO Final Rule, “using the appropriate . . . Office form and document code will streamline certain aspects of prosecution by more accurately capturing and accounting for the patent term adjustment statement [and] will . . . conserve resources by eliminating the need for a manual review of the patent term adjustment statement. A manual review will only occur when an applicant requests reconsideration pursuant to 37 CFR 1.705.”

The Office form PTO/SB/133 has been revised so an applicant can make the statement under § 1.704(d)(1)(i) or (ii), or both §§ 1.704(d)(1)(i) and (ii).[2] See also, M.P.E.P. Chapter 2700 – Patent Terms, Adjustments, and Extensions.

Applicants who submit a statement under 37 CFR 1.704(d)(1) in any manner other than on Office form PTO/SB/133 will be treated as not having submitted the statement, under 37 CFR 1.704(d)(1), as required for the ‘‘safe harbor’’ of 37 CFR 1.704(d).

Likewise, applicants who submit a statement under 37 CFR 1.704(d)(1) on Office form PTO/SB/133 with any modification to the statement under 37 CFR 1.704(d)(1) on the form (i.e., modifications to either or both of the statements indicated on the form) will be treated as not having submitted the statement, under 37 CFR 1.704(d)(1), as required for the ‘‘safe harbor’’ of 37 CFR 1.704(d).

Under either of the above circumstances (not using Office form PTO/SB/133 or modifying Office form PTO/SB/133), applicants will need to request reconsideration of the patent term adjustment, under 37 CFR 1.705(b) for the paper or request for continued examination, to be treated as having been filed concurrently with the statement, under 37 CFR 1.704(d)(1), as required for the ‘‘safe harbor’’ of 37 CFR 1.704(d).

For submissions prior to July 17, 2023, the USPTO will apply the interim procedure for patentees to request a recalculation of their patent term adjustment determination using Office form PTO/SB/134.[3]

Endnotes

[1] 88 Fed. Reg. 39,172 (June 15, 2023)

[2] (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 thirty 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 thirty days prior to the filing of the information disclosure statement.

[3] See Interim Procedure for Requesting Recalculation of the Patent Term Adjustment With Respect to Information Disclosure Statements Accompanied by a Safe Harbor Statement, 83 FR 55102 (Nov. 2, 2018).