[Federal Register Volume 68, Number 233 (Thursday, December 4, 2003)]
[Proposed Rules]
[Pages 67818-67821]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 03-30151]


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DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Part 1

[Docket No.: 2003-P-029]
RIN 0651-AB71


Revision of Patent Term Extension and Patent Term Adjustment 
Provisions Related to Decisions by the Board of Patent Appeals and 
Interferences

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Notice of proposed rule making.

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SUMMARY: The patent term extension provisions of the Uruguay Round 
Agreements Act (URAA) and the patent term adjustment provisions of the 
American Inventors Protection Act of 1999 (AIPA) each provide for the 
possibility of patent term extension or adjustment if the issuance of 
the patent was delayed due to review by the Board of Patent Appeals and 
Interferences (BPAI) or by a Federal court and the patent was issued 
pursuant to or under a decision in the review reversing an adverse 
determination of patentability. The United States Patent and Trademark 
Office (Office) is proposing to revise the rules of practice in patent 
cases to indicate that under certain circumstances a remand by the 
Board of Patent Appeals and Interferences shall be considered a 
decision in the review reversing an adverse determination of 
patentability for purposes of patent term extension or patent term 
adjustment.

DATES: Comment deadline date: To be ensured of consideration, written 
comments must be received on or before January 5, 2004. No public 
hearing will be held.

ADDRESSES: Comments should be sent by electronic mail message over the 
Internet addressed to [email protected]. Comments may also be 
submitted by mail addressed to: Box Comments--Patents, Commissioner for 
Patents, P.O. Box 1450, Alexandria, VA 22313-1450, or by facsimile to 
(703) 746-3261, marked to the attention of Kery A. Fries. Although 
comments may be submitted by mail or facsimile, the Office prefers to 
receive comments via the Internet. If comments are submitted by mail, 
the Office prefers that the comments be submitted on a DOS formatted 
3\1/2\ inch disk accompanied by a paper copy.
    The comments will be available for public inspection at the Office 
of the Commissioner for Patents, located in Crystal Park 2, Suite 910, 
2121 Crystal Drive, Arlington, Virginia, and will be available through 
anonymous file transfer protocol (ftp) via the Internet (address: 
http://www.uspto.gov). Since comments will be made available for public 
inspection, information that is not desired to be made public, such as 
an address or phone number, should not be included in the comments.

FOR FURTHER INFORMATION CONTACT: Kery A. Fries, Legal Advisor, Office 
of Patent Legal Administration, by telephone at (703) 305-1383, by mail 
addressed to: Box Comments--Patents, Commissioner for Patents, P.O. Box 
1450, Alexandria, VA 22313-1450, or by facsimile to (703) 746-3240, 
marked to the attention of Kery A. Fries.

SUPPLEMENTARY INFORMATION: Section 532(a) of the URAA (Pub. L. 103-465, 
108 Stat. 4809 (1994)) amended 35 U.S.C. 154 to provide that the term 
of a patent ends on the date that is twenty years from the filing date 
of the application, or the earliest filing date for which a benefit is 
claimed under 35 U.S.C. 120, 121, or 365(c). Public Law 103-465 also 
contained provisions, codified at 35 U.S.C. 154(b), for patent term 
extension due to certain examination delays. The Office implemented the 
patent term extension provisions of the URAA in a final rule published 
in April of 1995. See Changes to Implement 20-Year Patent Term and 
Provisional Applications, 60 FR 20195 (Apr. 25, 1995), 1174 Off. Gaz. 
Pat. Office 15 (May 2, 1995) (final rule).
    The AIPA further amended 35 U.S.C. 154(b) to include additional 
bases for patent term extension (termed ``patent term adjustment'' in 
the AIPA). Original utility and plant patents issuing from applications 
filed on or after May 29, 2000, may be eligible for patent term 
adjustment if issuance of the patent is delayed due to one or more of 
the enumerated administrative delays listed in 35 U.S.C. 154(b)(1). The 
Office implemented the patent term adjustment provisions of the AIPA in 
a final rule published in September of 2000. See Changes to Implement 
Patent Term Adjustment Under Twenty-Year Patent Term, 65 FR 56365 
(Sept. 18, 2000), 1239 Off. Gaz. Pat. Office 14 (Oct. 3, 2000) (final 
rule). The patent term adjustment provisions of the AIPA apply to 
original (i.e., non-reissue) utility and plant applications filed on or 
after May 29, 2000. See Changes to Implement Patent Term Adjustment 
Under Twenty-Year Patent Term, 65 FR at 56367, 1239 Off. Gaz. Pat. 
Office at 14-15. The patent term extension provisions of the URAA (for 
delays due to secrecy order, interference or successful appellate 
review) continued to apply to utility and plant applications

[[Page 67819]]

filed on or after June 7, 1995, and before May 29, 2000. See id.
    The Office is proposing to amend the rules of practice in patent 
cases to indicate that certain remands by the BPAI shall be considered 
``a decision in the review reversing an adverse determination of 
patentability'' for patent term adjustment and patent term extension 
purposes. Specifically, if an application is remanded by a panel of the 
BPAI, and a notice of allowance under Sec.  1.311 is mailed without 
further review by the BPAI, without further amendment of the 
application, and without other action by the applicant, the remand 
shall (if the proposed change is adopted) be considered a decision 
reversing an adverse determination of patentability for patent term 
adjustment and patent term extension purposes. The phrase ``remanded by 
a panel'' of the BPAI means that the application was remanded by a 
panel comprised of members of the BPAI as defined in 35 U.S.C. 6. The 
phrase ``remanded by a panel'' of the BPAI does not pertain to 
applications containing a remand or order returning an appeal to the 
examiner issued by a BPAI administrator. See Revised Docketing 
Procedures for Appeals Arriving at the Board of Patent Appeals and 
Interferences, 1260 Off. Gaz. Pat. Office 18 (July 2, 2002).
    The Office initially took the position that a remand by a BPAI 
panel was not a ``decision'' within the meaning of 35 U.S.C. 
154(b)(1)(A)(iii), much less ``a decision reversing an adverse 
determination of patentability'' as that phrase is used in 35 U.S.C. 
154(b)(1)(C)(iii). See Changes to Implement Patent Term Adjustment 
Under Twenty-Year Patent Term, 65 FR at 56369, 1239 Off. Gaz. Pat. 
Office at 16. The Office has subsequently determined that there are a 
number of BPAI panel remands that convey the weakness in the examiner's 
adverse patentability determination in a manner tantamount to a 
decision reversing the adverse patentability determination. Such a BPAI 
panel remand generally results in the examiner sua sponte deciding to 
withdraw the rejections and allow the application without any 
intervening action by the applicant, rather than responding to the 
issues raised in the remand and returning the application to the BPAI 
for decisions reversing the adverse patentability determinations. The 
change being proposed in this notice addresses the situation in which 
an examiner responds to a remand by a BPAI panel by sua sponte 
withdrawing all the rejections and allowing the application, rather 
than responding to the issues raised in the remand and returning the 
application to the BPAI for a decision on the appeal. In this 
situation, the BPAI panel remand shall (if the proposed change is 
adopted) be considered ``a decision in the review reversing an adverse 
determination of patentability'' for patent term extension and patent 
term adjustment purposes. If, however, the application is allowed as a 
result of a further amendment, or after any other action by the 
applicant (e.g., the filing of a paper containing argument, an 
affidavit or declaration, or an information disclosure statement), 
without being returned to the BPAI for further review, then such remand 
shall not be considered ``a decision in the review reversing an adverse 
determination of patentability'' for patent term extension and patent 
term adjustment purposes.
    If the patent issues after a remand that is considered ``a decision 
in the review reversing an adverse determination of patentability,'' 
the BPAI panel remand is the ``final decision in favor of the 
applicant'' for purposes of a patent term extension or adjustment 
calculation under Sec.  1.701(c)(3) or Sec.  1.703(e) (as applicable). 
The period of extension or adjustment calculated under Sec.  
1.701(c)(3) or Sec.  1.703(e) (as applicable) would equal the number of 
days in the period beginning on the date on which a notice of appeal to 
the BPAI was filed under 35 U.S.C. 134 and Sec.  1.191 and ending on 
the mailing date of the BPAI panel remand.

Discussion of Specific Rules

    Section 1.701: Section 1.701(a)(3) is proposed to be amended by 
adding the following sentence: If an application is remanded by a panel 
of the Board of Patent Appeals and Interferences, and a notice of 
allowance under Sec.  1.311 is mailed without further review by the 
Board of Patent Appeals and Interferences, without further amendment of 
the application, and without other action by the applicant, the remand 
shall be considered a decision reversing an adverse determination of 
patentability as that phrase is used in 35 U.S.C. 154(b)(2) as amended 
by section 532(a) of the Uruguay Round Agreements Act, Public Law 103-
465, 108 Stat. 4809, 4983-85 (1994). Section 1.701(a)(3) is also 
proposed to be amended to change ``decision reversing an adverse 
determination of patentability'' to ``decision in the review reversing 
an adverse determination of patentability'' for consistency with 35 
U.S.C. 154(b)(2) as amended by section 532(a) of the URAA.
    Section 1.702: Section 1.702(e) is proposed to be amended by adding 
the following sentence: If an application is remanded by a panel of the 
Board of Patent Appeals and Interferences, and a notice of allowance 
under Sec.  1.311 is mailed without further review by the Board of 
Patent Appeals and Interferences, without further amendment of the 
application, and without other action by the applicant, the remand 
shall be considered a decision by the Board of Patent Appeals and 
Interferences as that phrase is used in 35 U.S.C. 154(b)(1)(A)(iii) and 
a decision in the review reversing an adverse determination of 
patentability as that phrase is used in 35 U.S.C. 154(b)(1)(C)(iii). 
Section 1.702(e) is also proposed to be amended to change ``decision 
reversing an adverse determination of patentability'' to ``decision in 
the review reversing an adverse determination of patentability'' for 
consistency with 35 U.S.C. 154(b)(1)(C)(iii).

Rule Making Considerations

    Regulatory Flexibility Act: The Deputy General Counsel for General 
Law, United States Patent and Trademark Office, has certified to the 
Chief Counsel for Advocacy, Small Business Administration, that the 
changes proposed in this notice (if adopted) would not have a 
significant impact on a substantial number of small entities 
(Regulatory Flexibility Act, 5 U.S.C. 605(b)). The provisions of the 
Regulatory Flexibility Act relating to the preparation of a flexibility 
analysis are not applicable to this rule making because the changes 
proposed in this notice will not have a significant economic impact on 
a substantial number of small entities. The changes proposed in this 
notice would (if adopted) only change the manner in which the Office 
makes its patent term adjustment determination in applications that 
have been allowed under certain circumstances following a remand by the 
BPAI. The changes proposed in this notice would impose no additional 
fees or requirements on patent applicants.
    Executive Order 13132: This rule making does not contain policies 
with federalism implications sufficient to warrant preparation of a 
Federalism Assessment under Executive Order 13132 (Aug. 4, 1999).
    Executive Order 12866: This rule making has been determined to be 
not significant for purposes of Executive Order 12866 (Sept. 30, 1993).
    Paperwork Reduction Act: This notice involves information 
collection requirements which are subject to

[[Page 67820]]

review by the Office of Management and Budget (OMB) under the Paperwork 
Reduction Act of 1995 (44 U.S.C. 3501 et seq.). The collection of 
information involved in this notice has been reviewed and previously 
approved by OMB under OMB control number 0651-0020. The United States 
Patent and Trademark Office is not resubmitting an information 
collection package to OMB for its review and approval because the 
changes in this notice do not affect the information collection 
requirements associated with the information collection under OMB 
control number 0651-0020.
    The title, description and respondent description of this 
information collection is shown below with an estimate of the annual 
reporting burdens. Included in the estimate is the time for reviewing 
instructions, gathering and maintaining the data needed, and completing 
and reviewing the collection of information. The changes in this notice 
merely set forth the circumstances under which the Office will consider 
a remand by the Board of Patent Appeals and Interferences to be a 
decision in the review reversing an adverse determination of 
patentability for purposes of patent term extension and patent term 
adjustment.
    OMB Number: 0651-0020.
    Title: Patent Term Extension.
    Form Numbers: None.
    Type of Review: Approved through October of 2004.
    Affected Public: Individuals or Households, Business or Other For-
Profit Institutions, Not-for-Profit Institutions, Farms, Federal 
Government and State, Local and Tribal Governments.
    Estimated Number of Respondents: 26,858.
    Estimated Time Per Response: Between 1 and 25 hours.
    Estimated Total Annual Burden Hours: 30,903 hours.
    Needs and Uses: The information supplied to the United States 
Patent and Trademark Office by an applicant requesting reconsideration 
of a patent term adjustment determination under 35 U.S.C. 154(b) (Sec.  
1.702 et seq.) is used by the United States Patent and Trademark Office 
to determine whether its determination of patent term adjustment under 
35 U.S.C. 154(b) is correct, and whether the applicant is entitled to 
reinstatement of reduced patent term adjustment. The information 
supplied to the United States Patent and Trademark Office by an 
applicant seeking a patent term extension under 35 U.S.C. 156 (Sec.  
1.710 et seq.) is used by the United States Patent and Trademark 
Office, the Department of Health and Human Services, and the Department 
of Agriculture to determine the eligibility of a patent for extension 
and to determine the period of any such extension. The applicant can 
apply for patent term and interim extensions, petition the Office to 
review final eligibility decisions, withdraw patent term applications, 
and declare his or her eligibility to apply for a patent term 
extension.
    Comments are invited on: (1) Whether the collection of information 
is necessary for proper performance of the functions of the agency; (2) 
the accuracy of the agency's estimate of the burden; (3) ways to 
enhance the quality, utility, and clarity of the information to be 
collected; and (4) ways to minimize the burden of the collection of 
information to respondents.
    Interested persons are requested to send comments regarding these 
information collections, including suggestions for reducing this 
burden, to Robert J. Spar, Director, Office of Patent Legal 
Administration, Commissioner for Patents, PO Box 1450, Alexandria, VA 
22313-1450, or to the Office of Information and Regulatory Affairs, 
Office of Management and Budget, New Executive Office Building, Room 
10235, 725 17th Street, NW., Washington, DC 20503, Attention: Desk 
Officer for the United States Patent and Trademark Office.
    Notwithstanding any other provision of law, no person is required 
to respond to nor shall a person be subject to a penalty for failure to 
comply with a collection of information subject to the requirements of 
the Paperwork Reduction Act unless that collection of information 
displays a currently valid OMB control number.

List of Subjects in 37 CFR Part 1

    Administrative practice and procedure, Courts, Freedom of 
Information, Inventions and patents, Reporting and record keeping 
requirements, Small Businesses.

    For the reasons set forth in the preamble, 37 CFR Part 1 is 
proposed to be amended as follows:

PART 1--RULES OF PRACTICE IN PATENT CASES

    1. The authority citation for 37 CFR Part 1 continues to read as 
follows:

    Authority: 35 U.S.C. 2(b)(2).

    2. Section 1.701 is amended by revising paragraph (a)(3) to read as 
follows:


Sec.  1.701  Extension of patent term due to examination delay under 
the Uruguay Round Agreements Act (original applications, other than 
designs, filed on or after June 8, 1995, and before May 29, 2000).

    (a) * * *
    (3) Appellate review by the Board of Patent Appeals and 
Interferences or by a Federal court under 35 U.S.C. 141 or 145, if the 
patent was issued pursuant to a decision in the review reversing an 
adverse determination of patentability and if the patent is not subject 
to a terminal disclaimer due to the issuance of another patent claiming 
subject matter that is not patentably distinct from that under 
appellate review. If an application is remanded by a panel of the Board 
of Patent Appeals and Interferences, and a notice of allowance under 
Sec.  1.311 is mailed without further review by the Board of Patent 
Appeals and Interferences, without further amendment of the 
application, and without other action by the applicant, the remand 
shall be considered a decision in the review reversing an adverse 
determination of patentability as that phrase is used in 35 U.S.C. 
154(b)(2) as amended by section 532(a) of the Uruguay Round Agreements 
Act, Public Law 103-465, 108 Stat. 4809, 4983-85 (1994).
* * * * *
    3. Section 1.702 is amended by revising paragraph (e) to read as 
follows:


Sec.  1.702  Grounds for adjustment of patent term due to examination 
delay under the Patent Term Guarantee Act of 1999 (original 
applications, other than designs, filed on or after May 29, 2000).

* * * * *
    (e) Delays caused by successful appellate review. Subject to the 
provisions of 35 U.S.C. 154(b) and this subpart, the term of an 
original patent shall be adjusted if the issuance of the patent was 
delayed due to review by the Board of Patent Appeals and Interferences 
under 35 U.S.C. 134 or by a Federal court under 35 U.S.C. 141 or 145, 
if the patent was issued under a decision in the review reversing an 
adverse determination of patentability. If an application is remanded 
by a panel of the Board of Patent Appeals and Interferences, and a 
notice of allowance under Sec.  1.311 is mailed without further review 
by the Board of Patent Appeals and Interferences, without further 
amendment of the application, and without other action by the 
applicant, the remand shall be considered a decision by the Board of 
Patent Appeals and Interferences as that phrase is used in 35 U.S.C. 
154(b)(1)(A)(iii) and a decision in the review reversing an

[[Page 67821]]

adverse determination of patentability as that phrase is used in 35 
U.S.C. 154(b)(1)(C)(iii).
* * * * *

    Dated: November 24, 2003.
Jon W. Dudas,
Deputy Under Secretary of Commerce for Intellectual Property and Deputy 
Director of the United States Patent and Trademark Office.
[FR Doc. 03-30151 Filed 12-3-03; 8:45 am]
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