[Federal Register Volume 69, Number 118 (Monday, June 21, 2004)]
[Rules and Regulations]
[Pages 34283-34284]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 04-13765]


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DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Part 1

[Docket No. 2004-P-036]


Explanation of 37 CFR 1.703(f) and of the United States Patent 
and Trademark Office Interpretation of 35 U.S.C. 154(b)(2)(A)

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Interpretation.

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SUMMARY: The United States Patent and Trademark Office (Office) 
recently published a final rule revising the patent term extension and 
patent term adjustment provisions of the rules of practice. This 
document further explains the Office's policy since 2000 concerning one 
of the patent term adjustment provisions of the rules of practice.

DATES: Applicability: The patent term adjustment provisions of the 
rules of practice apply to all original (non-reissue) applications, 
other than for a design patent, filed on or after May 29, 2000, and to 
patents issued on such applications.

FOR FURTHER INFORMATION CONTACT: Kery A. Fries, Legal Advisor, Office 
of Patent Legal Administration, by telephone at (703) 305-1383, by mail 
addressed to: Mail Stop 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: The Office recently published a final rule 
revising the patent term extension and patent term adjustment 
provisions of the rules of practice in title 37 of the Code of Federal 
Regulations (CFR). See Revision of Patent Term Extension and Patent 
Term Adjustment Provisions, 69 FR 21704 (Apr. 22, 2004), 1282 Off. Gaz. 
Pat. Office 100 (May 18, 2004) (final rule). The primary purpose of 
this final rule was to revise the rules of practice in patent cases to 
indicate that under certain circumstances a panel 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. See 69 FR 
at 21704, 1282 Off. Gaz. Pat. Office at 100.
    This final rule, however, also adopted other miscellaneous changes 
to the patent term adjustment regulations. See 69 FR at 21704, 1282 
Off. Gaz. Pat. Office at 100. One such miscellaneous change was a 
slight revision to 37 CFR 1.703(f) so that its language would more 
closely track the corresponding language of 35 U.S.C. 154(b)(2)(A). The 
explanatory text concerning 37 CFR 1.703(f) indicated that:

    The language of former Sec.  1.703(f) misled applicants into 
believing that delays under 35 U.S.C. 154(b)(1)(A) (Sec. Sec.  
1.702(a) and 1.703(a)) and delays under 35 U.S.C. 154(b)(1)(B) 
(Sec. Sec.  1.702(b) and 1.703(b)) were overlapping only if the 
period of delay under 35 U.S.C. 154(b)(1)(A) occurred more than 
three years after the actual filing date of the application.\1\ If 
an application is entitled to an adjustment under 35 U.S.C. 
154(b)(1)(B), the entire period during which the application was 
pending before the Office (except for periods excluded under 35 
U.S.C. 154(b)(1)(B)(i)-(iii)), and not just the period beginning 
three years after the actual filing date of the application, is the 
period of delay under 35 U.S.C. 154(b)(1)(B) in determining whether 
periods of delay overlap under 35 U.S.C. 154(b)(2)(A).
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    \1\ Another way of explaining this is: Based upon the 
contentions presented in a number of patent term adjustment 
petitions under 37 CFR 1.705, it has become apparent to the Office 
that some applicants did not fully appreciate that delays under 35 
U.S.C. 154(b)(1)(A) (Sec. Sec.  1.702(a) and 1.703(a)) and delays 
under 35 U.S.C. 154(b)(1)(B) (Sec. Sec.  1.702(b) and 1.703(b)) may 
still be overlapping delays under 35 U.S.C. 154(b)(2)(A), even if 
the period of delay under 35 U.S.C. 154(b)(1)(A) did not occur more 
than three years after the actual filing date of the application.

See 69 FR at 21706, 1282 Off. Gaz. Pat. Office at 101. The Office has 
subsequently determined that there is a need for further explanation of 
the meaning of this statement.
    35 U.S.C. 154(b)(2)(A) provides that: ``[t]o the extent that 
periods of delay attributable to grounds specified in paragraph (1) 
[i.e., 35 U.S.C. 154(b)(1)] overlap, the period of any adjustment 
granted under this subsection shall not exceed the actual number of 
days the issuance of the patent was delayed.'' See 35 U.S.C. 
154(b)(2)(A). The Office revised 37 CFR 1.703(f) in this final rule to 
read ``[t]o the extent that periods of delay attributable to the 
grounds specified in Sec.  1.702 overlap, the period of adjustment 
granted under this section shall not exceed the actual number of days 
the issuance of the patent was delayed.'' See 69 FR at 21711, 1282 Off. 
Gaz. Pat. Office at 106. Therefore, the change to 37 CFR 1.703(f) in 
this final rule makes its language track the language of 35 U.S.C. 
154(b)(2)(A).
    The change to 37 CFR 1.703(f) in this final rule and the 
accompanying explanatory text in the supplementary information section 
of this final rule was not a substantive change to 37 CFR 1.703(f) or a 
change to the Office's interpretation of 35 U.S.C. 154(b)(2)(A). This 
change was simply a restatement of the position taken by the Office 
when implementing the patent term adjustment provisions of the American 
Inventors Protection Act of 1999 (AIPA)\2\ in 2000. Specifically, the 
Office has consistently taken the position that if an application is 
entitled to an adjustment under the three-year pendency provision of 35 
U.S.C. 154(b)(1)(B), the entire period during which the application was 
pending before the Office (except for periods excluded under 35 U.S.C. 
154(b)(1)(B)(i)-(iii)), and not just the period beginning three years 
after the actual filing date of the application, is the relevant period 
under 35 U.S.C. 154(b)(1)(B) in determining whether periods of delay 
``overlap'' under 35 U.S.C. 154(b)(2)(A).
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    \2\ Pub. L. 106-113, 113 Stat. 1501, 1501A-552 through 1501A-591 
(1999).
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    The position set forth in the supplementary information section of 
this final rule is also consistent with the section-by-section analysis 
\3\ of 35 U.S.C.

[[Page 34284]]

154(b)(2)(A)). The section-by-section analysis of 35 U.S.C. 
154(b)(2)(A) indicates that periods of delay overlap where there are 
multiple grounds for extending the term of a patent that exist 
simultaneously.\4\
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    \3\ The AIPA is title IV of the Intellectual Property and 
Communications Omnibus Reform Act of 1999 (S. 1948), which was 
incorporated and enacted into law as part of Pub. L. 106-113. The 
Conference Report for H.R. 3194, 106th Cong., 1st. Sess. (1999), 
which resulted in Pub. L. 106-113, does not contain any discussion 
(other than the incorporated language) of S. 1948. A section-by-
section analysis of S. 1948, however, was printed in the 
Congressional Record at the request of Senator Lott. See 145 Cong. 
Rec. S14,708-26 (1999) (daily ed. Nov. 17, 1999).
    \4\ The section-by-section analysis of 35 U.S.C. 154(b)(2)(A) 
specifically provides that:
    Section 4402 imposes limitations on restoration of term. In 
general, pursuant to [35 U.S.C.] 154(b)(2)(A)-(C), total adjustments 
granted for restorations under [35 U.S.C. 154](b)(1) are reduced as 
follows: (1) To the extent that there are multiple grounds for 
extending the term of a patent that may exist simultaneously (e.g., 
delay due to a secrecy order under [35 U.S.C.] 181 and 
administrative delay under [35 U.S.C.] 154(b)(1)(A)), the term 
should not be extended for each ground of delay but only for the 
actual number of days that the issuance of a patent was delayed; See 
145 Cong. Rec. S14,718.
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    The position set forth in the supplementary information section of 
this final rule has been the Office's position since the implementation 
of the AIPA, as shown (for example) by the numerous Office 
presentations on the AIPA in 2001 which included an example \5\ 
illustrating this position. Specifically, this example demonstrates 
that a two-month delay in issuing a first Office action (35 U.S.C. 
154(b)(1)(A)(i)) and a two-month delay in issuing the patent (35 U.S.C. 
154(b)(1)(B)) were considered overlapping delays, even though the two-
month delay in issuing the first Office action occurred prior to three 
years (thirty-six months) after the application's filing date. This is 
because if the Office does not issue a patent until three years and two 
months (thirty-eight months) after its filing date, the relevant period 
in determining the Office delay in issuing the patent is not just the 
period between three years (thirty-six months) after the application's 
filing date and the date the patent issues (at thirty-eight months 
after the application's filing date), but is the entire period between 
the application's filing date and the date the patent issues.
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    \5\ The PBG (Patent Business Goals) and AIPA Rulemaking and 
Patent Examination Guidelines Training and Implementation Guide 
(August 2001 Supplement) contains a slide presentation (this slide 
presentation can be found on the Office's Internet Web site at: 
http://www.uspto.gov/web/patents/pbgaipaguide/aipa.htm), in which 
slide 19 provides an example that indicates this interpretation of 
the provisions of 35 U.S.C. 154(b)(2)(A). In the example shown in 
slide 19, the Office did not issue a first action until sixteen 
months after the application's filing date, thus missing the 
fourteen-month time frame in 35 U.S.C. 154(b)(1)(A)(i) by two months 
(shown in red), and the Office did not issue the patent until 
thirty-eight months after the application's filing date, thus 
missing the three-year (thirty-six-month) time frame in 35 U.S.C. 
154(b)(1)(B) by two months. The slide is used to demonstrate that 
for an application entitled to an adjustment under the three-year 
pendency provision of 35 U.S.C. 154(b)(1)(B), the Office considers 
the entire period during which the application was pending before 
the Office (shown in green), and not just the period beginning three 
years after the actual filing date of the application, to be the 
relevant period under 35 U.S.C. 154(b)(1)(B) in determining whether 
periods of delay ``overlap'' under 35 U.S.C. 154(b)(2)(A)). In this 
situation, the relevant periods under 35 U.S.C. 154(b)(1)(A)(i) and 
35 U.S.C. 154(b)(1)(B) ``overlap'' under 35 U.S.C. 154(b)(2)(A), 
resulting in the applicant being entitled to a patent term 
adjustment of only two months.
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    Furthermore, delays resulting in the Office's failure to meet the 
time frames specified in 35 U.S.C. 154(b)(1)(A) (the ``fourteen-four-
four-four-'' provisions) are not always overlapping with a delay 
resulting in the Office's failure to issue a patent within the three-
year time frame specified in 35 U.S.C. 154(b)(1)(B) because not all 
application pendency time is counted toward this three-year period. See 
35 U.S.C. 154(b)(1)(B)(i)-(iii). This situation is illustrated by an 
example in which: (1) The Office meets the ``fourteen-four-four-four'' 
time frames specified in 35 U.S.C. 154(b)(1)(A) but does not mail a 
final rejection until thirty-seven months after the application's 
filing date \6\; (2) a RCE \7\ (with a reply to the final rejection) is 
filed at forty months after the application's filing date; (3) the 
Office issues a notice of allowance under 35 U.S.C. 151 at forty-four 
months after the application's filing date; (4) the issue fee is paid 
at forty-seven months after the application's filing date; and (5) the 
Office issues the patent at fifty-three months after the application's 
filing date.\8\ In this example, the applicant would be entitled to a 
patent term adjustment of four months due to the Office's failure to 
issue a patent within three years,\9\ plus a patent term adjustment of 
two months due to the Office's failure to issue a patent within four 
months after the issue fee has been paid and all outstanding 
requirements have been met, for a total patent term adjustment of six 
months. The delay due to the Office's failure to issue a patent after 
the issue fee has been paid and all outstanding requirements have been 
met within the four-month time frame specified in 35 U.S.C. 
154(b)(1)(A)(iv) does not ``overlap'' with the three-year time frame 
specified in 35 U.S.C. 154(b)(1)(B) because the period subsequent to 
the filing of the RCE is not included in the three-year time frame 
specified in 35 U.S.C. 154(b)(1)(B). See 35 U.S.C. 154(b)(1)(B)(i). 
Thus, the Office does not interpret 35 U.S.C. 154(b)(2)(A) as 
permitting either patent term adjustment under 35 U.S.C. 
154(b)(1)(A)(i)-(iv), or patent term adjustment under 35 U.S.C. 
154(b)(1)(B), but not as permitting patent term adjustment under both 
35 U.S.C. 154(b)(1)(A)(i)-(iv) and 154(b)(1)(B).
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    \6\ Meeting the ``fourteen-four-four-four'' time frames 
specified in 35 U.S.C. 154(b)(1)(A) but not meeting the three-year 
time frame in 35 U.S.C. 154(b)(1)(B) may occur if there are numerous 
non-final Office actions.
    \7\ A request for continued examination under 35 U.S.C. 132(b) 
and 37 CFR 1.114.
    \8\ Thereby missing one of the ``fourteen-four-four-four-'' 
month time frames specified in 35 U.S.C. 154(b)(1)(A) by two months: 
specifically, the four-month time frame in 35 U.S.C. 
154(b)(1)(A)(iv) for issuing a patent after the issue fee has been 
paid and all outstanding requirements have been met.
    \9\ For purposes of determining patent term adjustment under 35 
U.S.C. 154(b)(1)(B), the application will be treated as having been 
issued at forty months after its filing date because the period 
subsequent to the filing of the RCE is not included in the three-
year time frame specified in 35 U.S.C. 154(b)(1)(B).
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    This document involves information collection requirements which 
are subject to 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 this document does not affect the information collection 
requirements associated with the information collection under OMB 
control number 0651-0020.
    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.

    Authority: 35 U.S.C. 154(b).

    Dated: June 14, 2004.
Jon W. Dudas,
Acting Under Secretary of Commerce for Intellectual Property and Acting 
Director of the United States Patent and Trademark Office.
[FR Doc. 04-13765 Filed 6-18-04; 8:45 am]
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