[Federal Register Volume 75, Number 138 (Tuesday, July 20, 2010)]
[Notices]
[Pages 42079-42080]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2010-17667]
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DEPARTMENT OF COMMERCE
Patent and Trademark Office
[Docket No.: PTO-P-2010-0052]
Treatment of Letters Stating That the USPTO's Patent Term
Adjustment Determination Is Greater Than What the Applicant or Patentee
Believes Is Appropriate
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Notice.
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SUMMARY: The United States Patent and Trademark Office (USPTO) is
clarifying its treatment of letters submitted by applicants and
patentees stating that the USPTO's patent term adjustment determination
indicated on a notice of allowance, issue notification, or patent, is
greater than what the applicant or patentee believes is appropriate.
The USPTO will place these letters in the file of the application or
patent without further review. The USPTO will no longer review these
letters or issue certificates of correction on the basis of a review of
these letters. If the applicant or patentee wants the USPTO to
reconsider its patent term adjustment determination, the applicant or
patentee must use the procedures set forth in 37 CFR 1.705 for
requesting reconsideration of a patent term adjustment determination. A
patentee may also file a terminal disclaimer disclaiming any period
considered in excess of the appropriate patent term adjustment.
However, the USPTO does not require an applicant or patentee to file
either a request for reconsideration under 37 CFR 1.705 or a terminal
disclaimer when the patent term adjustment indicated on a notice of
allowance, issue notification, or patent is greater than what the
applicant or patentee believes is appropriate.
DATES: The clarification set forth in this notice applies to all patent
term adjustment letters and requests for a certificate of correction
filed at any time that are pending before the USPTO on or after July
20, 2010.
FOR FURTHER INFORMATION CONTACT: Nancy E. Johnson, Office of Petitions:
By telephone at 571-272-3219; or by mail addressed to: Mail Stop
Comments--Patents, Commissioner for Patents, P.O. Box 1450, Alexandria,
VA 22313-1450.
SUPPLEMENTARY INFORMATION: The Manual of Patent Examining Procedure
(MPEP) was revised in 2004 to indicate that if a notice of allowance
indicates a patent term adjustment that is longer than expected, the
applicant may wait until the patent issues, and if the patent issues
with a value that is incorrect, request a certificate of correction.
See MPEP Sec. 2733. The MPEP does not specify what action the USPTO
will take in response to such a request for a certificate of
correction. The USPTO is, in this notice, clarifying when the USPTO
will change the patent term adjustment determination indicated on a
patent via a certificate of correction under either 35 U.S.C. 254 or
255.
The USPTO, however, has determined that it is not appropriate to
provide a patent term adjustment recalculation via a certificate of
correction under 35 U.S.C. 254 or 255. A certificate of correction is
permissible under 35 U.S.C. 254 only for a mistake in a patent that
``is clearly disclosed by the records of the Office.'' See 35 U.S.C.
254. While the applicable patent term adjustment is ascertainable from
the records of the USPTO, a revised patent term adjustment
determination requires a complex calculation and is not ``clearly
disclosed'' by the records of the USPTO.
[[Page 42080]]
In addition, a certificate of correction is permissible under 35 U.S.C.
255 only for ``a mistake of a clerical or typographical nature, or of
minor character.'' See 35 U.S.C. 255.
Thus, the USPTO has long maintained that a request for a
certificate of correction under either 35 U.S.C. 254 or 255 is not an
appropriate venue for seeking a change to the patent term adjustment
indicated on a patent. See Revision of Patent Term Extension and Patent
Term Adjustment Provisions, 69 FR 21704, 21707 (Apr. 22, 2004) (final
rule) (``Petitions under [37 CFR] 1.182 or 1.183, or requests for a
certificate of correction under either 35 U.S.C. 254 and [37 CFR] 1.323
or 35 U.S.C. 255 and [37 CFR] 1.324, are not substitute fora to obtain
reconsideration of a patent term adjustment determination indicated in
a notice of allowance if an applicant fails to submit a request for
reconsideration within the time period specified in [37 CFR] 1.705(b),
or to obtain reconsideration of a patent term adjustment determination
indicated in a patent if a patentee fails to submit a request for
reconsideration within the time period specified in [37 CFR]
1.705(d)''). The patent term adjustment provisions of 35 U.S.C. 154(b)
provide for the establishment of procedures for patent term adjustment
determinations, including providing the applicant one opportunity to
request reconsideration of any patent term adjustment determination.
See 35 U.S.C. 154(b)(3). It would render the provisions of 35 U.S.C.
154(b)(3) superfluous if patent term adjustment determinations could be
revised at any time during the life of the patent via a certificate of
correction under 35 U.S.C. 254 or 255. In addition, the patent term
adjustment provisions of 35 U.S.C. 154(b) are designed to have patent
term adjustment issues to be resolved shortly after a patent issues by
providing a period of one hundred and eighty days from the grant of the
patent for seeking court review of the USPTO's patent term adjustment
determination (rather than the six-year statute of limitations
otherwise applicable for actions under the Administrative Procedures
Act). See 35 U.S.C. 154(b)(4). It would negate the purpose of the one
hundred and eighty day period in 35 U.S.C. 154(b)(4) to allow patent
term adjustment determinations to be revised at any time during the
life of the patent via a certificate of correction under 35 U.S.C. 254
or 255. Therefore, it is not appropriate to issue a certificate of
correction under 35 U.S.C. 254 or 255 to revise the patent term
adjustment indicated in a patent unless it is being revised for
consistency with: (1) The patent term adjustment determined via a
decision on a request for reconsideration under 37 CFR 1.705; or (2)
the total patent term adjustment indicated on the Patent Application
Information Retrieval (PAIR) screen that displays the patent term
adjustment calculation for the patent.
Accordingly, the USPTO is clarifying that it will treat letters
submitted by applicants and patentees stating that the USPTO's patent
term adjustment determination indicated on a notice of allowance, issue
notification, or patent is greater than what the applicant or patentee
believes is appropriate by placing these letters in the file of the
application or patent without comment. The USPTO will no longer review
these letters or issue certificates of correction under either 35
U.S.C. 254 or 255 on the basis of a review of these letters. In
addition, the USPTO will not grant a request for a certificate of
correction under either 35 U.S.C. 254 or 255 to revise the patent term
adjustment indicated in a patent, except in the two situations
discussed previously. If a patentee submits a request for a certificate
of correction under either 35 U.S.C. 254 or 255 to revise the patent
term adjustment indicated in a patent that includes changes in the
patent for which a certificate of correction would be appropriate, the
request for a certificate of correction will not be granted unless the
patentee submits a new request for a certificate of correction that
does not also attempt to revise the patent term adjustment indicated in
the patent.
If the applicant or patentee wants the USPTO to reconsider its
patent term adjustment determination, the applicant or patentee must
use the procedures set forth in 37 CFR 1.705 for requesting
reconsideration of a patent term adjustment determination, whether the
USPTO's patent term adjustment determination is greater than or less
than the adjustment that the applicant or patentee believes to be
appropriate. A patentee may also file a terminal disclaimer at any time
disclaiming any period considered in excess of the appropriate patent
term adjustment. See 35 U.S.C. 253 and 37 CFR 1.321. However, the USPTO
does not require an applicant or patentee to file either a request for
reconsideration under 37 CFR 1.705 or a terminal disclaimer when the
patent term adjustment indicated on a notice of allowance, issue
notification, or patent is greater than what the applicant or patentee
believes is appropriate.
The appropriate sections of the MPEP will be revised in accordance
with this notice in due course.
Dated: July 14, 2010.
David J. Kappos,
Under Secretary of Commerce for Intellectual Property and Director of
the United States Patent and Trademark Office.
[FR Doc. 2010-17667 Filed 7-19-10; 8:45 am]
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