[Federal Register Volume 76, Number 66 (Wednesday, April 6, 2011)]
[Proposed Rules]
[Pages 18990-18995]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2011-8275]
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DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Part 1
[Docket No.: PTO-P-2011-0014]
RIN 0651-AC56
Revision of Patent Term Extension and Adjustment Provisions
Relating to Appellate Review and Information Disclosure Statements
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Notice of proposed rulemaking.
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SUMMARY: The United States Patent and Trademark Office (Office) is
proposing to revise the patent term adjustment and extension provisions
of the rules of practice in patent cases. The patent term adjustment
provisions of the American Inventors Protection Act of 1999 (AIPA) and
the patent term extension provisions of the Uruguay Round Agreements
Act (URAA) each provide for patent term extension or adjustment if the
issuance of the patent was delayed due to appellate 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 Office is
proposing to change the rules of practice to indicate that in most
circumstances an examiner reopening prosecution of the application
after a notice of appeal has been filed will be considered a decision
in the review reversing an adverse determination of patentability for
purposes of patent term adjustment or extension purposes. Therefore, in
such situations, patentees would be entitled to patent term extension
or adjustment. In addition, the AIPA provides for a reduction of any
patent term adjustment if the applicant failed to engage in reasonable
efforts to conclude prosecution of the application. The Office is also
proposing to change the rules of practice pertaining to the reduction
of patent term adjustment for applicant delays to exclude information
disclosure statements resulting from the citation of information by a
foreign patent office in a counterpart
[[Page 18991]]
application that are promptly filed with the Office. For example, under
the proposed rule, there would not be a reduction of patent term
adjustment in the following situations: When applicant promptly submits
a reference in an information disclosure statement after the mailing of
a notice of allowance if the reference was cited by the Office in
another application, or when applicant promptly submits a copy of an
Office communication (e.g., an Office action) in an information
disclosure statement after the mailing of a notice of allowance if the
Office communication was issued by the Office in another application or
by a foreign patent office in a counterpart foreign application.
DATES: Written comments must be received on or before May 6, 2011. No
public hearing will be held.
ADDRESSES: Comments concerning this proposed rule should be sent by
electronic mail message over the Internet addressed to
[email protected]. Comments may also be submitted by mail
addressed to: Mail Stop Comments--Patents, Commissioner for Patents,
P.O. Box 1450, Alexandria, VA 22313-1450, marked to the attention of
Kery A. Fries, Senior Legal Advisor, Office of Patent Legal
Administration, Office of the Associate Commissioner for Patent
Examination Policy. Although comments may be submitted by mail, the
Office prefers to receive comments via the Internet.
Comments may also be sent by electronic mail message over the
Internet via the Federal eRulemaking Portal. See the Federal
eRulemaking Portal Web site (http://www.regulations.gov) for additional
instructions on providing comments via the Federal eRulemaking Portal.
The comments will be available for public inspection at the Office
of the Commissioner for Patents, located in Madison East, Tenth Floor,
600 Dulany Street, Alexandria, Virginia, and will be available via the
Internet (http://www.uspto.gov). Because comments will be made
available for public inspection, information that the submitter does
not desire to make public, such as an address or phone number, should
not be included in the comments.
FOR FURTHER INFORMATION CONTACT: Kery A. Fries, Senior Legal Advisor,
Office of Patent Legal Administration, by telephone at 571-272-7757, by
mail addressed to: Box Comments--Patents, Commissioner for Patents,
P.O. Box 1450, Alexandria, VA 22313-1450, 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). The URAA also contained
provisions, codified at 35 U.S.C. 154(b), for patent term extension due
to certain examination delays. Under the patent term extension
provisions of 35 U.S.C. 154(b) as amended by the URAA, an applicant is
entitled to patent term extension for delays due to interference,
secrecy order, or successful appellate review. See 35 U.S.C. 154(b)
(1995). 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) (twenty-year patent term final rule).
The AIPA (Pub. L. 106-113, 113 Stat. 1501, 1501A-552 through 1501A-
591 (1999)) further amended 35 U.S.C. 154(b) to include additional
bases for patent term extension (characterized as ``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). Specifically, under the patent term adjustment provisions of
35 U.S.C. 154(b) as amended by the AIPA, an applicant is entitled to
patent term adjustment for the following reasons: (1) If the Office
fails to take certain actions during the examination and issue process
within specified time frames (35 U.S.C. 154(b)(1)(A)); (2) if the
Office fails to issue a patent within three years of the actual filing
date of the application (35 U.S.C. 154(b)(1)(B)); and (3) for delays
due to interference, secrecy order, or successful appellate review (35
U.S.C. 154(b)(1)(C)). See 35 U.S.C. 154(b)(1). The AIPA, however, sets
forth a number of conditions and limitations on any patent term
adjustment accrued under 35 U.S.C. 154(b)(1). Specifically, 35 U.S.C.
154(b)(2)(C) provides, in part, that ``[t]he period of adjustment of
the term of a patent under [35 U.S.C. 154(b)(1)] shall be reduced by a
period equal to the period of time during which the applicant failed to
engage in reasonable efforts to conclude prosecution of the
application'' and that ``[t]he Director shall prescribe regulations
establishing the circumstances that constitute a failure of an
applicant to engage in reasonable efforts to conclude processing or
examination of an application.'' 35 U.S.C. 154(b)(2)(C)(i) and (iii).
The Office implemented the patent term adjustment provisions of 35
U.S.C. 154(b) as amended by the AIPA, including setting forth the
circumstances that constitute a failure of an applicant to engage in
reasonable efforts to conclude processing or examination of an
application, 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) (patent term adjustment 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. The patent term extension
provisions of the URAA (for delays due to secrecy order, interference
or successful appellate review) continue to apply to original utility
and plant applications filed on or after June 8, 1995, and before May
29, 2000. See id.
Revision of Patent Term Extension and Patent Term Adjustment
Provisions Relating to Decisions During Appellate Review: Under the
patent term adjustment final rule published in 2000, the Office
initially stated that for a decision by the BPAI to be ``a decision in
the review reversing an adverse determination of patentability'' within
the meaning of 35 U.S.C 154(b)(1)(C)(iii), the decision must sustain or
reverse the rejection(s) of claims(s) on appeal. See Changes to
Implement Patent Term Adjustment Under Twenty-Year Patent Term, 65 FR
at 56368. The Office further stated that a remand or other
administrative order by the BPAI even if by a merits panel would not be
considered ``a decision in the review reversing an adverse
determination of patentability'' in the 35 U.S.C. 154(b)(1)(C)(iii).
See id. at 56369.
The Office subsequently determined that there were a number of BPAI
panel remands that conveyed the weakness in the examiner's adverse
patentability determination in a manner tantamount to a decision
reversing the adverse patentability determination. See Revision of
Patent Term Adjustment and Extensions, 69 FR 21704 (April 22, 2004)
(2004 patent term adjustment/extension final rule). Generally, the
remands resulted in the examiner allowing the application (either with
or without further action by applicant) without returning the
application to the
[[Page 18992]]
BPAI for a decision on the appeal. The 2004 patent term adjustment/
extension final rule addressed the situation in which an examiner
responds to a remand by a BPAI panel by allowing the application
(either with or without further action by applicant), rather than
returning the application to the BPAI for a decision on the appeal. See
id. at 21705. In that situation, the BPAI panel remand was considered
``a decision in the review reversing an adverse determination of
patentability'' for patent term extension and patent term adjustment
purposes. See id.; see also 37 CFR 1.701(a)(3) and 1.702(e). This
change in the 2004 patent term adjustment/extension final rule,
however, did not apply if, after the BPAI panel remand, appellant filed
a request for continued examination under 35 U.S.C. 132(b) (37 CFR
1.114) that was not first preceded by the mailing, after such remand,
of an action under 35 U.S.C. 132 or a notice of allowance under 35
U.S.C. 151. See id.; see also 37 CFR 1.701(a)(3) and 1.702(e).
In 2005, the Office instituted a pilot program to provide an
appellant the opportunity to request that a panel of examiners formally
review the legal and factual bases of the rejections in his or her
application prior to the filing of an appeal brief. See New Pre-Appeal
Brief Conference Pilot Program, 1260 Off. Gaz. Pat. Office 67 (July 12,
2005). In the pilot program, the Office indicated that a decision by a
pre-appeal brief conference panel to withdraw any or all of the claims
on appeal is not a decision by the panel of the BPAI, and as such,
would not result in any patent term adjustment or extension under 35
U.S.C. 154(b). See id.
This pilot program has resulted in a number of situations in which
prosecution is reopened. The Office has now concluded that it may and,
in most situations, should treat a decision in a pre-appeal brief
review reopening prosecution and issuing an Office action or notice of
allowance as a ``decision in the review reversing an adverse
determination of patentability'' under 35 U.S.C. 154(b)(1)(C)(iii).
Prior to 2005, the vast majority of applications in which a notice of
appeal and appeal brief were filed were forwarded to the BPAI for a
decision on the appeal. That is, prior to 2005, the only notable
``decision in the review'' of an application on appeal was a decision
by the BPAI. Under current Office practice, however, the application in
which a notice of appeal has been filed may be subject to a pre-appeal
brief review and will be subject to a post-appeal brief review before
the application will be forwarded to the BPAI for a decision by the
BPAI. Thus, under current Office practice, the process for seeking
appellate review by the BPAI involves at least one decision in the
review before the application is forwarded to the BPAI, and a decision
in these pre-BPAI reviews may result in the reopening of prosecution
and issuance of an Office action or notice of allowance. Since in many
such situations the reopening of the application after notice of appeal
has been filed is the result of a decision in the pre-BPAI review that
there is some weakness in the adverse patentability determination from
which the appeal was taken, the Office now considers it appropriate to
treat such situations as a ``decision in the review reversing an
adverse determination of patentability'' under 35 U.S.C.
154(b)(1)(C)(iii). Consequently, the Office has determined that it is
prudent as a matter of policy to allow for a correspondent positive
patent term adjustment when an examiner reverses his or her prior
rejection under these circumstances.
Accordingly, the Office is proposing to revise the patent term
adjustment and extension provisions to provide, with certain
exceptions, that an examiner reopening prosecution will be considered a
``decision in the review reversing an adverse determination of
patentability,'' and therefore result in the possibility of patent term
adjustment under 35 U.S.C. 154(b). The Office notes that not all
reopening of prosecution after the filing of a notice of appeal will be
considered a ``decision in the review reversing an adverse
determination of patentability.'' For example, the reopening of
prosecution after a notice of appeal resulting from an applicant filing
a request for continued examination (RCE) (proper or improper) will not
be considered a ``decision in the review reversing an adverse
determination of patentability'' and will not result in patent term
adjustment under 35 U.S.C. 154(b). Furthermore, any reopening of
prosecution or issuance of a notice of allowance under 35 U.S.C. 151
resulting from an applicant filing an amendment pursuant to 37 CFR
41.33 canceling all claims on appeal will not be considered a
``decision in the review reversing an adverse determination of
patentability'' and will not result in patent term adjustment under 35
U.S.C. 154(b). Moreover, any reopening of prosecution or issuance of a
notice of allowance under 35 U.S.C. 151 resulting from the applicant
filing a request to dismiss or withdraw the appeal will not be
considered a ``decision in the review reversing an adverse
determination of patentability'' and will not result in patent term
adjustment under 35 U.S.C. 154(b).
If the patent issues after an examiner reopens prosecution after
the filing of a notice of appeal, and the reopening of prosecution is
considered ``a decision in the review reversing an adverse
determination of patentability,'' then the reopening of prosecution is
deemed by the Office to be the ``final decision in favor of the
applicant'' for purposes of a patent term extension or adjustment
calculation under 37 CFR 1.701(c)(3) or 1.703(e) (as applicable). The
period of extension or adjustment calculated under 37 CFR 1.701(c)(3)
or 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 37 CFR 41.31 and ending on the date
of mailing of the Office action under 35 U.S.C.132 or a notice of
allowance under 35 U.S.C. 151.
Revisions of Patent Term Extension and Patent Term Adjustment
Provisions Relating to Information Disclosure Statements: Section
1.704(c) provides that the submission of an information disclosure
statement either that is after a notice of allowance or that requires a
supplemental Office action results in a reduction of any patent term
adjustment under 37 CFR 1.703. See 37 CFR 1.704(c)(6), 1.704(c)(8),
1.704(c)(9), and (c)(10). Section 1.704(d) provides that an information
disclosure statement will not result in a patent term adjustment
reduction under 37 CFR 1.704(c)(6), 1.704(c)(8), 1.704(c)(9), or
(c)(10) if it is accompanied by a certification (statement) that each
item of information contained in the information disclosure statement
was first cited in a communication from a foreign patent office in a
counterpart application and that this communication was not received by
any individual designated in 37 CFR 1.56(c) more than thirty days prior
to the filing of the information disclosure statement. 37 CFR 1.704(d)
permits applicants to submit information first cited in a communication
from a foreign patent office in a counterpart application to the Office
without a reduction in patent term adjustment if an information
disclosure statement is promptly (within thirty days of receipt of the
communication) submitted to the Office.
Recent decisions by the U.S. Court of Appeals for the Federal
Circuit (Federal Circuit) underscore the importance of making
information cited and Office actions issued in related copending
foreign and domestic applications of record. See Dayco Products, Inc.
v. Total Containment, Inc., 329 F.3d 1358 (Fed.
[[Page 18993]]
Cir. 2003) and McKesson Info. Solutions, Inc. v. Bridge Medical, Inc.,
487 F.3d 897 (Fed. Cir. 2007); see also Larson Mfg. Co. v. Aluminart
Products Ltd., 559 F.3d 1317 (Fed. Cir. 2009) (relating to disclosure
in a U.S. reexamination proceeding of U.S. Office actions that were
issued in a continuation application of the patent under
reexamination). The Office is proposing to revise 37 CFR 1.704(d) to
also embrace information first cited in a communication from the
Office, as well as the communication (e.g., Office action) in a
counterpart foreign or international application or from the Office
itself.
Obviously, meeting the conditions set forth in 37 CFR 1.704(d) does
not substitute for compliance with any relevant requirement of 37 CFR
1.97 or 1.98.
Discussion of Specific Rules
Title 37 of the Code of Federal Regulations, Part 1, is proposed to
be amended as follows:
Section 1.701: Section 1.701(a)(3) is proposed to be amended to
take into account the situation in which the Office reopens prosecution
after a timely notice of appeal has been filed but before any decision
by the BPAI and issues an Office action under 35 U.S.C. 132 (i.e., a
new non-final or final Office action) or notice of allowance under 35
U.S.C. 151. The reopening of prosecution in this situation will in most
circumstances also 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 the URAA, and a final decision in favor
of the applicant under Sec. 1.701(c)(3). An examiner's answer
containing a new ground of rejection is not an Office action under 35
U.S.C. 132, and is not the Office reopening prosecution. Section
1.701(a)(3) is also proposed to be amended by adding a sentence to
provide that a reopening of prosecution after a notice of appeal has
been filed will not be considered a decision in the review reversing an
adverse determination of patentability as provided in Sec. 1.701(a)(3)
if appellant files a request to withdraw the appeal, an amendment
pursuant to Sec. 41.33 canceling all of the claims on appeal, or a
request for continued examination under 35 U.S.C. 132(b).
Section 1.702: Section 1.702(e) is proposed to be amended to take
into account the situation in which the Office reopens prosecution
after a timely notice of appeal has been filed but before any decision
by the BPAI and issues an Office action under 35 U.S.C. 132 (i.e., a
new non-final or final Office action) or notice of allowance under 35
U.S.C. 151. The reopening of prosecution in this situation will in most
circumstances also be considered a decision by the BPAI as that phrase
is used in 35 U.S.C. 154(b)(1)(A)(iii), 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), and a final decision in favor of
the applicant under Sec. 1.703(e). An examiner's answer containing a
new ground of rejection is not an Office action under 35 U.S.C. 132,
and is not the Office reopening prosecution. Section 1.702(e) is
further amended by adding a sentence to provide that a reopening of
prosecution after a notice of appeal has been filed will not be
considered a decision in the review reversing an adverse determination
of patentability as provided in Sec. 1.702(e) if appellant files a
request to withdraw the appeal, an amendment pursuant to Sec. 41.33
canceling all of the claims on appeal, or a request for continued
examination under 35 U.S.C. 132(b).
Section 1.704: Section 1.704(d) is amended to change ``any
communication from a foreign patent office in a counterpart
application'' to ``any communication from a patent office in a
counterpart foreign or international application or from the Office''
and add `` or is a communication that was issued by a patent office in
a counterpart foreign or international application or by the Office.''
This change revises Sec. 1.704(d) to also embrace information first
cited in a communication from the Office, as well as the communication
(e.g., Office action) in a counterpart foreign or international
application or from the Office itself. For example, under the proposed
rule, there would not be a reduction of patent term adjustment in the
following situations: (1) When applicant promptly submits a reference
in an information disclosure statement after the mailing of a notice of
allowance if the reference was cited by the Office in another
application, or (2) when applicant promptly submits a copy of an Office
communication (e.g., an Office action) in an information disclosure
statement after the mailing of a notice of allowance if the Office
communication was issued by the Office in another application or by a
foreign patent office in a counterpart foreign application.
Rulemaking Considerations
A. Regulatory Flexibility Act: For the reasons set forth herein,
the Deputy General Counsel for General Law of the United States Patent
and Trademark Office has certified to the Chief Counsel for Advocacy of
the Small Business Administration that changes proposed in this
proposed rule will not have a significant economic impact on a
substantial number of small entities. See 5 U.S.C. 605(b).
This rule making involves: (1) Indicating that in most
circumstances an examiner reopening prosecution of the application
after a notice of appeal has been filed will be considered a ``decision
in the review reversing an adverse determination of patentability'' for
patent term adjustment or extension purposes; and (2) indicating that
the exception to the patent term adjustment reduction for filing an
information disclosure statement after a notice of allowance or that
requires a supplemental Office action for information disclosure
statements for information cited by a foreign patent office in a
counterpart application that are promptly filed with the Office is
expanded to also embrace information first cited by the Office in
another application. This proposed rule does not propose to add any
additional requirements (including information collection requirements)
or fees for patent applicants or patentees. Therefore, the changes
proposed in this proposed rule will not have a significant economic
impact on a substantial number of small entities.
B. Executive Order 12866 (Regulatory Planning and Review): This
rule making has been determined to be not significant for purposes of
Executive Order 12866 (Sept. 30, 1993).
C. Executive Order 13563 (Improving Regulation and Regulatory
Review): The Office has complied with Executive Order 13563.
Specifically, the Office has: (1) Used the best available techniques to
quantify costs and benefits, and has considered values such as equity,
fairness and distributive impacts; (2) provided the public with a
meaningful opportunity to participate in the regulatory process,
including soliciting the views of those likely affected prior to
issuing a notice of proposed rule making, and provided on-line access
to the rule making docket; (3) attempted to promote coordination,
simplification and harmonization across government agencies and
identified goals designed to promote innovation; (4) considered
approaches that reduce burdens and maintain flexibility and freedom of
choice for the public; and (5) ensured the objectivity of scientific
and technological information and processes, to the extent applicable.
D. Executive Order 13132 (Federalism): This rule making does not
contain policies with federalism
[[Page 18994]]
implications sufficient to warrant preparation of a Federalism
Assessment under Executive Order 13132 (Aug. 4, 1999).
E. Executive Order 13175 (Tribal Consultation): This rule making
will not: (1) Have substantial direct effects on one or more Indian
tribes; (2) impose substantial direct compliance costs on Indian tribal
governments; or (3) preempt tribal law. Therefore, a tribal summary
impact statement is not required under Executive Order 13175 (Nov. 6,
2000).
F. Executive Order 13211 (Energy Effects): This rule making is not
a significant energy action under Executive Order 13211 because this
rule making is not likely to have a significant adverse effect on the
supply, distribution, or use of energy. Therefore, a Statement of
Energy Effects is not required under Executive Order 13211 (May 18,
2001).
G. Executive Order 12988 (Civil Justice Reform): This rulemaking
meets applicable standards to minimize litigation, eliminate ambiguity,
and reduce burden as set forth in sections 3(a) and 3(b)(2) of
Executive Order 12988 (Feb. 5, 1996).
H. Executive Order 13045 (Protection of Children): This rulemaking
does not concern an environmental risk to health or safety that may
disproportionately affect children under Executive Order 13045 (Apr.
21, 1997).
I. Executive Order 12630 (Taking of Private Property): This
rulemaking will not effect a taking of private property or otherwise
have taking implications under Executive Order 12630 (Mar. 15, 1988).
J. Congressional Review Act: Under the Congressional Review Act
provisions of the Small Business Regulatory Enforcement Fairness Act of
1996 (5 U.S.C. 801 et seq.), prior to issuing any final rule, the
United States Patent and Trademark Office will submit a report
containing the final rule and other required information to the U.S.
Senate, the U.S. House of Representatives and the Comptroller General
of the Government Accountability Office. The changes in this proposed
rule are not expected to result in an annual effect on the economy of
100 million dollars or more, a major increase in costs or prices, or
significant adverse effects on competition, employment, investment,
productivity, innovation, or the ability of United States-based
enterprises to compete with foreign-based enterprises in domestic and
export markets. Therefore, this proposed rule is not expected to result
in a ``major rule'' as defined in 5 U.S.C. 804(2).
K. Unfunded Mandates Reform Act of 1995: The changes proposed in
this proposed rule do not involve a Federal intergovernmental mandate
that will result in the expenditure by State, local, and tribal
governments, in the aggregate, of 100 million dollars (as adjusted) or
more in any one year, or a Federal private sector mandate that will
result in the expenditure by the private sector of 100 million dollars
(as adjusted) or more in any one year, and will not significantly or
uniquely affect small governments. Therefore, no actions are necessary
under the provisions of the Unfunded Mandates Reform Act of 1995. See 2
U.S.C. 1501 et seq.
L. National Environmental Policy Act: This rulemaking will not have
any effect on the quality of environment and is thus categorically
excluded from review under the National Environmental Policy Act of
1969. See 42 U.S.C. 4321 et seq.
M. National Technology Transfer and Advancement Act: The
requirements of section 12(d) of the National Technology Transfer and
Advancement Act of 1995 (15 U.S.C. 272 note) are not applicable because
this rulemaking does not contain provisions which involve the use of
technical standards.
N. Paperwork Reduction Act: The rules of practice pertaining to
patent term adjustment and extension have been reviewed and approved by
the Office of Management and Budget (OMB) under the Paperwork Reduction
Act of 1995 (44 U.S.C. 3501 et seq.) under OMB control number 0651-
0020. As discussed previously, this rulemaking involves: (1) Indicating
that in most circumstances an examiner reopening prosecution of the
application after a notice of appeal has been filed will be considered
a ``decision in the review reversing an adverse determination of
patentability'' for patent term adjustment or extension purposes; and
(2) indicating that the exception to the patent term adjustment
reduction for filing an information disclosure statement after a notice
of allowance or that requires a supplemental Office action for
information disclosure statements for information cited by a foreign
patent office in a counterpart application that are promptly filed with
the Office is expanded to also embrace information first cited by the
Office in another application. This proposed rule does not propose to
add any additional requirements (including information collection
requirements) or fees for patent applicants or patentees. Therefore,
the Office is not resubmitting information collection packages to OMB
for its review and approval because the changes proposed in this
proposed rule do not affect the information collection requirements
associated with the information collections under OMB control number
0651-0020.
Notwithstanding any other provision of law, no person is required
to respond to nor shall any 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 the remand is the last action
by a panel of the Board of Patent Appeals and Interferences prior to
the mailing of a notice of allowance under 35 U.S.C. 151 in the
application or if the Office reopens prosecution after a notice of
appeal has been filed but before any decision by the Board of Patent
Appeals and Interferences and issues an Office action under 35 U.S.C.
132 or notice of allowance under 35 U.S.C. 151, the remand or issuance
of an Office action under 35 U.S.C. 132 or notice of allowance under 35
U.S.C. 151 shall be
[[Page 18995]]
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), and a final decision in
favor of the applicant under paragraph (c)(3) of this section. A remand
by a panel of the Board of Patent Appeals and Interferences shall not
be considered a decision in the review reversing an adverse
determination of patentability as provided in this paragraph if there
is filed a request for continued examination under 35 U.S.C. 132(b)
that was not first preceded by the mailing, after such remand, of at
least one of an action under 35 U.S.C. 132 or a notice of allowance
under 35 U.S.C. 151. A reopening of prosecution after a notice of
appeal has been filed shall not be considered a decision in the review
reversing an adverse determination as provided in this paragraph if
appellant files a request to withdraw the appeal, an amendment pursuant
to Sec. 41.33 of this chapter canceling all of the claims on appeal,
or a request for continued examination under 35 U.S.C. 132(b).
* * * * *
3. Section 1.702 is proposed to be 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 the
remand is the last action by a panel of the Board of Patent Appeals and
Interferences prior to the mailing of a notice of allowance under 35
U.S.C. 151 in the application or if the Office reopens prosecution
after a notice of appeal has been filed but before any decision by the
Board of Patent Appeals and Interferences and issues an Office action
under 35 U.S.C. 132 or notice of allowance under 35 U.S.C. 151, the
remand or issuance of an Office action under 35 U.S.C. 132 or notice of
allowance under 35 U.S.C. 151 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)(1)(C)(iii), and a final decision in
favor of the applicant under Sec. 1.703(e). A remand by a panel of the
Board of Patent Appeals and Interferences shall not be considered a
decision in the review reversing an adverse determination of
patentability as provided in this paragraph if there is filed a request
for continued examination under 35 U.S.C. 132(b) that was not first
preceded by the mailing, after such remand, of at least one of an
action under 35 U.S.C. 132 or a notice of allowance under 35 U.S.C.
151. A reopening of prosecution after a notice of appeal has been filed
shall not be considered a decision in the review reversing an adverse
determination as provided in this paragraph if appellant files a
request to withdraw the appeal, an amendment pursuant to Sec. 41.33 of
this title canceling all of the claims on appeal, or a request for
continued examination under 35 U.S.C. 132(b).
* * * * *
4. Section 1.704 is amended by revising paragraph (d) to read as
follows:
Sec. 1.704 Reduction of period of adjustment of patent term.
* * * * *
(d)(1) A paper containing only an information disclosure statement
in compliance with Sec. Sec. 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 if it 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
Sec. 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
Sec. 1.56(c) more than thirty days prior to the filing of the
information disclosure statement.
(2) The thirty-day period set forth in paragraph (d)(1) of this
section is not extendable.
* * * * *
Teresa Stanek Rea,
Deputy Under Secretary of Commerce for Intellectual Property and Deputy
Director of the United States Patent and Trademark Office.
[FR Doc. 2011-8275 Filed 4-5-11; 8:45 am]
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