[Federal Register Volume 84, Number 193 (Friday, October 4, 2019)]
[Proposed Rules]
[Pages 53090-53094]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2019-21271]
[[Page 53090]]
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DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Part 1
[Docket No. PTO-P-2019-0019]
RIN 0651-AD38
Patent Term Adjustment Reductions in View of the Federal Circuit
Decision in Supernus Pharm., Inc. v. Iancu
AGENCY: United States Patent and Trademark Office, Department of
Commerce.
ACTION: Notice of proposed rulemaking.
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SUMMARY: The United States Patent and Trademark Office (Office) is
proposing to revise the rules of practice pertaining to patent term
adjustment in view of the decision by the U.S. Court of Appeals for the
Federal Circuit (Federal Circuit) in Supernus Pharm., Inc. v. Iancu
(Supernus). The Federal Circuit in Supernus held that a reduction of
patent term adjustment must be equal to the period of time during which
the applicant failed to engage in reasonable efforts to conclude
prosecution of the application. The Office is proposing to revise the
provisions pertaining to reduction of patent term adjustment for
alignment with the Federal Circuit decision in Supernus.
DATES: Written comments must be received on or before December 3, 2019.
ADDRESSES: Comments should be sent by electronic mail message over the
internet addressed to: [email protected]. Comments also may be
submitted by postal mail addressed to: Mail Stop Comments-Patents,
Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450,
marked to the attention of Kery Fries, Senior Legal Advisor, Office of
Patent Legal Administration, Office of the Deputy Commissioner for
Patent Examination Policy.
Comments further may be sent by electronic mail message over the
internet via the Federal eRulemaking Portal. See the Federal
eRulemaking Portal website (http://www.regulations.gov) for additional
instructions on providing comments via the Federal eRulemaking Portal.
Although comments may be submitted by postal mail, the Office
prefers to receive comments by electronic mail message over the
internet because sharing comments with the public is more easily
accomplished. Electronic comments submitted in plain text are
preferred, but may be submitted in ADOBE[supreg] portable document
format or MICROSOFT WORD[supreg] format. Comments not submitted
electronically should be submitted on paper in a format that
facilitates convenient digital scanning into ADOBE[supreg] portable
document format.
Comments will be available for viewing via the Office's internet
website (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 Fries, Senior Legal Advisor,
Office of Patent Legal Administration, Office of the Deputy
Commissioner for Patent Examination Policy, at telephone number 571-
272-7757.
SUPPLEMENTARY INFORMATION:
Executive Summary: Purpose: The Office is proposing to revise the
rules of practice pertaining to the patent term adjustment provisions
of 35 U.S.C. 154(b) in view of the decision by the Federal Circuit in
Supernus Pharm., Inc. v. Iancu, 913 F.3d 1351 (Fed. Cir. 2019). The
Federal Circuit in Supernus held that a reduction of patent term
adjustment under 35 U.S.C. 154(b)(2)(C) must be equal to the period of
time during which the applicant failed to engage in reasonable efforts
to conclude prosecution of the application. The regulations pertaining
to a reduction of patent term adjustment due to a failure of an
applicant to engage in reasonable efforts to conclude processing or
examination of an application are set forth in 37 CFR 1.704. Several
provisions in 37 CFR 1.704 specify a period of reduction corresponding
to the consequences to the Office of applicant's failure to engage in
reasonable efforts to conclude prosecution i.e., 37 CFR 1.703(c)(2),
(c)(3), (c)(6), (c)(9), and (c)(10) rather than ``the period from the
beginning to the end of the applicant's failure to engage in reasonable
efforts to conclude prosecution'' as provided for in Supernus. 913 F.3d
at 1359. Therefore, the Office is proposing to revise these provisions
of 37 CFR 1.704 for consistency with the Federal Circuit's decision in
Supernus.
Summary of Major Provisions: This rulemaking pertains to the patent
term adjustment regulations establishing the circumstances that
constitute a failure of an applicant to engage in reasonable efforts to
conclude processing or examination of an application and resulting
reduction of any patent term adjustment (37 CFR 1.704). This rulemaking
specifically proposes to revise the period of reduction of patent term
adjustment in the provisions of 37 CFR 1.704 pertaining to deferral of
issuance of a patent (37 CFR 1.704(c)(2)), abandonment of an
application (37 CFR 1.704(c)(3)), submission of a preliminary amendment
(37 CFR 1.704(c)(6)), submission of papers after a decision by the
Patent Trial and Appeal Board or by a Federal court (37 CFR
1.704(c)(9)), and submission of papers after a notice of allowance
under 35 U.S.C. 151 (37 CFR 1.704(c)(10)) to specify a period of
reduction corresponding to ``the period from the beginning to the end
of the applicant's failure to engage in reasonable efforts to conclude
prosecution'' (rather than corresponding to the consequences to the
Office of applicant's failure to engage in reasonable efforts to
conclude prosecution) for consistency with the Federal Circuit's
decision in Supernus. 913 F.3d at 1359.
Costs and Benefits: This rulemaking is not economically significant
under Executive Order 12866 (Sept. 30, 1993).
Background: The American Inventors Protection Act of 1999 or AIPA
(Pub. L. 106-113, 113 Stat. 1501, 1501A-552 through 1501A-591 (1999))
amended 35 U.S.C. 154(b) to provide 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). Generally, 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)) (known as ``A'' delays); (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)) (known as ``B'' delays); and
(3) for delays due to interference (and now derivation), secrecy order,
or successful appellate review (35 U.S.C. 154(b)(1)(C)) (known as ``C''
delays). 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). See 35 U.S.C. 154(b)(2). 35 U.S.C.
154(b)(2)(C) sets forth one such limitation, providing, 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
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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 AIPA patent term adjustment provisions of 35
U.S.C. 154(b), including setting forth circumstances that constitute a
failure of an applicant to engage in reasonable efforts to conclude
processing or examination of an application and resulting in a
reduction of any patent term adjustment, 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) (AIPA
patent term adjustment final rule). The regulations establishing the
circumstances that constitute a failure of an applicant to engage in
reasonable efforts to conclude processing or examination of an
application and resulting reduction of any patent term adjustment are
set forth in 37 CFR 1.704.
In January 2019, the Federal Circuit issued a decision in Supernus
pertaining to the patent term adjustment provisions of 35 U.S.C.
154(b)(2)(C). The Federal Circuit confirmed that 37 CFR 1.704(c)(8) ``
`is a reasonable interpretation of the [patent term adjustment]
statute' insofar as it includes `not only applicant conduct or behavior
that result in actual delay, but also those having the potential to
result in delay irrespective of whether such delay actually occurred.'
'' Supernus, 913 F.3d at 1356 (quoting Gilead Scis., Inc. v. Lee, 778
F.3d 1341, 1349-50 (Fed. Cir. 2015)). The Federal Circuit, however,
held that the Office may not reduce patent term adjustment by a period
that exceeds the ``time during which the applicant failed to engage in
reasonable efforts'' to conclude prosecution, specifically stating that
``[o]n the basis of the plain language of [35 U.S.C. 154(b)(2)(C)(i),]
the USPTO may not count as applicant delay a period of time during
which there was no action that the applicant could take to conclude
prosecution of the patent.'' Id. at 1358. The Federal Circuit
specifically stated that--
Thus, the statutory period of PTA reduction must be the same
number of days as the period from the beginning to the end of the
applicant's failure to engage in reasonable efforts to conclude
prosecution. PTA cannot be reduced by a period of time during which
there is no identifiable effort in which the applicant could have
engaged to conclude prosecution because such time would not be
``equal to'' and would instead exceed the time during which an
applicant failed to engage in reasonable efforts.
Id. at 1359.
37 CFR 1.704(c)(1) through (c)(14) set forth: (1) The exemplary
circumstances prescribed by the Office ``that constitute a failure of
an applicant to engage in reasonable efforts to conclude processing or
examination of an application'' pursuant to 35 U.S.C. 154(b)(2)(C)(iii)
and (2) resulting period of reduction of any patent term adjustment.
The Federal Circuit decision in Supernus involved a reduction to patent
term adjustment under the provisions of 37 CFR 1.704(c)(8). The period
of reduction of patent term adjustment in 37 CFR 1.704(c)(8) is as
follows: ``the number of days, if any, beginning on the day after the
date the initial reply was filed and ending on the date that the
supplemental reply or other such paper was filed.'' 37 CFR 1.704(c)(8).
This period corresponds to ``the period from the beginning to the end
of the applicant's failure to engage in reasonable efforts to conclude
prosecution,'' except in the rare situation in which such period
includes ``a period of time during which there is no identifiable
effort in which the applicant could have engaged to conclude
prosecution.'' Supernus, 913 F.3d at 1359. The Office published a
notice in May of 2019 setting out its implementation of Supernus with
respect to the provisions of 37 CFR 1.704(c)(8) or other provision of
37 CFR 1.704(c) that includes ``a period of time during which there is
no identifiable effort in which the applicant could have engaged to
conclude prosecution.'' See Patent Term Adjustment Procedures in View
of the Federal Circuit Decision in Supernus Pharm., Inc. v. Iancu, 84
FR 20343 (May 9, 2019).
While the Federal Circuit decision in Supernus involved 37 CFR
1.704(c)(8), there are several provisions in 37 CFR 1.704(c)(1) through
(c)(14) whose period of reduction corresponds to or includes the
consequences to the Office of applicant's failure to engage in
reasonable efforts to conclude prosecution, rather than ``the period
from the beginning to the end of the applicant's failure to engage in
reasonable efforts to conclude prosecution.'' Supernus, 913 F.3d at
1359. Therefore, the Office is proposing changes to 37 CFR 1.704 to
revise the periods of reduction of patent term adjustment in 37 CFR
1.704(c) for consistency with the Federal Circuit's decision in
Supernus.
Discussion of Specific Rules
The following is a discussion of amendments to title 37 of the Code
of Federal Regulations, part 1:
Section 1.704(c)(2) is proposed to be amended to change ``the date
the patent was issued'' to ``the earlier of the date a request to
terminate the deferral was filed or the date the patent was issued.''
The period of reduction of patent term adjustment in Sec. 1.704(c)(2)
would be as follows: ``the number of days, if any, beginning on the
date a request for deferral of issuance of a patent under Sec. 1.314
was filed and ending on the earlier of the date a request to terminate
the deferral was filed or the date the patent was issued.''
Section 1.704(c)(3) is proposed to be amended to change ``the
earlier of: (i) The date of mailing of the decision reviving the
application or accepting late payment of the issue fee; or (ii) The
date that is four months after the date the grantable petition to
revive the application or accept late payment of the issue fee was
filed'' to ``the date the grantable petition to revive the application
or accept late payment of the issue fee was filed.'' The period of
reduction of patent term adjustment in Sec. 1.704(c)(3) would be as
follows: ``the number of days, if any, beginning on the date of
abandonment or the date after the date the issue fee was due and ending
on the date the grantable petition to revive the application or accept
late payment of the issue fee was filed.''
Section 1.704(c)(6) is proposed to be amended to change ``the
lesser of: (i) The number of days, if any, beginning on the day after
the mailing date of the original Office action or notice of allowance
and ending on the date of mailing of the supplemental Office action or
notice of allowance; or (ii) Four months'' to ``the number of days, if
any, beginning on the day after the date that is eight months from
either the date on which the application was filed under 35 U.S.C.
111(a) or the date of commencement of the national stage under 35
U.S.C. 371(b) or (f) in an international application and ending on the
date the preliminary amendment or other preliminary paper was filed.''
See Changes to Implement the Patent Law Treaty, 78 FR 62367, 62385
(Oct. 21, 2013) (an application is expected to be in condition for
examination no later than eight months from its filing date (or date of
commencement of the national stage in an international application)).
The period of reduction of patent term adjustment in Sec. 1.704(c)(6)
would be as follows: ``the number of days, if any, beginning on the day
after the date that is eight months from either the date on which the
application was filed under 35 U.S.C. 111(a) or the date of
commencement of the national stage under 35 U.S.C. 371(b) or (f) in an
international application and ending on
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the date the preliminary amendment or other preliminary paper was
filed.''
Section 1.704(c)(9) is proposed to be amended to change ``the
lesser of: (i) The number of days, if any, beginning on the day after
the mailing date of the original Office action or notice of allowance
and ending on the mailing date of the supplemental Office action or
notice of allowance; or (ii) Four months'' to ``the number of days, if
any, beginning on the day after the date of the decision by the Patent
Trial and Appeal Board or by a Federal court and ending on date the
amendment or other paper was filed.'' The period of reduction of patent
term adjustment in Sec. 1.704(c)(9) would be as follows: ``the number
of days, if any, beginning on the day after the date of the decision by
the Patent Trial and Appeal Board or by a Federal court and ending on
date the amendment or other paper was filed.''
Section 1.704(c)(10) is proposed to be amended to change ``the
lesser of: (i) The number of days, if any, beginning on the date the
amendment under Sec. 1.312 or other paper was filed and ending on the
mailing date of the Office action or notice in response to the
amendment under Sec. 1.312 or such other paper; or (ii) Four months''
to ``the number of days, if any, beginning on the day after the mailing
date of the notice of allowance under 35 U.S.C. 151 and ending on the
date the amendment under Sec. 1.312 or other paper was filed.'' The
period of reduction of patent term adjustment in Sec. 1.704(c)(10)
would be as follows: ``the number of days, if any, beginning on the day
after the mailing date of the notice of allowance under 35 U.S.C. 151
and ending on the date the amendment under Sec. 1.312 or other paper
was filed.''
Rulemaking Considerations
A. Administrative Procedure Act: The changes proposed by this
rulemaking involve rules of agency practice and procedure, and/or
interpretive rules. See Perez v. Mortg. Bankers Ass'n, 135 S. Ct. 1199,
1204 (2015) (Interpretive rules ``advise the public of the agency's
construction of the statutes and rules which it administers.''
(citation and internal quotation marks omitted)); Nat'l Org. of
Veterans' Advocates v. Sec'y of Veterans Affairs, 260 F.3d 1365, 1375
(Fed. Cir. 2001) (Rule that clarifies interpretation of a statute is
interpretive.); Bachow Commc'ns Inc. v. FCC, 237 F.3d 683, 690 (D.C.
Cir. 2001) (Rules governing an application process are procedural under
the Administrative Procedure Act.); Inova Alexandria Hosp. v. Shalala,
244 F.3d 342, 350 (4th Cir. 2001) (Rules for handling appeals were
procedural where they did not change the substantive standard for
reviewing claims.). Specifically, this rulemaking proposes to revise
Office rules that interpret certain statutory provisions pertaining to
patent term adjustment. The proposed revisions specify a period of
reduction corresponding to ``the period from the beginning to the end
of the applicant's failure to engage in reasonable efforts to conclude
prosecution'' (rather than to the consequences to the Office of
applicant's failure to engage in reasonable efforts to conclude
prosecution) for consistency with the Federal Circuit's decision in
Supernus. 913 F.3d at 1359.
Accordingly, prior notice and opportunity for public comment for
the changes proposed by this rulemaking are not required pursuant to 5
U.S.C. 553(b) or (c), or any other law. See Perez, 135 S. Ct. at 1206
(Notice-and-comment procedures are required neither when an agency
``issue[s] an initial interpretive rule'' nor ``when it amends or
repeals that interpretive rule.''); Cooper Techs. Co. v. Dudas, 536
F.3d 1330, 1336-37 (Fed. Cir. 2008) (stating that 5 U.S.C. 553, and
thus 35 U.S.C. 2(b)(2)(B), does not require notice and comment
rulemaking for ``interpretative rules, general statements of policy, or
rules of agency organization, procedure, or practice'' (quoting 5
U.S.C. 553(b)(A))). However, the Office has chosen to seek public
comment before implementing the rule to benefit from the public's
input.
B. 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 notice
will not have a significant economic impact on a substantial number of
small entities. See 5 U.S.C. 605(b).
This rulemaking does not propose to impose any additional
requirements or fees on applicants. This rulemaking also does not
propose to change the circumstances defined as constituting 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)(iii)). This
rulemaking implements the Federal Circuit's ruling on the provisions of
35 U.S.C. 154(b)(2)(C)(i) in Supernus to reflect the applicable period
of reduction in the event that there is a failure of an applicant to
engage in reasonable efforts to conclude processing or examination.
This rulemaking specifically proposes to revise the period of reduction
of patent term adjustment in the provisions of 37 CFR 1.704 pertaining
to deferral of issuance of a patent (37 CFR 1.704(c)(2)), abandonment
of an application (37 CFR 1.704(c)(3)), submission of a preliminary
amendment (37 CFR 1.704(c)(6)), submission of papers after a decision
by the Patent Trial and Appeal Board or by a Federal court (37 CFR
1.704(c)(9)), and submission of papers after a notice of allowance
under 35 U.S.C. 151 (37 CFR 1.704(c)(10)) to specify a period of
reduction corresponding to ``the period from the beginning to the end
of the applicant's failure to engage in reasonable efforts to conclude
prosecution'' (rather than to the consequences to the Office of
applicant's failure to engage in reasonable efforts to conclude
prosecution) for consistency with the Federal Circuit's decision in
Supernus. 913 F.3d at 1359. The changes proposed in this rulemaking
will not have a significant economic impact on a substantial number of
small entities because applicants are not entitled to patent term
adjustment that have not been reduced by a period equal to the period
of the applicant's failure to engage in reasonable efforts to conclude
processing or examination (35 U.S.C. 154(b)(2)(C)(i) and 37 CFR
1.704(a)), and because applicants may avoid adverse patent term
adjustment consequences by refraining from actions or inactions defined
as constituting a failure of an applicant to engage in reasonable
efforts to conclude processing or examination. For the foregoing
reasons, the changes proposed in this notice will not have a
significant economic impact on a substantial number of small entities.
C. Executive Order 12866 (Regulatory Planning and Review): This
rulemaking has been determined to be not significant for purposes of
Executive Order 12866 (Sept. 30, 1993).
D. Executive Order 13563 (Improving Regulation and Regulatory
Review): The Office has complied with Executive Order 13563 (Jan. 18,
2011). Specifically, the Office has, to the extent feasible and
applicable: (1) Made a reasoned determination that the benefits justify
the costs of the rule; (2) tailored the rule to impose the least burden
on society consistent with obtaining the regulatory objectives; (3)
selected a regulatory approach that maximizes net benefits; (4)
specified performance objectives; (5) identified and assessed available
alternatives; (6) involved the public in an open exchange of
information and perspectives among experts in relevant disciplines,
affected stakeholders in the private sector, and the public as a whole,
and provided on-
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line access to the rulemaking docket; (7) attempted to promote
coordination, simplification, and harmonization across Government
agencies and identified goals designed to promote innovation; (8)
considered approaches that reduce burdens and maintain flexibility and
freedom of choice for the public; and (9) ensured the objectivity of
scientific and technological information and processes.
E. Executive Order 13771 (Reducing Regulation and Controlling
Regulatory Costs): This proposed rule is not expected to be an
Executive Order 13771 (Jan. 30, 2017) regulatory action because this
proposed rule is not significant under Executive Order 12866 (Sept. 30,
1993).
F. Executive Order 13132 (Federalism): This rulemaking does not
contain policies with federalism implications sufficient to warrant
preparation of a Federalism Assessment under Executive Order 13132
(Aug. 4, 1999).
G. Executive Order 13175 (Tribal Consultation): This rulemaking
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).
H. Executive Order 13211 (Energy Effects): This rulemaking is not a
significant energy action under Executive Order 13211 because this
rulemaking 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).
I. Executive Order 13783 (Promoting Energy Independence and
Economic Growth): This rulemaking does not potentially burden the
development or use of domestically produced energy resources, with
particular attention to oil, natural gas, coal, and nuclear energy
resources under Executive Order 13783 (Mar. 28, 2017).
J. Executive Order 13772 (Core Principles for Regulating the United
States Financial System): This rulemaking does not involve regulation
of the United States financial system under Executive Order 13772 (Feb.
3, 2017).
K. 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).
L. 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).
M. 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).
N. Congressional Review Act: Under the Congressional Review Act
provisions of the Small Business Regulatory Enforcement Fairness Act of
1996 (5 U.S.C. 801-808), the United States Patent and Trademark Office
will submit a report containing any final rule resulting from this
rulemaking and other required information to the U.S. Senate, the U.S.
House of Representatives, and the Comptroller General of the Government
Accountability Office.
O. Unfunded Mandates Reform Act of 1995: The changes set forth in
this rulemaking 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.
P. National Environmental Policy Act: This rulemaking will not have
any effect on the quality of the environment and is thus categorically
excluded from review under the National Environmental Policy Act of
1969. See 42 U.S.C. 4321 et seq.
Q. 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.
R. Paperwork Reduction Act: The Paperwork Reduction Act of 1995 (44
U.S.C. 3501 et seq.) requires that the Office consider the impact of
paperwork and other information collection burdens imposed on the
public. 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.
This rulemaking does not impose 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 in this rulemaking do not affect the information
collection requirements associated with the information collections
approved under OMB control number 0651-0020 or any other information
collections.
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, Biologics, 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
0
1. The authority citation for 37 CFR part 1 continues to read as
follows:
Authority: 35 U.S.C. 2(b)(2), unless otherwise noted.
0
2. Section 1.704 is amended by revising paragraphs (c)(2), (3), (6),
(9) and (c)(10) to read as follows:
Sec. 1.704 Reduction of Period of Adjustment of Patent Term.
* * * * *
(c) * * *
(2) Deferral of issuance of a patent under Sec. 1.314, in which
case the period of adjustment set forth in Sec. 1.703 shall be reduced
by the number of days, if any, beginning on the date a request for
deferral of issuance of a patent under Sec. 1.314 was filed and ending
on the earlier of the date a request to terminate the deferral was
filed or the date the patent was issued;
(3) Abandonment of the application or late payment of the issue
fee, in which case the period of adjustment set forth in Sec. 1.703
shall be reduced by the number of days, if any, beginning on the date
of abandonment or the date after the date the issue fee was due and
ending on the date the grantable petition to revive the application or
accept late payment of the issue fee was filed;
* * * * *
[[Page 53094]]
(6) Submission of a preliminary amendment or other preliminary
paper less than one month before the mailing of an Office action under
35 U.S.C. 132 or notice of allowance under 35 U.S.C. 151 that requires
the mailing of a supplemental Office action or notice of allowance, in
which case the period of adjustment set forth in Sec. 1.703 shall be
reduced by the number of days, if any, beginning on the day after the
date that is eight months from either the date on which the application
was filed under 35 U.S.C. 111(a) or the date of commencement of the
national stage under 35 U.S.C. 371(b) or (f) in an international
application and ending on the date the preliminary amendment or other
preliminary paper was filed;
* * * * *
(9) Submission of an amendment or other paper after a decision by
the Patent Trial and Appeal Board, other than a decision designated as
containing a new ground of rejection under Sec. 41.50(b) of this title
or statement under Sec. 41.50(c) of this title, or a decision by a
Federal court, less than one month before the mailing of an Office
action under 35 U.S.C. 132 or notice of allowance under 35 U.S.C. 151
that requires the mailing of a supplemental Office action or
supplemental notice of allowance, in which case the period of
adjustment set forth in Sec. 1.703 shall be reduced by the number of
days, if any, beginning on the day after the date of the decision by
the Patent Trial and Appeal Board or by a Federal court and ending on
date the amendment or other paper was filed;
(10) Submission of an amendment under Sec. 1.312 or other paper,
other than a request for continued examination in compliance with Sec.
1.114, after a notice of allowance has been given or mailed, in which
case the period of adjustment set forth in Sec. 1.703 shall be reduced
by the number of days, if any, beginning on the day after the mailing
date of the notice of allowance under 35 U.S.C. 151 and ending on the
date the amendment under Sec. 1.312 or other paper was filed;
* * * * *
Andrei Iancu,
Under Secretary of Commerce for Intellectual Property and Director of
the United States Patent and Trademark Office.
[FR Doc. 2019-21271 Filed 10-3-19; 8:45 am]
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