Calculating Sec. 154 Patent Term Adjustments
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Calculating Sec. 154 Patent Term Adjustments

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Presentation on eligibility and common problems in calculating patent term adjustments under 35 USC Section 154.

Presentation on eligibility and common problems in calculating patent term adjustments under 35 USC Section 154.

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    Calculating Sec. 154 Patent Term Adjustments Calculating Sec. 154 Patent Term Adjustments Presentation Transcript

    • PATENT TERM ADJUSTMENT CALCULATIONS UNDER 35 U.S.C. § 154(b) “ Playing Sudoku With The USPTO” Sudoku ( sūdoku ) is a logic-based, combinatorial number-placement puzzle.
    • TOPICS
      • Application eligibility
      • Grounds for adjustment
      • Common adjustments and reductions thereto
      • Recommended procedures and examples
      • Wyeth v Kappos and 371(b) USPTO errors
      • Pre- and post-grant correction application and contents
      • Appeal of determinations
      • Practice tips and help
    • APPLICATION ELIGIBILITY
      • Ineligible: Applications filed before June 8, 1995 and all design patents
      • Applications filed between and including June 8, 1995 and May 28, 2000 under old 35 U.S.C. § 154(b) [37 CFR § 1.701]
      • Applications filed on or after May 29, 2000 under 35 U.S.C. § 154(b) [37 CFR § 1.702-1.705]
    • Old 35 U.S.C. § 154(b) “Extensions” (not Adjustments)
      • Original patents (i.e. no reissues)
      • Maximum extension of 5 years
      • Day for day extension only for delays attributable to interferences, secrecy orders, or successful appellate review (BPAI, CAFC, or DC)
        • Appellate extension only for 3 yrs after filing
      • Request for correction via 37 CFR § 1.181 within 2 months of Notice of Allowance
    • NEW 35 U.S.C. § 154(b) “ADJUSTMENTS”
      • Original patents (i.e. no reissues)
      • Day for day term adjustment due to:
        • (A) USPTO delay: 14-4-4-4 Rule
        • (B) USPTO delay: 3 year Rule
        • (C) Interferences, secrecy orders and successful appeals
      • Adjustments reduced by
        • Calendar day overlaps of adjustments
        • Terminal disclaimers
        • Applicant delays in prosecution
    • NEW 35 U.S.C. § 154(b) “ADJUSTMCENTS” Cont’d
      • Request for correction by application and fee
        • Before issue fee payment for most A and C circumstances (max 3 months from notice of allowance)
        • Non-extendable two months of the issue date for B circumstances and some A circumstances
      • Appeal of USPTO patent term adjustment via DC Court within 180 days of issue
      • GROUNDS: 37 CFR § 1.702(a) (14-4-4-4 RULE) USPTO FAILURE TO:
        • Provide an exam action on an application within 14 months of the 111a filing date or 371(c) date.
        • Respond to a reply to an office action response or to a compliant appeal brief within 4 months.
        • Act on an application within 4 months after the date of a decision by the BPAI in an appeal or interference or a decision by a Federal court in which allowable claims remain in an application
        • Issue a patent within 4 months after payment of the issue fee.
    • (B) GROUNDS: 37 CFR § 1.702(b) (3 YEAR RULE) USPTO FAILURE TO:
      • Issue a patent within 3 years after the filing date of the application [111a or 371(b or f)] not including:
        • Time after the filing of an RCE
        • Time consumed in an interference, appellate review by BPAI or Federal courts, or imposition of a secrecy order
        • Time due to applicants request to delay processing
    • COMMON A AND B DELAYS ELIGIBLE FOR DAY FOR DAY ADJUSTMENT: 37 CFR 1.703
      • USPTO delays first exam action to after 14 months
      • USPTO delays action to a response to after 4 months
      • USPTO delays issue to after 4 months from issue fee
      • USPTO delays issue of patent beyond 3 years
      • Importantly!
      • Beyond 4 month periods are not additive to the eligible periods under the 14 month or the 3 yr. rule
      • The eligible periods under the 14 month and 3 yr. rule are additive if there is no calendar day overlap (Wyeth vs Kappos)
    • REDUCTIONS TO ADJUSTMENT 37 USC § 1.704
      • Any period, on a day for day basis, wherein Applicant delays prosecution
      • Many grounds for reductions but most commonly:
        • Not responding to an Office notice/action within 3 months (But you always get 3 months!)
        • Supplemental responses and submissions that impede Office actions
        • Filing an RCE or Terminal disclaimer
      • Note! Date calculated from day of USPTO receipt except for Express Mail procedure
    • STEPS IN PTA VERIFICATION
      • Access a between-date duration calculator
        • http://www.timeanddate.com/date/duration.html
      • Access Patent Term Adjustment file in PAIR
      • Verify the start dates for the 14 month and 3 yr rules
      • Calculate your 14 month and 3 yr dates
      • Verify calculations for USPTO and your delays
      • Sum eligible adjustment periods (14 mon, 3 yr, other)
      • Subtract your delay periods and compare answers
      • VOILA!
    • Example For 111a Application PAIR ADJUSTMENT FILE 14 month date is 9-18-2006 3 yr date is 7-18-2008 [Potentially eligible under 35 USC § 154(b)(1)(B)]   Patent Term Adjustments Explanation Of Calculations   - USPTO Adjustment(days):   192 Total PTA (days):   - Post-Issue Petitions (days):   - Applicant Delay (APPL) Delay (days):   - Pre-Issue Petitions (days):   - Three Years:   01-05-2010 Issue Date of Patent:   - USPTO Delay (PTO) Delay (days):   07-18-2005 Filing or 371(c) Date: Patent Term Adjustment (PTA) for Application Number:  11/184,429
    • PAIR ADJUSTMENT FILE 9-27-2007 is beyond 14 month date of 9-18-2006 so eligible under 35 USC § 154(b)(1)(A) Application Is Now Complete 02-27-2006 Application Dispatched from OIPE 02-27-2006 Case Docketed to Examiner in GAU 03-24-2006 IFW TSS Processing by Tech Center Complete 03-24-2006 Information Disclosure Statement (IDS) Filed 06-22-2007 Information Disclosure Statement (IDS) Filed 06-22-2007 Reference capture on IDS 06-22-2007 Requirement for Restriction / Election 09-26-2007 374 Mail Restriction Requirement 09-27-2007
    • Potential PTA 35 USC § 154(b)(1)(A) From and including: Tuesday, September 19, 2006 To and including: Thursday, September 27, 2007 It is 374 days from the start date to the end date, end date included
    • POTENTIAL PTA 35 USC § 154(b)(1)(B) From and including: Saturday, July 19, 2008 To and including: Tuesday, January 5, 2010 It is 536 days from the start date to the end date, end date included No additional USPTO delays were detected under 4 month rule
    • REDUCTION TO ADJUSTMENTS 1 From and including: Saturday, November 12, 2005 (3 months for reply) To and including: Wednesday, February 15, 2006 It is 96 days from the start date to the end date (end date included) Notice Mailed--Application Incomplete--Filing Date Assigned 08-11-2005 A statement by one or more inventors satisfying the requirement under 35 USC 115, Oath of the Applic 02-15-2006 96 Additional Application Filing Fees 02-15-2006
    • REDUCTION TO ADJUSTMENTS 2 From and including: Friday, August 8, 2008 (3 months for reply) To and including: Tuesday, August 19, 2008 It is 12 days from the start date to the end date (end date included) Mail Non-Final Rejection 05-07-2008 Request for Extension of Time - Granted 08-19-2008 12 Response after Non-Final Action 08-19-2008
    • REDUCTION TO ADJUSTMENTS 3 From and including: Sunday, March 1, 2009 (3 months for reply) To and including: Wednesday, May 13, 2009 It is 74 days from the start date to the end date (end date included) Mail Final Rejection (PTOL - 326) 11-28-2008 Workflow - Request for RCE - Begin 05-13-2009 Request for Extension of Time - Granted 05-13-2009 Disposal for a RCE / CPA / R129 05-20-2009 74 Request for Continued Examination (RCE) 05-13-2009
    • RCE REDUCTION From and including: Wednesday, May 13, 2009 To and including: Tuesday, January 5, 2010 It is 238 days from the start date to the end (end date included) Application Is Considered Ready for Issue 11-17-2009 Dispatch to FDC 11-24-2009 Patent Issue Date Used in PTA Calculation 01-05-2010 74 Request for Continued Examination (RCE) 05-13-2009 Date Forwarded to Examiner 05-20-2009
    • FINAL PTA CALCULATIONS
      • 35 USC § 154(b)(1)(A) Adjustments = 374 days
      • 35 USC § 154(b)(1)(B) Adjustments
      • [536- 238 (RCE days)] = 298 days
      • 35 USC § 154(b)(2)(C) Reductions
      • [96 + 12 + 74] = 182 days
      • Total Adjustment
      • [(374 + 298) – 182] = 490 days
      • USPTO Adjusted only 192 days (Wyeth v Kappos effect)
    • Wyeth v Kappos Decided by CAFC 1-7-2010
      • Prior USPTO interpretation of 35 USC 154(b)(2)(A) was that 154(b)(1)(A) and 154(b)(1)(B) delays overlapped so only the longer of the two was eligible for adjustment
      • Interpretation overruled by both the DC Court and CAFC so (A) periods and (B) periods are now additive to the extent they do not overlap on calendar days
      • Interim form PTO/SB/131 was available for corrections solely due to Wyeth v Kappos for patents issued within 180 days prior to March 2, 2010
    • 371 Application Example PAIR ADJUSTMENT FILE 14 month date is 8-04-2008 3 yr date is 6-4-2010 Ineligible for PTA? No! For 3 yr date, date is measured from 371 (b or f) date (371(b) date is 30 months after priority date for PCT filing) [This calculation error was just discovered in 2009]   Patent Term Adjustments   160 Total PTA (days):   - Post-Issue Petitions (days):   - Applicant Delay (APPL) Delay (days):   - Pre-Issue Petitions (days):   - Three Years:   01-19-2010 Issue Date of Patent:   - USPTO Delay (PTO) Delay (days):   06-04-2007 Filing or 371(c) Date: Patent Term Adjustment (PTA) for Application Number:  10/583,814
    • 10/583,814 IMAGE FILE 3 yr date is actually 6-22-2009, Potentially eligible for PTA under 35 USC § 154(b)(1)(B) since issue date was 1-19-2010 1 PROSECUTION Abstract ABST 06-22-2006 21 PROSECUTION Claims CLM 06-22-2006 243 PROSECUTION Specification SPEC 06-22-2006 3 PROSECUTION Transmittal of New Application TRNA 06-22-2006
    • PAIR PTA FILE: USPTO DELAY Calculations verify that first action from 371(c) date was 191 days after 14 month date A Notice of Allowance was mailed within four months of applicants response so there was no further USPTO delay. Patent issued on 1-19-2010 211 days beyond the 3 yr date 371 Completion Date 06-04-2007   Application Dispatched from OIPE 07-17-2007   PG-Pub Issue Notification 10-19-2007   Email Notification 10-21-2007   Non-Compliant Preliminary Amendment 12-07-2007   Mail Non-Compliant Preliminary Amendment 12-11-2007   IFW TSS Processing by Tech Center Complete 12-07-2007   Email Notification 12-12-2007   Case Docketed to Examiner in GAU 12-19-2007   Preliminary Amendment 12-26-2007   Non-Final Rejection 02-06-2009   191 Mail Non-Final Rejection 02-11-2009
    • APPLICANT REDUCTIONS FOR DELAY Calculations verify that Applicant delayed 31 days beyond 3 month date in replying to first action.   Email Notification 02-11-2009   Electronic Review 02-11-2009   Information Disclosure Statement (IDS) Filed 06-11-2009   Information Disclosure Statement (IDS) Filed 06-11-2009   Reference capture on IDS 06-11-2009   Request for Extension of Time - Granted 06-11-2009 31   Response after Non-Final Action 06-11-2009     Date Forwarded to Examiner 07-08-2009     Information Disclosure Statement considered 06-11-2009     Examiner's Amendment Communication 09-10-2009     Notice of Allowance Data Verification Completed 09-11-2009     Document Verification 09-11-2009     Mail Notice of Allowance 09-15-2009
    • FINAL PTA CALCULATIONS
      • 35 USC § 154(b)(1)(A) Adjustments = 191 days
      • 35 USC § 154(b)(1)(B) Adjustments = 211 days
      • 35 USC § 154(b)(2)(C) Reductions = 31 days
      • Total Adjustment
      • [(191 + 211) – 31] = 371 days
      • USPTO Adjusted only 160 days (Wyeth v Kappos effect and 371(b) error)
    • PRE-GRANT CORRECTION OF PTA
      • First opportunity is following Notice of Allowance but before issue fee payment (3 month non-extendable)
        • Only applicable for 35 USC § 154(b)(1)A and C, not B
      • Requires request (application) and $200 fee
      • Do not delay requests for most A and C corrections until after grant
        • after issue requests cannot raise new issues or issues that could have been raised in the earlier application for correction (37 CFR 1.705(e))
      • Corrections for reductions due to response delays are available under basically “unavoidable” standards
    • POST-GRANT CORRECTION OF PTA
      • Only for causes that could not have earlier been raised, e.g., 35 USC 154(b)(1)(B) grounds, late issue
      • Must file within a non-extendable two months of issue
      • Requires request (application) and $200 fee
      • *Note that requests for corrections before notice of allowance or B corrections before grant are dismissed.
    • APPLICATION FOR CORRECTION CONTENT
      • The fee according to 37 CFR 1.18(e)
      • A statement of the facts involved, specifying:
        • Correct patent term adjustment and the 37 CFR 1.702 grounds
        • Relevant dates for which adjustment period is sought under 37 CFR 1.703(a)-(e) and the adjustment period to which the patent is entitled under 1.703(f)
        • Whether the patent is subject to a terminal disclaimer and any expiration date specified in the terminal disclaimer
        • Dates and circumstances for reduction to adjustments (37 CFR 1.704) or statement that there were no such circumstances
    • PTA CORRECTIONS IN THE USPTO’S FAVOR
      • Duty of candor requires you to notify the USPTO of corrections in their favor
      • An application under 37 CFR 1.705 is not required
      • MPEP 2733
        • Letter citing error + issue fee payment is adequate
        • Alternatively, request certificate of correction after issue
          • Applicable even after the two months from issue when submitted with a letter of candor
    • APPEAL OF CORRECTIONS
      • Appeal to the DC District Court is available if made within 180 days after the patent grant
      • The DC Court has just remanded timely filed Wyeth v Kappos corrections to the USPTO
      • Unclear what fate awaits PTA due to Wyeth v Kappos in patents that are beyond 180 days of grant without pending suits
      • *Note, recently, some companies have had to file appeals before USPTO decisions to preserve their 180 day rights
    • PRACTICE TIPS
      • File responses electronically or via Express Mail
      • Manage responses to all notices (PTA running?)
      • Make telephone invention restrictions if available
      • Avoid incomplete applications, submissions after allowance and non-compliant amendments, etc.
      • Avoid delaying examiner near office actions, e.g., preliminary amendments and IDS submissions
      • Manage or avoid PTA truncating RCEs
      • Fulfill 371(c) requirements early and expressly request examination in early PCT nationalizations
    • USPTO HELP
      • OPLA PTA help line 571-272-7702