In a Federal Register Notice issued December 1, 2011, the USPTO issued a final rule that tweaks the patent term adjustment rules to permit applicants to promptly file McKesson-type Information Disclosure Statements (IDSs) without incurring a patent term adjustment deduction. The rule change took effect on December 1, 2011.

(The Federal Register Notice indicates that previously proposed changes to the calculation of patent term adjustment when the USPTO reopens prosecution after a Notice of Appeal are being revised and will be published for comment separately.)

The Revisions to 37 CFR § 1.704(d)

Under the revised rule, IDSs filed to submit Office Actions and references cited in a copending U.S. patent application will be treated the same as IDSs filed to submit information cited in a counterpart foreign application. That is, the USPTO will not charge applicants for “delay” if such IDSs are filed within 30 days of receipt of the information being submitted. The revisions also add language to clarify that information cited in a counterpart international (PCT) application is included in this exception, and to expressly provide that “communications” issued by a patent office (foreign, international or the USPTO) also are included.  

Thus, 37 CFR § 1.704(d) is amended to read:

§ 1.704 Reduction of period of adjustment of patent term.
* * * * *
(d)(1) A paper containing only an information disclosure statement in compliance with §§ 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 § 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 § 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.

Resolving Conflict Between Patent Term And The Duty Of Disclosure

The Federal Register Notice states that the changes “are intended to ensure compliance with the American Inventors Protection Act” (which created the patent term adjustment provisions of 35 USC § 156) in view of evolving case law. In that regard, the commentary discusses “recent decisions” by the Federal Circuit that “underscore the importance of making information cited and Office [A]ctions issued in related copending foreign and domestic applications of record,” citing Dayco, McKesson, and Larson. The Notice indicates that the patent term adjustment rules are being revised to permit “the diligent applicant to avoid patent term adjustment reduction for an IDS submission that results from a communication from the [USPTO.]” Thus, the USPTO is eliminating a patent term penalty for complying with the duty of disclosure, as long as the IDS is filed promptly.

Inconsistency With 37 CFR § 1.97

The rule governing the timing, certification and fee requirements for IDSs (37 CFR § 1.97) has not been revised to accommodate McKesson-type IDSs. Thus, applicants may not be able to submit a McKesson-type IDS after a first Office Action on the merits without paying a fee, or after a final Office Action or Notice of Allowance without filing a Request for Contniued Examination, unless they submit a statement under 37 CFR § 1.97(e) certifying:

That no item of information contained in the information disclosure statement was cited in a communication from a foreign patent office in a counterpart foreign application, and, to the knowledge of the person signing the certification after making reasonable inquiry, no item of information contained in the information disclosure statement was known to any individual designated in § 1.56(c) more than three months prior to the filing of the information disclosure statement.

While such a certification might always apply to an Office Action issued in a copending application, it might be difficult to confirm that any cited references were not previously known to (i) any of the inventors, (ii) any attorney or agent who prepared the application, or (iii) “[e]very other person who is substantively involved in the preparation or prosecution of the application and who is associated with the inventor, with the assignee or with anyone to whom there is an obligation to assign the application,” as set forth in 37 CFR § 1.56(c).

Thus, the USPTO IDS rules still present hurdles to complying with the duty of disclosure as it pertains to information cited in copending U.S. patent applications.

Avoiding The Real Problem

While this rule change is welcome under the current IDS rules, it does not address the real problem with McKesson-type IDSs—the wastefulness of citing back to the USPTO information the USPTO just cited in a different application. I hope this rule change is not a sign that the USPTO has given up on more direct ways to alleviate the burdens of this circular exercise.