In an August 16, 2012 Federal Register Notice, the USPTO announced final rules that change the way that Patent Term Adjustment (PTA) will be calculated after a Notice of Appeal has been filed. The final rules generally follow the rules that were proposed in December of 2011 and treat “appellate review” for PTA purposes as commencing when jurisdiction over a patent application passes to the Board. According to the Federal Register Notice, new PTA deductions will apply to patent applications in which a Notice of Appeal is filed on or after September 17, 2012, and the new PTA calculations will be applied to patent applications in which a Notice of Allowance is issued on or after September 17, 2012. Other patentees may be able to benefit from the rule changes if they can file timely requests for reconsideration of the PTA awarded to their patents under the current rules. Continue reading this entry
Deca-Medics, Inc. has filed a complaint in the U.S. District Court for the Eastern District of Virginia challenging a Patent Term Adjustment (PTA) award based on how its patent application was processed after a Notice of Appeal was filed. While I have written about the problem with the USPTO’s interpretation of 35 USC § 154(b)(1)(B)(ii) and the USPTO is considering changing the rule that interprets that portion of the PTA statute, Deca-Medics takes a different approach in its complaint.Continue reading this entry
In a Federal Register Notice issued December 28, 2011, the USPTO announced that it is considering changes to the Patent Term Adjustment (PTA) rules relating to “appellate review by the Board.” I have written previously about the post-Notice of Appeal gap left by the current PTA rules, and believe that these new proposed changes would go far to close that gap, although they will not benefit all applications on appeal. The USPTO will accept written comments on these proposed rule changes through January 27, 2012. Continue reading this entry
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.) Continue reading this entry
The USPTO has been touting recent data indicating that it continues to make progress in reducing the backlog of new patent applications awaiting examination. At the same time, the number of applications awaiting examination after a Requests for Continued Examination (RCE) has ballooned. I am frustrated by the USPTO’s attitude towards RCEs, and its willingness to relegate them to examination purgatory. Permitting applications to languish midstream in prosecution is inefficient, and drags down innovation, investment and commercialization just as much as delaying examination of new applications.
On April 6, 2011, the USPTO announced proposed changes to the Patent Term Adjustment (PTA) rules that would award PTA for USPTO delay when an examiner reopens prosecution after a notice of appeal has been filed. While I have written previously about the gap left by the USPTO’s current PTA rules, I am afraid that the new proposal raises more problems than it solves.
Yet another complaint has been filed against the USPTO challenging Patent Term Adjustment. The issue raised in Oncolytics Biotech Inc. v. Kappos is whether a deficient Office Action that was subsequently vacated by the USPTO nevertheless satisfied the USPTO’s obligation to take action within four months of the applicant’s previous reply.