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USPTO Proposes Revision of AIPA Patent Term Adjustment Provisions

  • 12.28.11
  • Sterne, Kessler, Goldstein & Fox

The USPTO has published a notice of proposed rulemaking in which it proposes to adjust how patent term adjustment (PTA) is calculated with regard to BPAI review. Click here for more information.

The USPTO is proposing to change the rules of practice to indicate that the period of appellate review under the patent term adjustment provisions of the AIPA begins when jurisdiction over the application passes to the BPAI rather than the date on which a notice of appeal to the BPAI is filed. The Office recently published the final rule (eff. date Jan 23, 2012) concerning practice before the BPAI in ex parte appeals and defined that jurisdiction of the appeal passes to the BPAI at the earlier of the filing of the reply brief or upon the expiration of the time in which to file a reply brief. See Rules Of Practice Before the Board of Patent Appeals and Interferences in Ex Parte Appeals 76 FR 72270, 72273 (November 22, 2011).

Accordingly, for purposes of calculating patent term adjustment based upon appellate review, the impact of the rule change would be to reduce the amount of patent term adjustment awarded for successful appeal under  35 USC 154(b)(1)(C)(iii). However, the impact may be offset by potentially increasing the amount of patent term adjustment awarded for failing to issue the patent within three years of the actual filing date in the United States under 35 USC 154(b)(1)(B). The patent term adjustment award for the three year provision may increase when the examiner reopens prosecution after a notice of appeal is filed (e.g., following a pre-appeal conference or an appeal conference) and the patent issues thereafter, because the period of time between the filing of the notice of appeal and the examiner's reopening of prosecution would no longer be deducted under 35 USC 154(b)(1)(B)(ii).
Written comments must be received on or before January 27, 2012. No public hearing will be held.

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