Patent Term Adjustment Determination

[Editor Note:

37 CFR

1.705(a)

below includes amendments applicable only to patents

granted on or after January 14, 2013. See

37 CFR 1.705(a) (pre‑2013‑04‑01)

with respect to patents granted prior to January 14, 2013.]

37 CFR 1.705  Patent term adjustment determination.

(a) The patent will include notification of any patent term

adjustment under

35 U.S.C. 154(b)

.

*****

The AIA Technical Corrections Act was enacted on January 14, 2013. See

Public Law 112-274, 126 Stat. 2456 (2013). Section 1(h) of the AIA Technical Corrections

Act revises the patent term adjustment provisions of

35 U.S.C. 154(b)

and is effective for

any patent granted on or after January 14, 2013. Section 1(h)(2) of the AIA Technical

Corrections Act amended

35 U.S.C. 154(b)(3)(B)(i)

to change “shall transmit a notice of that

[patent term adjustment] determination with the written notice of allowance of the

application under

section

151

” to “shall transmit a notice of that [patent term adjustment]

determination no later than the date of issuance of the patent.” See 126 Stat. at 2457.

This change eliminates the need for the Office to provide an initial patent term adjustment

determination with the notice of allowance and before the patent term adjustment under

35 U.S.C.

154(b)(1)(A)(iv)

and

154(b)(1)(B)

is known. See

Changes to Implement Patent Term Adjustment Under Twenty-Year Patent

Term,

65 FR 56365, 56374 (September 18, 2000) (explaining that a two-part

process is required because the Office is obliged under

35 U.S.C. 154(b)(3)

to provide a patent

term adjustment determination before the issue date, and thus the patent term adjustment,

is known).

37 CFR 1.705(a)

has been amended to reflect that the Office will

provide notification of the patent term adjustment on the patent. The Office will no longer

provide a notification of the patent term adjustment with the mailing of the notice of

allowance for any patent granted on or after January 14, 2013.

The Office has revised

37 CFR 1.705

to implement the statutory

changes to

35 U.S.C

is known).

37 CFR 1.705(a)

has been amended to reflect that the Office will

provide notification of the patent term adjustment on the patent. The Office will no longer

provide a notification of the patent term adjustment with the mailing of the notice of

allowance for any patent granted on or after January 14, 2013.

The Office has revised

37 CFR 1.705

to implement the statutory

changes to

35 U.S.C.

154(b)(3)(B)(i)

. The amendment to the statute provides that the

Office shall transmit a determination of the patent term adjustment no later than the date

of issuance of the patent. Accordingly, the Office is no longer required to transmit a

determination at the time of the mailing of the notice of allowance which occurs before all

of the guarantees of the statute could be calculated. The Office, however, will continue to

provide a preliminary patent term adjustment calculation with the issue notification that

is mailed to applicant prior to issuance of the patent, but the patent term adjustment

indicated on the patent is the “official” notification of the Office’s patent term

adjustment determination under

35 U.S.C. 154(b)

. Accordingly, patentee

should wait until the grant of the patent to determine whether or not a request for

reconsideration of the patent term adjustment indicated on the patent is warranted. See

MPEP §

2734

for a discussion of the requirements of any such

request.

If a registered practitioner receives a patent term adjustment indicated

on the front of the patent that is longer than expected, the practitioner may disclose the

error to the Office in a letter in compliance with the practitioner’s duty of candor and

good faith in practice before the Office. The Office will treat letters submitted by

patentees stating that Office’s determination of patent term adjustment indicated on the

patent is greater than what the applicant or patentee believes is appropriate by placing

these letters in the file of the patent without comment

o the Office in a letter in compliance with the practitioner’s duty of candor and

good faith in practice before the Office. The Office will treat letters submitted by

patentees stating that Office’s determination of patent term adjustment indicated on the

patent is greater than what the applicant or patentee believes is appropriate by placing

these letters in the file of the patent without comment. See

Treatment of Letters

Stating That the USPTO’s Patent Term Adjustment Determination Is Greater Than What the

Applicant or Patentee Believes Is Appropriate

, 75 FR 42079 (July 20, 2010),

1357 OG 262 (August 24, 2010). The Office will not review these letters or issue

certificates of correction under either

35 U.S.C. 254

or

255

on the basis of

these letters. In addition, the Office will not grant a request for a certificate of

correction under either

35 U.S.C. 254

or

255

to revise the patent term

adjustment indicated in a patent, unless the certificate of correction is issued to revise

the patent for consistency with (1) the patent term adjustment determined via a decision on

the request for reconsideration under

37 CFR 1.705

; or (2) the total patent

term adjustment indicated on the USPTO patent electronic filing system screen that displays

the patent term adjustment calculation for the patent. If patentee submits a request for a

certificate of correction under either

35 U.S.C. 254

or

255

to revise the

patent term adjustment indicated in a patent that also includes changes in the patent for

which a certificate of correction would be appropriate, the request for a certificate of

correction will not be granted unless the patentee submits a new request for a certificate

of correction that does not also attempt to revise the patent term adjustment indicated in

the patent.

If patentee wants the Office to reconsider its patent term

adjustment determination, the patentee must use the procedures set forth in

37 CFR

1.705(b)

for requesting reconsideration of a patent term adjustment

determination

ot be granted unless the patentee submits a new request for a certificate

of correction that does not also attempt to revise the patent term adjustment indicated in

the patent.

If patentee wants the Office to reconsider its patent term

adjustment determination, the patentee must use the procedures set forth in

37 CFR

1.705(b)

for requesting reconsideration of a patent term adjustment

determination. Specifically, the procedures set forth in

37 CFR

1.705(b)

must be used whether the USPTO’s patent term adjustment

determination is greater than or less than the adjustment that the applicant or patentee

believes to be appropriate.

A patentee may also file a terminal disclaimer at any time

disclaiming any period considered in excess of the appropriate patent term adjustment. See

35 U.S.C.

253

and

37 CFR 1.321

.

Note that the Office does not require patentee to file either

a request for reconsideration under

37 CFR 1.705(b)

or a terminal

disclaimer when the patent term adjustment indicated on the patent is greater than what the

patentee believes is appropriate. As discussed above, the patentee or the appointed

registered practitioner may disclose the alleged error to the Office in a letter in

compliance with the practitioner’s duty of candor and good faith.

Information as to how the patent term adjustment calculation has been made

will be available through the USPTO patent electronic filing system at

www.uspto.gov/PatentCenter

.

Applicants may routinely use the USPTO patent electronic filing system to check the

accuracy of the data entered in the OPSG system for their applications (i.e., the type of

the paper and date of receipt in the Office) throughout prosecution. If any errors are

detected, they should be brought to the Office’s attention (e.g., by contacting the

examiner or the Technology Center’s customer service representative) as soon as possible to

ensure that they are corrected before allowance of the application and the determination of

the patent term adjustment

(i.e., the type of

the paper and date of receipt in the Office) throughout prosecution. If any errors are

detected, they should be brought to the Office’s attention (e.g., by contacting the

examiner or the Technology Center’s customer service representative) as soon as possible to

ensure that they are corrected before allowance of the application and the determination of

the patent term adjustment. In checking Office records, applicants should keep in mind that

the date that should be recorded in the Office computer records is the date of receipt of

the paper, not the date that it was mailed under

37 CFR 1.8

. In addition, if an original

paper is misplaced by the Office and a duplicate is filed with a post card receipt showing

the date of receipt of the original paper, the date shown on the post-card receipt for the

original paper is the date that should be shown in the Office computer records. If Priority

Mail Express

®

service was used, then the date shown as the “date

accepted” on the Priority Mail Express

®

label will be entered

into the Office computer records. Otherwise, the date reflected in the Office computer

records for a duplicate copy of correspondence will normally be the date that the duplicate

was received in the Office.

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