The AIA Technical Corrections Act made several changes to the Patent Term Adjustment (PTA) statute, including one that could mean additional Patent Term Adjustment for U.S. national stage applications. Although the law was enacted on January 14, 2013, with a default effective date of the same date, the USPTO did not publish its implementing regulations until April 1, 2013, and does not appear to have reconfigured its PTA calculator to reflect the current law and rules. Thus, patent holders with patents granted on or after January 14, 2013 may want to review the PTA calculations to determine whether additional PTA may be available. It is my understanding that the final deadline for requesting additional PTA under these statutory and regulatory changes for the earliest eligible patents expires August 15, 2013 (seven months from Tuesday, January 15, 2013).
Additional PTA For U.S. National Stage Applications
As I explained previously, the AIA Technical Corrections Act, which stemmed from HR 6621, made several substantive changes to the PTA statute. One set of changes impacts PTA for U.S. national stage applications, by treating “commencement of the national stage” as equivalent to the filing date of a direct U.S. application (an application filed under 35 USC § 111(a)). This change impacts the calculation of “A delay,” and in particular, the start date for the fourteen month clock that runs against the USPTO to issue the first Office Action or Notice of Allowance.
This change is reflected in revised 37 CFR §§ 1.702 and 1.703:
§ 1.702 Grounds for adjustment of patent term due to examination delay under the Patent Term Guarantee Act of 1999 (original applications, other than designs, filed on or after May 29, 2000).
(a) * * *
(1) Mail at least one of a notification under 35 U.S.C. 132 or a notice of allowance under 35 U.S.C. 151 not later than fourteen months after the date on which the application was filed under 35 U.S.C. 111(a) or the date the national stage commenced under 35 U.S.C. 371(b) or (f) in an international application;
* * * * *
§ 1.703 Period of adjustment of patent term due to examination delay.
(a) * * *
(1) The number of days, if any, in the period beginning on the day after the date that is fourteen months after the date on which the application was filed under 35 U.S.C. 111(a) or the date the national stage commenced under 35 U.S.C. 371(b) or (f) in an international application and ending on the date of mailing of either an action under 35 U.S.C. 132, or a notice of allowance under 35 U.S.C. 151, whichever occurs first;* * * * *
Under the original statute and previous rule, this fourteen month clock did not start running until “the date on which an international application fulfilled the requirements of section 371,” including the submission of an executed Inventor Oath/Declaration. Because an executed Inventor Oath/Declaration might not be submitted until many months after the commencement date, this change in the “A delay” calculation can mean significant amounts of additional PTA for U.S. national stage applications. Indeed, some patents that I have seen may be entitled to hundreds of days of additional PTA, because the PTO took so long to issue a Notice of Missing Requirements, which in turn postponed the filing of the executed Inventor Oath/Declaration, and fulfillment of all § 371 requirements.
Effective Date
By the terms of the AIA Technical Corrections Act, these statutory changes took effect on January 14, 2013 (the date of enactment) and apply to “proceedings commenced on or after” that date. According to the USPTO, a PTA “proceeding” commences when the USPTO provides its PTA determination when a patent is granted. Thus, the USPTO has determined that most of these rule changes apply to patents granted on or after January 14, 2013, even though the USPTO does not yet seem to be following the new provisions.
Obtaining Additional PTA
The AIA Technical Corrections Act changed the time by which the USPTO must provide its initial PTA determination from the Notice of Allowance to “the date of issuance of the patent.” The USPTO took this opportunity to make the time period for filing a request for reconsideration extendable. Both of these changes are reflected in 37 CFR § 1.705:
§ 1.705 Patent term adjustment determination.
(a) The patent will include notification of any patent term adjustment under 35 U.S.C. 154(b).
(b) Any request for reconsideration of the patent term adjustment indicated on the patent must be by way of an application for patent term adjustment filed no later than two months from the date the patent was granted. This two-month time period may be extended under the provisions of § 1.136(a). An application for patent term adjustment under this section must be accompanied by:
* * * * *
Thus, under the AIA Technical Corrections Act, the USPTO is no longer required to provide its initial PTA determination with the Notice of Allowance (although it still is doing so), but rather only when the patent grants (practically, with the Issue Notification). Further, while the rules retain the previous two month post-grant period for challenging a PTA award, the rules now make this time period extendable as a matter of right under 37 CFR § 1.136(a) for up to five additional months.
Act Soon To Obtain Additional Patent Term Adjustment For U.S. National Stage Applications
U.S. patents usually are issued on Tuesdays, and the first Tuesday after January 14, 2013 was January 15, 2013. This suggests that the final deadline for requesting additional PTA under these statutory and regulatory changes for the earliest eligible patents expires August 15, 2013 (seven months from Tuesday, January 15, 2013, which would require a five month extension of time).
