Last month, the United States Patent and Trade Office (USPTO) issued finalized rules regarding patent term adjustments (PTAs) affecting all patents granted on or after January 14, 2013. Here are some of the highlights:

The measuring date of the PTA period (both fourteen-month and three-year periods) is either the 35 U.S.C. § 111 filing date or the date of commencement of the national stage under 35 U.S.C. § 371 in an international application.

The Office must provide an initial PTA determination no later than the date of issuance of the patent, thus eliminating the requirement under the old rule that the Office provide an initial PTA determination with the notice of allowance.

Applicants have up to 7 months to request PTA reconsideration.  The two-month period for requesting reconsideration of the PTA indicated on the patent may be extended by an additional five months.

Judicial review of a PTA determination made by the Director may be sought within 180 days after the date of the Director’s decision on the applicant’s request for reconsideration.

If the PTA redetermination results in a different amount of PTA than requested by the applicant or than appears on the patent (higher or lower), the Office will issue a redetermination of PTA. The applicant has two months (extendable) from the date of the redetermination of PTA to file a renewed request for reconsideration of the PTA (no additional fee required).

The new rules interpret the recent Novartis AG v. Lee ,740 F. 3d 593 (Fed. Cir. 2014) decision as holding that the time consumed by continued examination does not include the time after a notice of allowance is mailed. However, the Office has not yet updated the Patent Application Locating and Monitoring System (PALM) to reflect this change.  Therefore, applicants should monitor PTA calculations provided by the Office to determine if the patent is entitled to additional PTA under Novartis and request reconsideration as necessary.

If maximizing PTA is desired, Applicants should consider the following tips:
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 1.    Minimize extensions of time - Any reply to the Office filed later than three months will be considered Applicant Delay.
 2.    If securing the Application’s issuance quickly is less valuable than maximizing patent term, always respond by, but not before, the 3-month deadline for response.  Because filing before the three-month date could reduce PTA if prosecution is longer than 3 years.
 3.    Unless necessary, avoid filing any paper with the Office when the Application is in the Examiner’s hands. Any paper, regardless of its nature, could be considered a supplemental paper which counts as Applicant Delay.
 4.    Unless necessary, avoid filing any paper after a Notice of Allowance has been issued. Such papers could be considered as supplemental papers which count as Applicant Delay.
 5.    Take advantage of the new programs, such as, After Final Consideration Pilot 2.0 and Quick Path Information Disclosure Statement (QPIDS), instead of filing a Request for Continued Examination (RCE) whenever possible. 
 6.    Always double check PTA calculations provided by the Office.  Keep in mind that the Office uses an automated program to provide these calculations and errors are common and correctable.

This article was written by Sharla Flohr, a Patent Agent in the firm’s office in Frederick, Maryland and Brett Stauffer, Esquire, a member of the Intellectual Property group at Miles & Stockbridge P.C. in the firm's office in Tysons Corner, Virginia.

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