Patent Term Adjustment Outcomes and Information Disclosures
{1:55 minutes to read} When an applicant files an Information Disclosure Statement (IDS) after a response or Request for Continued Examination (RCE), the United States Patent & Trademark Office (USPTO) treats such a submission as a “supplemental paper.”
This triggers a Patent Term Adjustment (PTA) deduction for the applicant’s delay, citing 37 C.F.R. 1.704(c)(8)—even if such a submission is timely. According to USPTO rules, however, no PTA deduction should occur if the IDS is filed to submit references cited by the USPTO or by a foreign patent office within 30 days of the submission.37 CFR 1.704(d) provides, inter alia, that when a submission is accompanied by a statement asserting that each item of information was (1) first cited from a patent office or a counterpart office and (2) was not received more than 30 days prior to the filing of the IDS, then the PTA penalty should be avoided.
However, this is not always the case because the PTA calculation process often does not involve determining whether the IDS filed after an RCE includes a statement, and therefore the USPTO ultimately decreases the PTA of the patent, although improperly.
Even if a patent owner can request a correction by filing an “application for patent term adjustment,” this request requires a—sometimes burdensome—study of the history of the case to prepare a statement of the facts. Most importantly, it requires the payment of a fee. Another problem is that sometimes the USPTO does not follow through in issuing a certificate of correction with the corrected PTA and the burden remains on the patent owner to complete the PTA correction process.
Contact me with questions or comments at silvia@salvadorilaw.com.
Silvia Salvadori, PhD
(212) 897-1938