02Aug 2021

The rules for the Patent Term Adjustment (PTA) provide for a term deduction for “applicant delay” before the examination commences — if the application is not “ready for examination” within eight months of its filing date (or national stage commencement date).

It is very important to be aware of this rule. 

The “Ready for Examination” Rule

Under the eight-month “ready for examination” rule, failure to provide an application in condition for examination within eight months from either (1) the date on which the application was filed; or (2) the date of commencement of the national stage in an international application, will result in a period of adjustment reduced by the number of days, if any, beginning on the day after the date that is eight months from either (1) the date on which the application was filed; or (2) the date of commencement of the national stage; and ending on the date the application is in condition for examination. 

This rule is based on the PTA rule that awards PTA if the USPTO takes more than 14 months to issue the first Office Action or Notice of Allowance.

The “Ready for Examination” Requirements

The “ready for examination” requirements provides that an application is in condition for examination when the application includes: a specification, including at least one claim and an abstract, drawings (if any), any English translation, a sequence listing in compliance with § 1.821 through § 1.825 (if applicable), the inventor’s oath or declaration or an application data sheet containing the information, the basic filing fee, the search fee, the examination fee, any certified copy of the previously filed application and any application size fee required by the Office.

An international application is in condition for examination when the application has entered the national stage, and includes a specification, including at least one claim and an abstract, drawings (if any), a sequence listing in compliance with § 1.821 through § 1.825 (if applicable), the inventor’s oath or declaration or an application data sheet, the search fee, the examination fee, and any application size fee required by the Office.

It should be underlined that a fully compliant Sequence Listing is one of the “ready for examination” requirements.

The “ready for examination” rule has a stopgap if an Office Action (or Notice of Allowance) is issued before any of the requirements are met:

If the USPTO does not notice any deficiencies before the first Office Action (or Notice of Allowance) is issued, the Applicant will not be charged a PTA deduction for correcting any deficiencies identified by the Examiner within the initial time period set in the Office Action.

But, if the USPTO (or Applicant) notices any deficiencies, correcting them after the eight-month window has passed could lead to a PTA deduction for “applicant delay.” Thus, it is important that all Sequence Listing rules are complied with.

Please contact me at silvia@salvadorilaw.com with questions or comments.

Silvia Salvadori, PhD

Silvia Salvadori, PhD

www.salvadorilaw.com

silvia@salvadorilaw.com