USPTO Implements Significant Patent Term Adjustment Changes Pursuant To The AIA Technical Corrections Act

On April 1, 2013, the USPTO published an "interim final rule" relating to Patent Term Adjustment (PTA), to implement changes to the PTA statute embodied in the AIA Technical Corrections Act. Although the rule changes have an immediate effective date, the USPTO will consider written comments submitted within 60 days, e.g., by May 31, 2013.

The AIA Technical Corrections Act

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)). These changes impact the calculation of "A delay" and "B delay," and are embodied in amendments to § 154(b)(1)(A) and (B). Another change permits the USPTO to provide its initial PTA determination "no later than the date of issuance of the patent," rather than with the Notice of Allowance. This change is reflected in amendments to § 154(b)(3). A more significant change impacts appeals of PTA determinations by amending § 154(b)(4).

(Please see this article for a more detailed discussion of the potential impact of these changes.)

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 has not yet followed the new procedures.

Changes Relating to U.S. National Stage Applications

37 CFR § 1.702 is amended by revising paragraph (a)(1) to provide that the fourteen month clock for issuing a first Office Action or Notice of Allowance in a U.S. national stage application begins to run against the USPTO on the date of commencement of the national stage.

§ 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; * * * * * (b) Three-year pendency. * * *

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. This change permits U.S. national stage applicants to take advantage of the new ability to delay submission of an executed Inventor Oath/Declaration without risking a loss of potential...