USPTO Revises Patent Term Adjustment Rule | Practical Law

USPTO Revises Patent Term Adjustment Rule | Practical Law

The USPTO has released a final rule revising the patent term adjustment reduction provisions of the patent rules of practice. Specifically, the rule excludes information disclosure statements resulting from the citation of information in a counterpart application that are promptly filed with the USPTO.

USPTO Revises Patent Term Adjustment Rule

Practical Law Legal Update 9-515-6888 (Approx. 3 pages)

USPTO Revises Patent Term Adjustment Rule

by PLC Intellectual Property & Technology
Published on 07 Dec 2011 • USA (National/Federal)
The USPTO has released a final rule revising the patent term adjustment reduction provisions of the patent rules of practice. Specifically, the rule excludes information disclosure statements resulting from the citation of information in a counterpart application that are promptly filed with the USPTO.
On December 1, 2011, the USPTO published a final rule in the Federal Register revising the patent term adjustment reduction provisions of the rules of practice. The patent term adjustment provisions provide for a reduction in any patent term adjustment if the applicant failed to engage in reasonable efforts to conclude prosecution of the application. Specifically, under the rule, the filing of an information disclosure statement (IDS) that includes the citation of information from another application and is promptly filed with the USPTO is not a failure to engage in reasonable efforts to conclude prosecution. The previous rule only provided relief if the IDS listed information cited in a foreign patent office communication.
Under the final rule, there is no reduction of patent term adjustment if the applicant submits an IDS that either:
  • Lists a reference, if the reference was cited by a foreign patent office or the USPTO in another application not more than 30 days before the filing of the IDS.
  • Provides a copy of a communication from a foreign patent office or the USPTO (for example, an office action), if the communication was issued not more than 30 days before the filing of the IDS.
The rule change, which took effect on December 1, 2011, means that applicants can avoid the patent term adjustment reduction for IDS submissions resulting from a communication from foreign patent offices and the USPTO.