83 FR 55102 - Interim Procedure for Requesting Recalculation of the Patent Term Adjustment With Respect to Information Disclosure Statements Accompanied by a Safe Harbor Statement
DEPARTMENT OF COMMERCE
Patent and Trademark Office Federal Register Volume 83, Issue 213 (November 2, 2018)
Patent and Trademark Office
Federal Register Volume 83, Issue 213 (November 2, 2018)
| Page Range | 55102-55104 | |
| FR Document | 2018-24004 |
[Federal Register Volume 83, Number 213 (Friday, November 2, 2018)] [Rules and Regulations] [Pages 55102-55104] From the Federal Register Online [www.thefederalregister.org] [FR Doc No: 2018-24004] ======================================================================= ----------------------------------------------------------------------- DEPARTMENT OF COMMERCE Patent and Trademark Office 37 CFR Part 1 [Docket No. PTO-P-2018-0030] Interim Procedure for Requesting Recalculation of the Patent Term Adjustment With Respect to Information Disclosure Statements Accompanied by a Safe Harbor Statement AGENCY: United States Patent and Trademark Office, Commerce. ACTION: Notification of interim procedure. ----------------------------------------------------------------------- SUMMARY: The patent laws provide for patent term adjustment in the event that the issuance of the patent is delayed due to certain enumerated administrative delays. The USPTO makes the patent term adjustment determination included on the patent by a computer program that uses the information recorded in the USPTO's Patent Application Locating and Monitoring (PALM) system. The USPTO will be modifying [[Page 55103]] its computer program that calculates patent term adjustment to recognize when an applicant files an information disclosure statement concurrently with a safe harbor statement. In order to assist both applicants and the USPTO, the USPTO is providing a new form for applicants to use when making a safe harbor statement. The USPTO is also establishing an interim procedure and providing a form for patentees to request a recalculation of their patent term adjustment determination for alleged errors due to the USPTO's failure to recognize that an information disclosure statement was accompanied by a safe harbor statement. DATES: Effective Date: This procedure is effective November 2, 2018. FOR FURTHER INFORMATION CONTACT: Kery A. Fries, Senior Legal Advisor, Office of Patent Legal Administration, Office of Deputy Commissioner for Patent Examination Policy, by telephone at (571) 272-7757, or by mail addressed to: Mail Stop Comments-Patents, Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450. SUPPLEMENTARY INFORMATION: The American Inventors Protection Act of 1999 or AIPA (Pub. L. 106-113, 113 Stat. 1501, 1501A-552 through 1501A- 591 (1999)) amended 35 U.S.C. 154(b) to provide for patent term adjustment in the event that the issuance of the patent is delayed due to one or more of the enumerated administrative delays listed in 35 U.S.C. 154(b)(1). Under the patent term adjustment provisions of the AIPA, a patentee generally is entitled to patent term adjustment for the following reasons: (1) If the USPTO fails to take certain actions during the examination and issue process within specified time frames (35 U.S.C. 154(b)(1)(A)); (2) if the USPTO fails to issue a patent within three years of the actual filing date of the application (35 U.S.C. 154(b)(1)(B)); and (3) for delays due to interference or derivation proceedings, secrecy orders, or successful appellate review (35 U.S.C. 154(b)(1)(C)). See 35 U.S.C. 154(b)(1). The AIPA, however, sets forth a number of conditions and limitations on any patent term adjustment accrued under 35 U.S.C. 154(b)(1). Specifically, 35 U.S.C. 154(b)(2)(C) provides, in part, that ``[t]he period of adjustment of the term of a patent under [35 U.S.C. 154(b)(1)] shall be reduced by a period equal to the period of time during which the applicant failed to engage in reasonable efforts to conclude prosecution of the application'' and that ``[t]he Director shall prescribe regulations establishing the circumstances that constitute a failure of an applicant to engage in reasonable efforts to conclude processing or examination of an application.'' 35 U.S.C. 154(b)(2)(C)(i) and (iii). The USPTO implemented the patent term adjustment provisions of the AIPA in a final rule published in September of 2000. See Changes to Implement Patent Term Adjustment Under Twenty-Year Patent Term, 65 FR 56365 (Sept. 18, 2000) (final rule). The ``regulations establishing the circumstances that constitute a failure of an applicant to engage in reasonable efforts to conclude processing or examination of an application'' (35 U.S.C. 154(b)(2)(C)(iii)) are set forth in 37 CFR 1.704. 37 CFR 1.704 provides for a reduction of any patent term adjustment if an information disclosure statement (1) is filed after a notice of allowance or after an initial reply by the applicant; or (2) is filed as a preliminary paper or paper after a decision by the Board or Federal court that requires the USPTO to issue a supplemental Office action. See 37 CFR 1.704(c)(6), 1.704(c)(8), 1.704(c)(9), and 1.704(c)(10). 37 CFR 1.704 also provides for a reduction of any patent term adjustment if a request for continued examination is filed after the mailing of a notice of allowance. See 37 CFR 1.704(c)(12). 37 CFR 1.704(d), however, provides that a paper containing only an information disclosure statement in compliance with 37 CFR 1.97 and 1.98 will not be considered a failure to engage in reasonable efforts to conclude prosecution (processing or examination) of the application under 37 CFR 1.704(c)(6), (c)(8), (c)(9), or (c)(10) if the information disclosure statement is accompanied by one of the statements set forth in 37 CFR 1.704(d)(1)(i) or (d)(1)(ii) (a ``safe harbor statement''). Similarly, 37 CFR 1.704(d) also provides that a request for continued examination in compliance with 37 CFR 1.114 containing only an information disclosure statement in compliance with 37 CFR 1.97 and 1.98 will not be considered a failure to engage in reasonable efforts to conclude prosecution (processing or examination) of the application under 37 CFR 1.704(c)(12) if the information disclosure statement included in request for continued examination is accompanied by a safe harbor statement. Thus, unless the information disclosure statement is accompanied by a safe harbor statement in compliance with 37 CFR 1.704(d), 37 CFR 1.704 provides for a reduction of any patent term adjustment if an information disclosure statement (1) is filed after a notice of allowance or after an initial reply by the applicant; or (2) is filed as a preliminary paper or paper after a decision by the Board or Federal court that requires the USPTO to issue a supplemental Office action. See 37 CFR 1.704(c)(6), 1.704(c)(8), 1.704(c)(9), and (c)(10). Similarly, unless the submission for a request for continued examination after a notice of allowance has been mailed is solely an information disclosure statement and it is accompanied by a safe harbor statement in compliance with 37 CFR 1.704(d), 37 CFR 1.704 provides for a reduction of any patent term adjustment if a request for continued examination is filed after the mailing of a notice of allowance. See 37 CFR 1.704(c)(12). A proper safe harbor statement under 37 CFR 1.704(d) must state that each item of information contained in the information disclosure statement: (1) Was first cited in any communication from a patent office in a counterpart foreign or international application or from the USPTO, and this communication was not received by any individual designated in 37 CFR 1.56(c) more than thirty days prior to the filing of the information disclosure statement (37 CFR 1.704(d)(1)(i)); or (2) is a communication that was issued by a patent office in a counterpart foreign or international application or by the USPTO, and this communication was not received by any individual designated in 37 CFR 1.56(c) more than thirty days prior to the filing of the information disclosure statement (37 CFR 1.704(d)(1)(ii)). The USPTO performs an automated calculation of how much patent term adjustment, if any, is due to a patentee using the information recorded in the USPTO's PALM system, except when a patentee requests reconsideration pursuant to 37 CFR 1.705. See Changes to Implement Patent Term Adjustment under Twenty-Year Patent Term, 65 FR 56365, 56370, 56380-81 (Sept. 18, 2000) (final rule). Currently, the computer program used for this automated calculation cannot determine whether a compliant safe harbor statement under 37 CFR 1.704(d) accompanied an information disclosure statement. Thus, this computer program calculates the patent term adjustment total as if no compliant safe harbor statement under 37 CFR 1.704(d) was made. As the USPTO develops its next generation information technology (IT) systems that will address this problem, the USPTO is introducing an interim procedure for patentees to request a patent term adjustment recalculation when a safe harbor statement pursuant to 37 CFR 1.704(d) was filed, and a new form for applicants to use when making a safe harbor statement. [[Page 55104]] Interim Procedure for Requesting Recalculation: The USPTO has created the following interim procedure by which a patentee may request recalculation of patent term adjustment where the sole reason for contesting the patent term adjustment determination is the USPTO's failure to recognize a timely filed safe harbor statement accompanying an information disclosure statement. The USPTO's interim procedure waives the fee under 37 CFR 1.705(b)(1) as set forth in 37 CFR 1.18(e) to file the request for reconsideration. The interim procedure will remain in effect until the USPTO can update the patent term adjustment computer program and provide notice to the public that the computer program has been updated. Under the interim procedure, recalculation of patent term adjustment is requested by submitting a form in lieu of the request and fee set forth in 37 CFR 1.705(b). This form, ``Request for Reconsideration of Patent Term Adjustment in View of Safe Harbor Statement Under 37 CFR 1.704(d)'' (PTO/SB/134) will be available on the USPTO website at https://www.uspto.gov/patent/patents-forms. The Office of Management and Budget (OMB) has determined that, under 5 CFR 1320.3(h), Form PTO/SB/134 does not collect ``information'' within the meaning of the Paperwork Reduction Act of 1995. The form must be filed within the time period set forth in 37 CFR 1.705(b), and the USPTO will not grant any request for recalculation of the patent term adjustment that is not timely filed. The time period set forth set forth in 37 CFR 1.705(b) may be extended under the provisions of 37 CFR 1.136(a). If the request for recalculation is not based solely on the USPTO's failure to recognize a timely filed, compliant safe harbor statement under 37 CFR 1.704(d), the patentee must file a request for reconsideration of the patent term adjustment indicated on the patent under 37 CFR 1.705(b) with the fee set forth in 37 CFR 1.18(e). If a patentee files both form PTO/SB/134 and a request under 37 CFR 1.705(b) prior to the USPTO's recalculation of patent term adjustment, the USPTO will treat the papers as a request for reconsideration of the patent term adjustment indicated on the patent under 37 CFR 1.705(b) and charge the fee set forth in 37 CFR 1.18(e). While the USPTO's interim procedure waives the fee under 37 CFR 1.705(b)(1) as set forth in 37 CFR 1.18(e) to file the PTO/SB/134, it does not waive any extensions of time fees due under 37 CFR 1.705(b) and 1.136. In addition, it is noted that the fee specified in 37 CFR 1.18(e) is required for a request for reconsideration under 37 CFR 1.705, and the USPTO may only refund fees paid by mistake or in excess of that required (35 U.S.C. 42(d)). Thus, the interim procedure set forth in this document is not a basis for requesting a refund of the fee specified in 37 CFR 1.18(e) for any request for reconsideration under 37 CFR 1.705, including any previously filed request that was solely based on the USPTO's error in assessing a reduction to the amount of patent term adjustment under 37 CFR 1.704(c)(6), (c)(8), (c)(9), (c)(10), or (c)(12) for the submission of an information disclosure statement that was accompanied by the statement under 37 CFR 1.704(d). The Office of Petitions will manually review the request for recalculation of patent term adjustment filed under the interim procedure. Specifically, the Office of Petitions will review the accuracy of the patent term adjustment calculation in view of regulations 37 CFR 1.702 through 1.704 as part of the recalculation. Upon review by the Office of Petitions, the patentee will be given one opportunity to respond to the recalculation. The response must be filed by patentee within two months of the mail date of the recalculation. No extensions of time will be granted. If patentee responds to the recalculation by requesting changes to the recalculation not related to the safe harbor statement, patentee must comply with the requirements of 37 CFR 1.705(b)(1) and (2). If patentee fails to respond to the recalculation and the USPTO's determination of the amount of recalculated patent term adjustment is different from that printed on the front of the patent, the USPTO will sua sponte issue a certificate of correction that reflects the recalculated patent term adjustment. If patentee files a timely response after the USPTO's recalculation and the USPTO maintains its recalculation, the USPTO will issue its decision confirming its recalculation pursuant to 35 U.S.C. 154(b)(3)(B)(ii), and this decision is the Director's decision under 35 U.S.C. 154(b)(4). The USPTO's initial recalculation of patent term adjustment under the procedure outlined in this document is not the Director's decision under 35 U.S.C. 154(b)(4). New Form for Applicants to Use when Making a Statement Pursuant to 37 CFR 1.704(d): In order to aid in recognizing when a compliant safe harbor statement under 37 CFR 1.704(d) has been filed with an information disclosure statement, the USPTO has created a form titled, ``Patent Term Adjustment Statement under 37 CFR 1.704(d)'' (PTO/SB/133) for applicant's use when submitting the information disclosure statement. The USPTO is planning to update the patent term adjustment computer program to recognize when form PTO/SB/133 has been filed. Once updated, the patent term adjustment computer program will perform the patent term calculation by taking into account that applicant filed a compliant safe harbor statement under 37 CFR 1.704(d) when it performs the patent term adjustment calculation. When applicant provides the safe harbor statement with the information disclosure statement, use of form PTO/SB/133 is not required, but it is very strongly recommended as the failure to use this form may result in the patent term adjustment calculation not taking into account that such a statement was filed. The form will be available on the USPTO's website at https://www.uspto.gov/patent/patents-forms. The Office of Management and Budget (OMB) has determined that, under 5 CFR 1320.3(h), form PTO/SB/133 does not collect ``information'' within the meaning of the Paperwork Reduction Act of 1995. Applicants who submit form PTO/SB/133 with an information disclosure statement will be considered to be making a proper safe harbor statement, and the filing will be reflected in the file record. Applicants may not alter the pre-printed text of form PTO/SB/133. The presentation to the USPTO (whether by signing, filing, submitting, or later advocating) of any USPTO form with text identifying the form as a USPTO-generated form by a party, whether a practitioner or non- practitioner, constitutes a certification under 37 CFR 11.18(b) that the existing text and any certifications or statements on the form have not been altered other than permitted by EFS-Web customization. See 37 CFR 1.4(d)(3). As a result of using the form, the USPTO's computer program, once updated, will take the safe harbor statement into account when patent term adjustment is calculated, thereby eliminating the need to file a request for reconsideration of patent term adjustment under 37 CFR 1.705(b) for this matter. Dated: October 30, 2018. Andrei Iancu, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office. [FR Doc. 2018-24004 Filed 11-1-18; 8:45 am] BILLING CODE 3510-16-P
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compliance, please contact the person $100,000,000 (adjusted for inflation) or surface to bottom, between river mile
listed in the FOR FURTHER INFORMATION more in any one year. Though this rule 142 and 143.
CONTACT section. will not result in such an expenditure, (b) Regulations. In accordance with
Small businesses may send comments we do discuss the effects of this rule the general regulations in 33 CFR part
on the actions of Federal employees elsewhere in this preamble. 165, subpart C, no person may enter or
who enforce, or otherwise determine remain in the safety zone created in this
compliance with, Federal regulations to F. Environment
section or bring, cause to be brought, or
the Small Business and Agriculture We have analyzed this rule under allow to remain in the safety zone
Regulatory Enforcement Ombudsman Department of Homeland Security created in this section any vehicle,
and the Regional Small Business Directive 023–01 and Commandant vessel, or object unless authorized by
Regulatory Fairness Boards. The Instruction M16475.1D, which guide the the Captain of the Port or his designated
Ombudsman evaluates these actions Coast Guard in complying with the representative.
annually and rates each agency’s National Environmental Policy Act of (2) To seek permission to enter,
responsiveness to small business. If you 1969 (42 U.S.C. 4321–4370f), and have contact Derrick Barge DB 125 or tug
wish to comment on actions by determined that this action is one of a RUTH via VHF–FM marine channel 14.
employees of the Coast Guard, call 1– category of actions that do not Those in the safety zone must comply
888–REG–FAIR (1–888–734–3247). The individually or cumulatively have a with all lawful orders or directions
Coast Guard will not retaliate against significant effect on the human given to them by the COTP or the
small entities that question or complain environment. This rule involves a safety COTP’s designated representative.
about this rule or any policy or action zone lasting less than 30 days that will (c) Enforcement period. This safety
of the Coast Guard. prohibit vessel traffic to transit between zone is in effect from 7 a.m. until 5 p.m.
Columbia River Mile 142 and 143 on October 27, 2018 through November
C. Collection of Information
during diving and vessel recovery 16, 2018. It will be subject to
This rule will not call for a new operations. It is categorically excluded enforcement this entire period unless
collection of information under the from further review under paragraph the Captain of the Port, Columbia River
Paperwork Reduction Act of 1995 (44 L60(a) of Appendix A, Table 1 of DHS (COTP) determines it is no longer
U.S.C. 3501–3520). Instruction Manual 023–01–001–01, needed. The Coast Guard will inform
D. Federalism and Indian Tribal Rev. 01. A Record of Environmental mariners of any change to this period of
Governments Consideration supporting this enforcement via Broadcast Notice to
determination is available in the docket Mariners.
A rule has implications for federalism where indicated under ADDRESSES.
under Executive Order 13132, Dated: October 26, 2018.
Federalism, if it has a substantial direct G. Protest Activities D.F. Berliner,
effect on the States, on the relationship The Coast Guard respects the First Captain, U.S. Coast Guard, Acting Captain
between the national government and Amendment rights of protesters. of the Port Sector Columbia River.
the States, or on the distribution of Protesters are asked to contact the [FR Doc. 2018–23955 Filed 11–1–18; 8:45 am]
power and responsibilities among the person listed in the FOR FURTHER BILLING CODE 9110–04–P
various levels of government. We have INFORMATION CONTACT section to
analyzed this rule under that Order and coordinate protest activities so that your
have determined that it is consistent message can be received without DEPARTMENT OF COMMERCE
with the fundamental federalism jeopardizing the safety or security of
principles and preemption requirements people, places or vessels. Patent and Trademark Office
described in Executive Order 13132.
Also, this rule does not have tribal List of Subjects in 33 CFR Part 165 37 CFR Part 1
implications under Executive Order Harbors, Marine safety, Navigation [Docket No. PTO–P–2018–0030]
13175, Consultation and Coordination (water), Reporting and recordkeeping
with Indian Tribal Governments, requirements, Security measures, Interim Procedure for Requesting
because it does not have a substantial Waterways. Recalculation of the Patent Term
direct effect on one or more Indian For the reasons discussed in the Adjustment With Respect to
tribes, on the relationship between the preamble, the Coast Guard amends 33 Information Disclosure Statements
Federal Government and Indian tribes, CFR part 165 as follows: Accompanied by a Safe Harbor
or on the distribution of power and Statement
responsibilities between the Federal PART 165—REGULATED NAVIGATION
Government and Indian tribes. If you AREAS AND LIMITED ACCESS AREAS AGENCY: United States Patent and
believe this rule has implications for Trademark Office, Commerce.
federalism or Indian tribes, please ■ 1. The authority citation for part 165 ACTION: Notification of interim
contact the person listed in the FOR continues to read as follows: procedure.
FURTHER INFORMATION CONTACT section Authority: 33 U.S.C. 1231; 50 U.S.C. 191;
above. 33 CFR 1.05–1, 6.04–1, 6.04–6, and 160.5;
SUMMARY: The patent laws provide for
Department of Homeland Security Delegation patent term adjustment in the event that
E. Unfunded Mandates Reform Act the issuance of the patent is delayed due
No. 0170.1.
The Unfunded Mandates Reform Act ■ 2. Add § 165.T13–0998 to read as to certain enumerated administrative
of 1995 (2 U.S.C. 1531–1538) requires follows: delays. The USPTO makes the patent
Federal agencies to assess the effects of term adjustment determination included
their discretionary regulatory actions. In § 165.T13–0998 Safety Zone; Columbia on the patent by a computer program
particular, the Act addresses actions River, Cascade Locks, OR. that uses the information recorded in
that may result in the expenditure by a (a) Location. The following area is the USPTO’s Patent Application
State, local, or tribal government, in the designated safety zone: All navigable Locating and Monitoring (PALM)
aggregate, or by the private sector of waters of the Columbia River, from system. The USPTO will be modifying
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its computer program that calculates efforts to conclude processing or Board or Federal court that requires the
patent term adjustment to recognize examination of an application.’’ 35 USPTO to issue a supplemental Office
when an applicant files an information U.S.C. 154(b)(2)(C)(i) and (iii). The action. See 37 CFR 1.704(c)(6),
disclosure statement concurrently with USPTO implemented the patent term 1.704(c)(8), 1.704(c)(9), and (c)(10).
a safe harbor statement. In order to adjustment provisions of the AIPA in a Similarly, unless the submission for a
assist both applicants and the USPTO, final rule published in September of request for continued examination after
the USPTO is providing a new form for 2000. See Changes to Implement Patent a notice of allowance has been mailed
applicants to use when making a safe Term Adjustment Under Twenty-Year is solely an information disclosure
harbor statement. The USPTO is also Patent Term, 65 FR 56365 (Sept. 18, statement and it is accompanied by a
establishing an interim procedure and 2000) (final rule). safe harbor statement in compliance
providing a form for patentees to request The ‘‘regulations establishing the with 37 CFR 1.704(d), 37 CFR 1.704
a recalculation of their patent term circumstances that constitute a failure of provides for a reduction of any patent
adjustment determination for alleged an applicant to engage in reasonable term adjustment if a request for
errors due to the USPTO’s failure to efforts to conclude processing or continued examination is filed after the
recognize that an information disclosure examination of an application’’ (35 mailing of a notice of allowance. See 37
statement was accompanied by a safe U.S.C. 154(b)(2)(C)(iii)) are set forth in CFR 1.704(c)(12).
harbor statement. 37 CFR 1.704. 37 CFR 1.704 provides for A proper safe harbor statement under
DATES: Effective Date: This procedure is a reduction of any patent term 37 CFR 1.704(d) must state that each
effective November 2, 2018. adjustment if an information disclosure item of information contained in the
FOR FURTHER INFORMATION CONTACT: Kery statement (1) is filed after a notice of information disclosure statement: (1)
A. Fries, Senior Legal Advisor, Office of allowance or after an initial reply by the Was first cited in any communication
Patent Legal Administration, Office of applicant; or (2) is filed as a preliminary from a patent office in a counterpart
Deputy Commissioner for Patent paper or paper after a decision by the foreign or international application or
Examination Policy, by telephone at Board or Federal court that requires the from the USPTO, and this
(571) 272–7757, or by mail addressed to: USPTO to issue a supplemental Office communication was not received by any
Mail Stop Comments-Patents, action. See 37 CFR 1.704(c)(6), individual designated in 37 CFR 1.56(c)
Commissioner for Patents, P.O. Box 1.704(c)(8), 1.704(c)(9), and 1.704(c)(10). more than thirty days prior to the filing
1450, Alexandria, VA 22313–1450. 37 CFR 1.704 also provides for a of the information disclosure statement
reduction of any patent term adjustment (37 CFR 1.704(d)(1)(i)); or (2) is a
SUPPLEMENTARY INFORMATION: The
if a request for continued examination is
American Inventors Protection Act of communication that was issued by a
filed after the mailing of a notice of
1999 or AIPA (Pub. L. 106–113, 113 patent office in a counterpart foreign or
allowance. See 37 CFR 1.704(c)(12).
Stat. 1501, 1501A–552 through 1501A– 37 CFR 1.704(d), however, provides international application or by the
591 (1999)) amended 35 U.S.C. 154(b) to that a paper containing only an USPTO, and this communication was
provide for patent term adjustment in information disclosure statement in not received by any individual
the event that the issuance of the patent compliance with 37 CFR 1.97 and 1.98 designated in 37 CFR 1.56(c) more than
is delayed due to one or more of the will not be considered a failure to thirty days prior to the filing of the
enumerated administrative delays listed engage in reasonable efforts to conclude information disclosure statement (37
in 35 U.S.C. 154(b)(1). Under the patent prosecution (processing or examination) CFR 1.704(d)(1)(ii)).
term adjustment provisions of the AIPA, of the application under 37 CFR The USPTO performs an automated
a patentee generally is entitled to patent 1.704(c)(6), (c)(8), (c)(9), or (c)(10) if the calculation of how much patent term
term adjustment for the following information disclosure statement is adjustment, if any, is due to a patentee
reasons: (1) If the USPTO fails to take accompanied by one of the statements using the information recorded in the
certain actions during the examination set forth in 37 CFR 1.704(d)(1)(i) or USPTO’s PALM system, except when a
and issue process within specified time (d)(1)(ii) (a ‘‘safe harbor statement’’). patentee requests reconsideration
frames (35 U.S.C. 154(b)(1)(A)); (2) if the Similarly, 37 CFR 1.704(d) also provides pursuant to 37 CFR 1.705. See Changes
USPTO fails to issue a patent within that a request for continued examination to Implement Patent Term Adjustment
three years of the actual filing date of in compliance with 37 CFR 1.114 under Twenty-Year Patent Term, 65 FR
the application (35 U.S.C. 154(b)(1)(B)); containing only an information 56365, 56370, 56380–81 (Sept. 18, 2000)
and (3) for delays due to interference or disclosure statement in compliance with (final rule). Currently, the computer
derivation proceedings, secrecy orders, 37 CFR 1.97 and 1.98 will not be program used for this automated
or successful appellate review (35 considered a failure to engage in calculation cannot determine whether a
U.S.C. 154(b)(1)(C)). See 35 U.S.C. reasonable efforts to conclude compliant safe harbor statement under
154(b)(1). The AIPA, however, sets forth prosecution (processing or examination) 37 CFR 1.704(d) accompanied an
a number of conditions and limitations of the application under 37 CFR information disclosure statement. Thus,
on any patent term adjustment accrued 1.704(c)(12) if the information this computer program calculates the
under 35 U.S.C. 154(b)(1). Specifically, disclosure statement included in request patent term adjustment total as if no
35 U.S.C. 154(b)(2)(C) provides, in part, for continued examination is compliant safe harbor statement under
that ‘‘[t]he period of adjustment of the accompanied by a safe harbor statement. 37 CFR 1.704(d) was made. As the
term of a patent under [35 U.S.C. Thus, unless the information disclosure USPTO develops its next generation
154(b)(1)] shall be reduced by a period statement is accompanied by a safe information technology (IT) systems that
equal to the period of time during which harbor statement in compliance with 37 will address this problem, the USPTO is
the applicant failed to engage in CFR 1.704(d), 37 CFR 1.704 provides for introducing an interim procedure for
reasonable efforts to conclude a reduction of any patent term patentees to request a patent term
prosecution of the application’’ and that adjustment if an information disclosure adjustment recalculation when a safe
‘‘[t]he Director shall prescribe statement (1) is filed after a notice of harbor statement pursuant to 37 CFR
regulations establishing the allowance or after an initial reply by the 1.704(d) was filed, and a new form for
circumstances that constitute a failure of applicant; or (2) is filed as a preliminary applicants to use when making a safe
an applicant to engage in reasonable paper or paper after a decision by the harbor statement.
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Interim Procedure for Requesting is noted that the fee specified in 37 CFR form titled, ‘‘Patent Term Adjustment
Recalculation: The USPTO has created 1.18(e) is required for a request for Statement under 37 CFR 1.704(d)’’
the following interim procedure by reconsideration under 37 CFR 1.705, (PTO/SB/133) for applicant’s use when
which a patentee may request and the USPTO may only refund fees submitting the information disclosure
recalculation of patent term adjustment paid by mistake or in excess of that statement. The USPTO is planning to
where the sole reason for contesting the required (35 U.S.C. 42(d)). Thus, the update the patent term adjustment
patent term adjustment determination is interim procedure set forth in this computer program to recognize when
the USPTO’s failure to recognize a document is not a basis for requesting form PTO/SB/133 has been filed. Once
timely filed safe harbor statement a refund of the fee specified in 37 CFR updated, the patent term adjustment
accompanying an information 1.18(e) for any request for computer program will perform the
disclosure statement. The USPTO’s reconsideration under 37 CFR 1.705, patent term calculation by taking into
interim procedure waives the fee under including any previously filed request account that applicant filed a compliant
37 CFR 1.705(b)(1) as set forth in 37 CFR that was solely based on the USPTO’s safe harbor statement under 37 CFR
1.18(e) to file the request for error in assessing a reduction to the 1.704(d) when it performs the patent
reconsideration. The interim procedure amount of patent term adjustment under term adjustment calculation. When
will remain in effect until the USPTO 37 CFR 1.704(c)(6), (c)(8), (c)(9), (c)(10), applicant provides the safe harbor
can update the patent term adjustment or (c)(12) for the submission of an statement with the information
computer program and provide notice to information disclosure statement that disclosure statement, use of form
the public that the computer program was accompanied by the statement PTO/SB/133 is not required, but it is
has been updated. under 37 CFR 1.704(d). very strongly recommended as the
Under the interim procedure, The Office of Petitions will manually failure to use this form may result in the
recalculation of patent term adjustment review the request for recalculation of patent term adjustment calculation not
is requested by submitting a form in lieu patent term adjustment filed under the taking into account that such a
of the request and fee set forth in 37 CFR interim procedure. Specifically, the statement was filed. The form will be
1.705(b). This form, ‘‘Request for Office of Petitions will review the available on the USPTO’s website at
Reconsideration of Patent Term accuracy of the patent term adjustment https://www.uspto.gov/patent/patents-
Adjustment in View of Safe Harbor calculation in view of regulations forms. The Office of Management and
Statement Under 37 CFR 1.704(d)’’ 37 CFR 1.702 through 1.704 as part of Budget (OMB) has determined that,
(PTO/SB/134) will be available on the the recalculation. Upon review by the under
USPTO website at https:// Office of Petitions, the patentee will be 5 CFR 1320.3(h), form PTO/SB/133 does
www.uspto.gov/patent/patents-forms. given one opportunity to respond to the not collect ‘‘information’’ within the
The Office of Management and Budget recalculation. The response must be meaning of the Paperwork Reduction
(OMB) has determined that, under 5 filed by patentee within two months of Act of 1995.
CFR 1320.3(h), Form PTO/SB/134 does the mail date of the recalculation. No
not collect ‘‘information’’ within the extensions of time will be granted. If Applicants who submit form PTO/SB/
meaning of the Paperwork Reduction patentee responds to the recalculation 133 with an information disclosure
Act of 1995. The form must be filed by requesting changes to the statement will be considered to be
within the time period set forth in 37 recalculation not related to the safe making a proper safe harbor statement,
CFR 1.705(b), and the USPTO will not harbor statement, patentee must comply and the filing will be reflected in the file
grant any request for recalculation of the with the requirements of 37 CFR record. Applicants may not alter the
patent term adjustment that is not 1.705(b)(1) and (2). pre-printed text of form PTO/SB/133.
timely filed. The time period set forth If patentee fails to respond to the The presentation to the USPTO
set forth in 37 CFR 1.705(b) may be recalculation and the USPTO’s (whether by signing, filing, submitting,
extended under the provisions of 37 determination of the amount of or later advocating) of any USPTO form
CFR 1.136(a). recalculated patent term adjustment is with text identifying the form as a
If the request for recalculation is not different from that printed on the front USPTO-generated form by a party,
based solely on the USPTO’s failure to of the patent, the USPTO will sua whether a practitioner or non-
recognize a timely filed, compliant safe sponte issue a certificate of correction practitioner, constitutes a certification
harbor statement under 37 CFR 1.704(d), that reflects the recalculated patent term under 37 CFR 11.18(b) that the existing
the patentee must file a request for adjustment. If patentee files a timely text and any certifications or statements
reconsideration of the patent term response after the USPTO’s on the form have not been altered other
adjustment indicated on the patent recalculation and the USPTO maintains than permitted by EFS-Web
under 37 CFR 1.705(b) with the fee set its recalculation, the USPTO will issue customization. See 37 CFR 1.4(d)(3). As
forth in 37 CFR 1.18(e). If a patentee its decision confirming its recalculation a result of using the form, the USPTO’s
files both form PTO/SB/134 and a pursuant to 35 U.S.C. 154(b)(3)(B)(ii), computer program, once updated, will
request under 37 CFR 1.705(b) prior to and this decision is the Director’s take the safe harbor statement into
the USPTO’s recalculation of patent decision under 35 U.S.C. 154(b)(4). The account when patent term adjustment is
term adjustment, the USPTO will treat USPTO’s initial recalculation of patent calculated, thereby eliminating the need
the papers as a request for term adjustment under the procedure to file a request for reconsideration of
reconsideration of the patent term outlined in this document is not the patent term adjustment under 37 CFR
adjustment indicated on the patent Director’s decision under 35 U.S.C. 1.705(b) for this matter.
under 37 CFR 1.705(b) and charge the 154(b)(4).
Dated: October 30, 2018.
fee set forth in 37 CFR 1.18(e). New Form for Applicants to Use when
While the USPTO’s interim procedure Making a Statement Pursuant to 37 CFR Andrei Iancu,
waives the fee under 37 CFR 1.705(b)(1) 1.704(d): In order to aid in recognizing Under Secretary of Commerce for Intellectual
as set forth in 37 CFR 1.18(e) to file the when a compliant safe harbor statement Property and Director of the United States
PTO/SB/134, it does not waive any under 37 CFR 1.704(d) has been filed Patent and Trademark Office.
extensions of time fees due under 37 with an information disclosure [FR Doc. 2018–24004 Filed 11–1–18; 8:45 am]
CFR 1.705(b) and 1.136. In addition, it statement, the USPTO has created a BILLING CODE 3510–16–P
VerDate Sep<11>2014 16:11 Nov 01, 2018 Jkt 247001 PO 00000 Frm 00012 Fmt 4700 Sfmt 9990 E:\FR\FM\02NOR1.SGM 02NOR1](https://thefederalregister.org/doc/83_FR_55315/page/3.svg)
Document Created: 2018-11-02 01:09:55
Document Modified: 2018-11-02 01:09:55
| Category | Regulatory Information | |
| Collection | Federal Register | |
| sudoc Class | AE 2.7: GS 4.107: AE 2.106: | |
| Publisher | Office of the Federal Register, National Archives and Records Administration | |
| Section | Rules and Regulations | |
| Action | Notification of interim procedure. | |
| Dates | Effective Date: This procedure is effective November 2, 2018. | |
| Contact | Kery A. Fries, Senior Legal Advisor, Office of Patent Legal Administration, Office of Deputy Commissioner for Patent Examination Policy, by telephone at (571) 272-7757, or by | |
| FR Citation | 83 FR 55102 |
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