Patents granted after January 14, 2013, and applications receiving a notice of allowance on or after April 1, 2013, are subject to new interim U.S. Patent and Trademark Office (USPTO) rules regarding patent term adjustment (PTA).

Under the new rules, published April 1, 2013, the USPTO will send a single PTA calculation notification “no later than the date of issuance of the patent,” eliminating the additional PTA notification previously provided with the notice of allowance.

For national stage applications filed under 35 U.S.C. § 371, the new rules clarify that the 14 month time period in which the USPTO should act on the application, and the three year time period in which a patent should issue, both for purposes of PTA calculation, are each measured from the date of commencement of the national stage application.  This change avoids any confusion caused by interpreting the old rules to indicate that the time periods begin when all the requirements under 35 U.S.C. § 371 are fulfilled.

In addition, the two month time period from the patent grant for requesting reconsideration of a PTA determination now may be extended up to five months by requesting an extension of time and paying the appropriate fee.  As such, a request for reconsideration may be submitted as late as seven months after the patent issues.

Another change in the rules relates to how a PTA calculation may be challenged.  Although the new rules do not specify a time period in which the USPTO must provide a decision on a request for reconsideration, they clarify that the 180 day time period to file a civil action in district court begins after the USPTO rules on a request for reconsideration.  Therefore, the civil action is “the remedy for an applicant who is dissatisfied” with a decision on a reconsideration request, “not an alternative to requesting reconsideration.”  In other words, according to the new rules, the proper manner in which to challenge a PTA calculation is to first file a request for reconsideration at the USPTO, and if the decision on the request is not satisfactory, then the exclusive remedy is to file a civil action in district court within 180 days of the reconsideration decision.

PTA may have an impact on all technology companies, in particular technologies that may be well-suited to licensing and/or royalty generating agreements.  By carefully reviewing PTA calculations with their patent counsel, all companies may ensure that critical patent protection time, and potential revenue is not forfeited.

The deadline for comments regarding the new rules is May 31, 2013.

Aamer S. Ahmed