July 5, 2019
On November 9, 2018, I wrote about the USPTO’s release of interim procedures for patentees to request recalculation of the patent term adjustment with respect to information disclosure statements accompanied by a proper safe harbor statement under 37 CFR. 1.704(d) (https://www.lifesciencesipblog.com/?t=39&format=xml&A=18655&p=15972).
Although it is not often that patentees invest the time and money to verify the accuracy of the USPTO’s final patent term adjustment determination, it is important to always keep abreast of when and where errors may arise. This is particularly important in technology fields that are sensitive to patent term adjustment.
Recently, it has come to my attention that in several instances the USPTO has had a difficult time with proper implementation of these procedures, identification of a properly filed Form PTO/SB/133, and/or proper indexing of Form PTO/SB/133 in its PTA calculation process. From experience, a common cause of the error appears to be that Form PTO/SB/133 is not always pulled apart from other documents filed in the same electronic submission and is missed entirely.
However, a more important issue is that the certification statement under 37 C.F.R. §1.704(d) has two sub-parts which are separately identified in Form PTO/SB/133. In particular, the safe harbor statement applies when each item of information contained in the information disclosure statement:
(i) 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; or
(ii) 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.
(see 37 CFR 1.704(d)(1)).
Patentees must be careful to ensure proper certification is made at the time of IDS filing as either of these statements or both may be needed.
Certification under 37 C.F.R. §1.704(d)(i) relates to “information… first cited in any communication.” This part of the certification statement relates to the references cited in the communication from a patent office in a counterpart foreign or international application or from the USPTO.
Certification under 37 C.F.R. §1.704(d)(ii) relates to “a communication that was issued by a patent office in a counterpart foreign or international application or by the USPTO.” This part of the certification statement relates to, for example, the search report or the office action.
For example, an Office Action is issued in a counterpart application containing first cited references. Within 30 days, the Office Action and the references are filed in an IDS. To be properly certified under 37 C.F.R. §1.704(d), both boxes in Form PTO/SB/133 must be checked, the first box for the references and the second box for the communication.
Failure to properly certify may lead to the loss of patent term adjustment even if Form PTO/SB/133 is filed. The USPTO is not terribly forgiving in situations where the certification could have been (and needed to be) made, but patentees forgot to check the right box(es). This is even true if the document is facially filed on a timely basis.