June 17, 2019

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USPTO Addresses IDS PTA Deduction Error

The USPTO has devised a plan to address the IDS PTA deduction error that incorrectly charges a Patent Term Adjustment (PTA) deduction for Information Disclosure Statements (IDSs) filed with a “safe harbor” statement. Although the USPTO won’t be able to correct the underlying problem until it rolls out its “next generation” information technology systems, it has devised a plan to make it easier for applicants to flag safe harbor IDSs, and easier–and cheaper–to request recalculation of a PTA award when this is the only error.

The IDS PTA Deduction Error

I first wrote about the IDS PTA deduction error in this article. There I explained that the USPTO treats an IDS filed after a response or Request for Continued Examination (RCE) as a “supplemental reply or other paper” that can trigger a PTA deduction for “Applicant Delay.” However, the USPTO rules provide that no PTA deduction will be taken if the IDS is filed to submit items cited by the USPTO or a foreign patent office within 30 days of the submission and is accompanied by a statement under 37 CFR § 1.704(d)–a “safe harbor” statement. Unfortunately, the USPTO charges a PTA deduction anyway, because the computer program it uses to calculate PTA “cannot determine whether a compliant safe harbor statement” was made.

Although applicants can request reconsideration of PTA awards that erroneously include this deduction, until now doing so required a $200 fee–not to mention time to identify the error, prepare and file the petition, and ensure a Certificate of Correction is granted.

Interim Procedure for Requesting Recalculation of PTA Based On Safe Harbor IDS Error

As announced in the November 2, 2018 Federal Register Notice and effective immediately, there is a new way applicants can request recalculation of PTA where the only error “is the USPTO’s failure to recognize a timely filed safe harbor statement” filed with an IDS that triggered an erroneous deduction. Under this interim procedure, the fee for requesting reconsideration of PTA is waived. According to the Notice, this “interim” procedure “will remain in effect until the USPTO can update the patent term adjustment computer program.”

To take advantage of this interim procedure, applicants should request recalculation by submitting a specific form– Request for Reconsideration of Patent Term Adjustment in View of Safe Harbor Statement Under 37 CFR 1.704(d) (PTO/SB/134)–within the time period set forth in 37 CFR 1.705(b). Although this time period is extendable under 37 CFR 1.136(a) any extension time fees are not waived.

If an applicant seeks correction of any other PTA errors, a request for reconsideration should be filed under 37 CFR 1.705(b) with the requisite fee.

Please see the full Federal Register Notice for more details on how to submit a request for recalculation and how the request will be processed.

New Form For Safe Harbor Statements

The USPTO also has created a new form for safe harbor statements. Applicants are notrequired to use the form for a Patent Term Adjustment Statement under 37 CFR 1.704(d), but doing so will help the USPTO avoid making the IDS PTA deduction error in the future. In particular, according to the Notice, the USPTO’s updated PTA computer program will “recognize when form PTO/SB/133 has been filed” and will “tak[e] into account that applicant filed a compliant safe harbor statement under 37 CFR 1.704(d) when it performs the patent term adjustment calculation.”

That is, as emphasized in the Notice:

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.

Easing The Burden On Applicants

While it’s frustrating that the USPTO hasn’t yet been able to correct the underlying problem, it’s encouraging that the USPTO has implemented these procedures to ease the burden on applicants–and waive the $200 fee heretofore required to get the USPTO to correct its systemic error.

© 2019 Foley & Lardner LLP


About this Author

Courtenay C. Brinckerhoff, intellectual property  law attorney, Foley & Lardner  Law Firm

Courtenay Brinckerhoff is a partner and intellectual property lawyer with Foley & Lardner LLP. Ms. Brinckerhoff’s practice focuses on client counseling in all aspects of obtaining, licensing and enforcing patents and conducting freedom-to-operate and due diligence investigations. She is chair of the firm’s IP Law and Practice committee, immediate past vice chair of the firm’s Chemical, Biotechnology & Pharmaceutical Practice and a member of the firm's Patent Trials group, Appellate Practice and Life Sciences Industry Team. She also is involved with Foley’s...